In a series of decisions in Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Judge Richard G. Andrews ruled on motions in limine, clarified previous orders, and construed disputed claim terms. The two patents-in-suit relate to elevator installation.
The Court had previously ruled that it lacked subject matter jurisdiction over unasserted claims, and therefore did not address an alleged best mode violation in these claims relating to the claim term “advance selector.” Defendant sought “clarification of whether the Court’s holding is simply that the four unasserted claims are not in the case, or whether [defendant] cannot assert a best mode violation relating to the ‘advance selector’ for the claims that have been asserted.” Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Order at 1-2 (D. Del. Feb. 6, 2014) (“Feb. 6 Order”) (internal citations and quotation marks omitted). The Court explained that its “holding was simply that the Court did not have subject matter jurisdiction over unasserted claims. However, as the Defendant indicates that there is a disagreement between the parties regarding whether best mode can be raised regarding the presence of an ‘advance selector,’ for the asserted claims, the Court will address this issue.” Id. at 2. This term did not appear in the asserted claims, and the Court had not construed any claim terms to require an advance selector. Therefore, the asserted claims did not require an advance selector and there was no best mode violation. Id. at 2. In a separate Order following the case’s pretrial conference, the Court further clarified that defendant was “precluded from arguing that any aspect of the asserted claims can be invalidated for failure to describe the best mode of an ‘advance selector.’” Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA, Order at 1 (D. Del. Feb. 7, 2014) (“Feb. 7 Order”).
Defendant also sought clarification regarding the Court’s previous damages memorandum. Defendant interpreted the Court’s order to limit plaintiff’s damages to a certain range that reflected a reasonable royalty. Feb. 6 Order at 2. The Court clarified that it “did not limit the Plaintiff to a specific amount of damages, but instead held that the royalty base may not include the services contract revenues.” Id.
Defendant also brought motions in limine to exclude the testimony of plaintiff’s damages expert and to exclude his supplemental report. As to testimony, defendant argued that plaintiff’s expert based his reasonable royalty calculation on allegedly infringing activities that had already been excluded by the Court in a prior order. Id. at 3-4. The Court explained that this “previous order did not exclude any evidence, but instead acted to limit further discovery into the unaccused elevator modernization projects. Thus, it is appropriate for [this expert] to testify regarding these other bids in order to provide context regarding the accused projects and the related financial issues. The Defendant is free to object at trial if [the expert] testifies about issues in which he is not an expert.” Id. at 4. The Court did not consider whether the damages expert’s use of late-produced documents should be a basis for exclusion because “[a] Daubert motion is not the proper vehicle to raise a possible discovery violation.” Id. at 5. On the other hand, the Court excluded plaintiff’s expert’s discussion of the size and revenues of defendant because the Court found that the expert has not used this information to render his conclusion or, alternatively, because this information’s prejudice to defendant outweighed its probative value under FRE 403. Id. at 5. As to the expert’s supplemental report, defendant argued that it added new material. The Court disagreed, finding that it only clarified issues, and denied the motion. Id. at 6.
Plaintiff also moved to preclude the testimony of defendant’s damages expert, arguing that the expert improperly based his analysis on a non-comparable license and that he had not explained why other comparable agreements were not considered. Id. at 6. The license at issue was one between plaintiff and its sister company. Id. at 7. The Court denied plaintiff’s motion, finding the expert “at least minimally connects the license in question to the patents-in-suit and rather than simply extract a royalty rate from the previous license, uses the license as only a single component of his entire analysis.” Id. at 8. The Court also rejected the argument that the expert should have discussed other potentially comparable licenses. Id. at 8-9.
In a separate Order, the Court also granted defendant’s motion in limine to exclude evidence related to certain elevators, because plaintiff had presented no evidence that these elevators embodied the patents-in-suit. Feb. 7 Order at 1. The Court explained that it would “reconsider the matter if the Plaintiff puts on evidence that shows the Avenue of the Americas elevator modernization is an embodiment of the asserted patent claims.” Id. at 2.
Finally, the Court construed the following disputed terms:
“the elevator installation having at least one elevator and at least one elevator control for controlling the elevator in response to call reports generated by hall call transmitters and car call transmitters”
“car call transmitter”
“destination call report(s)”
“a device for temporarily operating an elevator installation during modernization”
“a system for modernizing an elevator installation”
“a method for modernizing an elevator installation”
“at least one of [A] and [B]”
“floor terminal . . . for at least one of the input of destination call reports and for recognition of identification codes of users;”
“floor terminal. .. operative for at least one of input of destination call reports and recognition of identification codes of passengers”
“computing unit … for at least one of evaluating the destination call reports and association of destination floors with recognized ones of the identification codes”
“recognition of identification codes of passengers”
“interrupting at least one existing electrical floor call transmitter line between at least one floor call transmitter and the elevator control”
“interrupting at least one existing car call transmitter line between at least one car call transmitter and the elevator control”
“the elevator control being disconnected from the hall call transmitters and the car call transmitters of the elevator installation”
“existing electrical floor call transmitter line”
“existing car call transmitter line”
“floor call transmitter line input”
“car call transmitter line input”
“hall call transmitter”
“performing said steps a. through c. [of claim 1] for each elevator car and associated elevator control of an elevator installation in succession whereby the elevator installation is modernized in a modular manner”
“read” or “reading”
UPDATED: Judge Andrews issued amended claim constructions on February 20, 2014
Inventio AG v. Thyssenkrupp Elevator Corporation, C.A. No. 08-874-RGA (D. Del. Feb. 4, 2014).