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Judge Robinson Grants-in-Part, Denies-in-Part Summary Judgment Motions

In the on-going litigation between Intellectual Ventures (IV) and Canon, Judge Robinson has denied several motions for summary judgment of non-infringement and for summary judgment of invalidity including both anticipation and subject matter eligibility arguments, with a few limited exceptions in which summary judgment was granted. Several of the rulings finding infringement related to patents involving doctrine of equivalents issues. For one patent, Judge Robinson granted summary judgment of non-infringement based on the principle that if “a theory of equivalence would vitiate a claim limitation, however, then there can be no infringement under the doctrine of equivalents as a matter of law.” Intellectual Ventures I, LLC, et al. v. Canon Inc., et al., C.A. No. 13-473-SLR, Memo. Op. at 60-62 (D. Del. Nov. 9, 2015) (citing Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998). With respect to another patent, Canon alleged that claim scope had been surrendered and IV responded that it was asserting only literal infringement. Judge Robinson found that because IV did not respond to Canon’s argument, it would be precluded from asserting equivalents at trial. Id. at 30.

In analyzing invalidity of one patent-in-suit, Judge Robinson also concluded that a doctoral thesis that was available in archives at MIT but would have been difficult to find for anyone who did not already know of its existence was not prior art because it could not serve as “public notice.” Id. at 34-36.

Judge Robinson rejected the portion of Canon’s summary judgment motion seeking a finding of indefiniteness because similar arguments had already been rejected during claim construction: “The court agrees with IV in that Canon’s indefiniteness arguments were considered in its claim construction order and Canon offers no fresh reasons to compel a different conclusion. Essentially, this portion of Canon’s motion for summary judgment equates to an untimely motion for reargument. Nonetheless, Canon’s arguments regarding IV’s expert’s use of the words ‘single receive path’ were taken out of context. Indefiniteness is not based on an expert’s utilization of a phrase to contrast the invention with prior art. Rather, § 112, 1f 2 requires ‘that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.’ As the court previously held, this term meets that standard in light of the disclosures contained within the specification.” Id. at 6-8.

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