Intellectual Property – Summary Judgment

June 6, 2012

Publication| Intellectual Property

Magistrate Judge Burke Recommends Denial of Summary Judgment Motion

In Wyeth Holdings Corp. v. Sandoz, Inc., C.A. No. 09-955-RGA-CJB (D. Del. Apr. 5, 2012), Magistrate Judge Burke recommended that Judge Andrews deny defendant’s motion for summary judgment of invalidity of the ’828 patent for obviousness-type double patenting in light of claim 97 of the ’183 patent. The Court held that the differences between claim 97 and the claims at issue of the ’828 patent were sufficient to create a genuine issue of material fact as to the validity of the ’828 patent, thus precluding the grant of summary judgment. The Court also ruled that defendant did not demonstrate by clear and convincing evidence that the ’828 patent impermissibly and unjustifiably extended the term of the ’183 patent. Thus, Magistrate Judge Burke recommended that the Court deny defendant’s motion.

Judge Robinson Denies Motion for Partial Summary Judgment

In SRI International, Inc. v. Symantec Corp., C.A. No. 11-131-SLR (D. Del. Mar. 30, 2012), Judge Robinson denied defendant Symantec Corp.’s motion for partial summary judgment. In earlier litigation between the parties, a jury had returned a verdict that one of Symantec’s software products infringed patents held by SRI International, Inc. (“SRI”). In this action, SRI alleged that Managed Security Services provided by Symantec infringed the same patents as those asserted in the earlier lawsuit because the services make use of the same infringing Symantec software.

Because these same services were at issue at several points during discovery and trial in the earlier action, Symantec here moved for partial summary judgment on the basis of claim preclusion. Judge Robinson denied the motion because, though SRI issued discovery requests about the security services in the earlier litigation, Symantec objected and never provided any technical data regarding the services, nor were the services specifically addressed in the judgment. Judge Robinson also noted that Symantec failed even to attempt to show that the infringing product and the service were “essentially the same,” as it was required to show for claim preclusion under Federal Circuit precedent. Though the Court expressed some skepticism about SRI’s ability to prove its infringement claim, it denied the motion for partial summary judgment.

Judge Stark Grants Defendants’ Motions for Summary Judgment

In St. Clair Intellectual Property Consultants, Inc. v. Matsushita Electric Industrial Co., Ltd., et al. and St. Clair Intellectual Property Consultants, Inc. v. Palm, Inc., et al., C.A. Nos. 04-1436-LPS and 06-404-LPS (D. Del. Mar. 26, 2012), Judge Stark granted defendants’ motions for summary judgment and denied plaintiff’s motion to supplement. In light of a recent related Federal Circuit decision, the Court granted defendants’ motions for summary judgment of non-infringement of the asserted claims of the patents-in-suit, holding that plaintiff’s asserted infringement theories were not viable in light of the Federal Circuit decision. The Court also denied plaintiff’s motion to supplement, finding that plaintiff’s request to file supplemental expert reports was also a request to add additional infringement contentions beyond the deadline set forth in the scheduling order.

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