In Research Frontiers Incorporated v. E Ink Corporation, et al., C.A. No. 13-1231-LPS (D. Del. Mar. 31, 2016), Magistrate Judge Christopher J. Burke recommended that Defendants’ early motion for partial summary judgment be denied. Defendants argued the asserted claims were anticipated and further contended that Plaintiff’s “own statements regarding [the alleged anticipatory reference], which appear in one of [Plaintiff’s] own European patents, prevent [Plaintiff] from raising a genuine issue of material fact regarding anticipation[.]” Id. at 8. Specifically, Defendants argued that Plaintiff was precluded from arguing that this reference (“the Tada reference”) was not enabling. See id. at 14.
The Court first rejected that the statements by Plaintiff “amount[ed] to a clear concession . . . that Tada is enabling.” Id. at 13-14. While the statements did “contain unqualified language about what Tada ‘explicitly discloses,’” id. at 15, after reviewing the statements in context – namely, within a “well-developed record of the prosecution” of another patent, the Court concluded that the statements were not necessarily equivalent to an admission that the reference was enabling. See id. at 15-17.
The Court then substantively evaluated whether this reference was enabled such that it could anticipate the asserted claims, but found issues of material fact to remain on this point. Among other things, the Court observed that it was “given pause at the prospect of granting Defendants’ Motion, in significant part because their positions as to enablement are supported by no proffered expert testimony. Instead, they consist of arguments made by Defendants’ attorneys (albeit arguments that cite case law or to portions of the record). With subject matter as complex as that at issue here, it is difficult for the Court, at the summary judgment stage, to recommend that the stated opinion of [Plaintiff’s] expert (that the reference it nonenabling) be overridden based on the argument of a lawyer (who concludes otherwise.” Id. at 23-24 (emphasis in original).
Accordingly, the Court recommended denial of the motion for partial summary judgment, except that it recommended the parties be permitted to re-address one issue, raised for the first time in Defendants’ reply brief and thus having “such a thin record”, id. at 22 n.11, at the time of case dispositive motion briefing. The Court therefore did not recommend denial as to that issue. Id. at 26.