Chief Judge Leonard P. Stark recently rules on several Daubert and summary judgment motions in Masimo Corp. v. Philips Electronics North America Corp., et al., C.A. Nos. 09-80-LPS, 11-742-LPS (D. Del. Oct. 31, 2016). Of note, Chief Judge Stark granted a Daubert motion seeking to preclude a damages expert from testifying regarding the “basis-for-customer-demand” test in connection with a lost profits opinion. The Court explained that the test was inconsistent with jury instructions in an earlier related case, to which no objections were lodged, and in any event that the “functional unit” test that was a part of the earlier jury instructions was legally correct. Id. at 6.
Chief Judge Stark also granted a Daubert motion seeking to preclude testimony regarding European Patent Office proceedings, on the basis that the expert was indisputably not an expert on European patent law and also that such testimony would not be helpful to the jury and could potentially be confusing at trial. Id. at 8-9.
With respect to the summary judgment motions, Chief Judge Stark granted in part Masimo’s motion for summary judgment of infringement because, the Court explained, the defendant’s own expert opined that the accused products infringed, and the license agreement at issue contained an express disclaimer. The Court noted, “[a]n implied license will not be found where the applicable licensing agreement has an ‘express disclaimer’ limiting the scope of the license.” Id. at 13-14.
The Court also granted in part a motion for summary judgment of no infringement under the doctrine of equivalents, agreeing with the defendant’s argument that “Masimo is estopped from relying on the doctrine equivalents to prove infringement because Masimo added [the limitations at issue] to overcome rejections for indefiniteness and double patenting during prosecution.” Id. at 22. Because Masimo failed to demonstrate that the amendments to add those limitation were narrowing, the Court found that Masimo failed to rebut the presumption (given that the reasons for and impact of Masimo’s amendments were ambiguous) that prosecution history estoppel applied. Id. at 23-24.
Finally, the Court granted in part Philips’ motion for summary judgment of no willful infringement of one of Masimo’s patents, on the basis that Masimo failed to present any evidence that Philips’ allegedly infringing conduct was “willful, wanton, malicious, [or in] bad faith” under Halo. Id. at 34.
The remainder of the issues briefed in the parties’ summary judgment motions presented genuine issues of material fact and were therefore denied.