Chief Judge Stark recently denied motions filed by defendant Toshiba for summary judgment of non-infringement and for spoliation sanctions in a case brought by plaintiff St. Clair Intellectual Property Consultants. St. Clair Intellectual Prop. Consultants, Inc. v. Toshiba Corp., et al., C.A. No. 09-354-LPS, Memo. Or. at 1 (D. Del. Aug. 27, 2014).
Judge Stark first denied summary judgment of non-infringement with respect to one patent because there was a genuine dispute of material fact where a “jury could reasonably credit the expert opinion of [the plaintiff’s expert] and, thereby, find infringement.” Id. at 3-4. The expert’s opinion included the possibility of meeting the claim limitations by the doctrine of equivalents, which he opined on at his deposition after reserving the right to do so in his report. Id. at 4.
Judge Stark next denied summary judgment of non-infringement of a second patent because there were genuine issues of material fact involved in each of St’ Clair’s theories of infringement. Among the issues that could not be resolved on summary judgment were whether a fixed clock rate must necessarily have a fixed bandwidth, where the parties had not previously asked for construction of the term “bandwidth” and whether there could be direct infringement where Toshiba had sold or offered to sell all of the components of a claimed system, even if the components were sold separately to be assembled by the customer. Id. at 5-7.
Finally, Judge Stark denied Toshiba’s motion for spoliation sanctions based on the destruction of documents by a prior owner of the patents-in-suit. As Judge Stark explained, Toshiba did not “put forth sufficient evidence to support a finding of bad faith,” as required for a finding of spoliation. Id. at 8-9. Rather, the evidence suggested that a “benign explanation [was] more plausible” because the records destroyed by the predecessor-in-interest to St. Clair were destroyed under a standard record retention policy. Id. The more recent destruction of backup data was “more complex” because it more likely contained relevant information, it occurred after St. Clair had already commenced litigation and notified the prior owner that it would be subject to document requests and subpoenas, and St. Clair appeared to have control over the documents. Id. at 9-10. But here too there was no evidence of bad faith in destruction of the backup data. Accordingly, Judge Stark explained that although the “nearly complete destruction of many of [the prior owner’s] historic files is worrying (and potentially negligent), the record does not support sanctioning St. Clair for spoliation.” Id. at 10.