In a recent order, Judge Sue L. Robinson ruled on several issues following the parties’ pretrial conference. Carrier Corp. v. Goodman Global, Inc., et al., C.A. No. 12-930-SLR (D. Del. Aug. 28, 2014). First, Judge Robinson denied defendants’ expert’s proffer related to anticipation, where the expert’s report merely referenced a series of claims charts “which were never explained or even specifically endorsed by the expert.” Judge Robinson concluded that defendants should not be permitted “to assert essentially new opinions through [their] expert declaration submitted in connection with [their] proffer of anticipation.” Id. at 2.
Second, Judge Robinson considered whether to admit as evidence opinions of counsel and reexamination proceedings that post-dated the alleged period of induced infringement, which was alleged to be between November 2009 and September 2012. See id. at 2-4. Judge Robinson found that the “request for reexamination,” which was filed in September 2012 following a prior art search, was “circumstantial evidence of [defendants’] intent during the relevant time.” Id. at 3. Judge Robinson would allow such evidence to be admitted, but would provide a limiting instruction for the jury and restrict the scope of examination. Id. On the other hand, Judge Robinson found that defendants failed to establish a “sufficient nexus between the August 2013 opinions of counsel and [defendants’] intent in September 2012.” Id. at 3-4. Noting that such evidence would present “an even greater risk of undue prejudice,” defendants would not be permitted to introduce that evidence at trial.
Third, Judge Robinson found that defendants failed to “timely identify, for purposes of full and fair discovery, its contention that it never sells its components as a ‘system’” and was therefore precluded from presenting such a defense. Id. at 4. Fourth, defendants had argued that there remained an issue of fact for the jury to determine, namely, whether a particular limitation “would be understood with reasonable certainty by a person of ordinary skill in the art.” Id. Judge Robinson explained, however, that the Court had already rejected defendants’ indefiniteness argument with respect to the limitation and provided a construction for the term. Id. Given that it is the Court’s responsibility to “construe claim language consistent with the understanding of a person of ordinary skill in the art,” Judge Robinson rejected defendants’ argument. Id.