In Masimo Corporation v. Philips Electronics North America Corporation, et al., Magistrate Judge Mary Pat Thynge recently recommended the grant of defendants’ motion for summary judgment as to no willful infringement and the denial of their motion for summary judgment on lost profits damages. C.A. No. 09-80-LPS-MPT (D. Del. June 14, 2013).
The Court recommended the grant of defendants’ motion as to willful infringement with regard to four patents-in-suit. The Court concluded that defendants’ actions had been objectively reasonable because they had “presented legitimate and credible defenses to the infringement claims, as well as presented credible invalidity arguments. As such, [defendants have] ‘demonstrate[d] the lack of an objectively high likelihood that [defendants] took actions constituting infringement of a valid patent.’” Id. at 16 (quoting Black & Decker, Inc. v. Robert Bosch Tool Corp., 260 F. App’x 284, 291 (Fed. Cir. 2008)). For example, with regard to U.S. Patent No. 6,263,222, Judge Thynge had previously recommended adoption of defendants’ claim construction of a key term, and although Judge Stark “ultimately disagreed with the construction,” id., it was clear from these facts that defendants’ reliance on their construction to show noninfringement was reasonable. See id. at 5-6. Additionally, as discussed here, Judge Thynge had previously recommended a partial grant of summary judgment on invalidity as to the same patent. “The partial success of its invalidity defenses lend credibility to the reasonableness of [defendants’] actions which defeats the objective prong of [the Federal Circuit’s test for willful infringement from In re Seagate Tech., LLC, 497 F.2d 1360 (Fed. Cir. 2007)].” Id. at 6-7. With regard to a different patent, the Court concluded that defendants’ invalidity arguments were also reasonable and thus precluded a finding of willful infringement. Id. at 8. Furthermore, the Court had also recently granted summary judgment to defendants on the basis of non-infringement as to this patent. Id. The Court also ruled that summary judgment on willfulness was appropriate, as “this court and the Federal Circuit have held the state of mind of the accused infringer is not relevant” to the objective prong of Seagate. Id. at 12 (internal citations and quotation marks omitted).
The Court recommended denial of defendants’ motion for summary judgment as to lost profits damages, relying on its prior rulings on expert testimony, discussed here. “Having ruled [in that opinion] on all of the challenges to expert testimony, the court has essentially already decided the outcome of the motion for summary judgment on damages. Since the court will allow experts to testify to divisive positions on the [acceptability of a potential non-infringing alternative], as well as permit [plaintiff’s damages expert to present lost profits analysis] at trial,” issues of material fact remained and defendants’ motion should be denied. Id. at 16.