Intellectual Property – Summary Judgment
May 27, 2011
Judge Stark Denies Motions for Summary Judgment
In Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-LPS (D. Del. Mar. 14, 2011), Judge Stark denied defendant Facebook, Inc.’s motions for summary judgment of non-infringement and for invalidity based on anticipation and the on-sale bar. The Court concluded that the parties’ expert witnesses advanced detailed and plausible but conflicting opinions on the application of the Court’s claim construction to the accused device for infringement purposes and the comparison between the ’761 patent and the prior anticipatory art for invalidity purposes. Because each motion therefore turned on a genuine issue of material fact, summary judgment was denied.
Judge Robinson Grants Motion for Summary Judgment of Non-Infringement
In Autocell Laboratories, Inc. v. Cisco Systems Inc., C.A. No. 08-760-SLR (D. Del. Jan. 5, 2011), Judge Robinson granted defendant Cisco Systems Inc.’s motion for summary judgment of non-infringement, denied Autocell’s infringement cross-motion, and denied Cisco’s motion for summary judgment of invalidity. Autocell had accused Cisco of infringing its patent for the automatic adjustment of power levels in wireless networking systems. Upon construing four claim limitations, Judge Robinson found that Cisco’s product did not infringe Autocell’s patent, but denied Cisco’s motion for summary judgment of invalidity.
Judge Robinson Grants Motion for Summary Judgment in Part
In Tyco Healthcare Group, L.P. v. C.R. Bard, Inc. & Davol, Inc., C.A. No. 09-264-SLR (D. Del. Jan. 20, 2011), Judge Robinson ruled on a number of evidentiary motions, as well as the parties’ cross-motions for summary judgment. Plaintiff Tyco Healthcare Group, L.P. had alleged that defendants C.R. Bard, Inc. and Davol, Inc. infringed its patent for surgical fasteners and the applicator that inserts them into tissue. Plaintiff moved for summary judgment on defendants’ obviousness-type double patenting defense. Plaintiff had filed two terminal disclaimers in an attempt to moot this defense, but defendants argued that disclaimers are only prospective in application and that an invalid patent remains so until the date of filing of a terminal disclaimer. Defendants therefore asserted that they could not be held liable for infringement for actions before the date when the terminal disclaimers were filed. But because the terminal disclaimers served the same purpose as the bar against obviousness-type double patenting, i.e., to prevent the undue extension of the length of the patent, Judge Robinson concluded that the defense was mooted.
Plaintiff moved to strike several paragraphs suggesting inequitable conduct by plaintiff from defendants’ expert report on grounds that defendants had failed to plead this defense with particularity. Though Judge Robinson agreed that defendants had not alleged intent to deceive, the Court nonetheless denied the motion, suggesting that a direct attack on the sufficiency of the pleading, not a motion to strike, was the proper way to raise this issue.
Defendants moved for partial summary judgment on the mismarking element of their false marking claim, and plaintiff moved to bifurcate this claim. Plaintiff’s defense depended on the doctrine of equivalents, yet Judge Robinson held that the doctrine applied only to infringement, not false marking, and accordingly granted defendants’ partial motion for summary judgment. Judge Robinson granted the motion to bifurcate since this issue was likely to be confusing to the jury. Judge Robinson noted that this decision did not reflect a general policy on the bifurcation of false marking claims.
Defendants moved for partial summary judgment of non-infringement as to its fasteners. Judge Robinson concluded that defendants’ fasteners did not literally infringe the relevant claim of the patent at issue. The Court denied defendants’ motion insofar as it argued that a narrowing amendment made during prosecution estopped plaintiff from asserting infringement by the doctrine of equivalents, since plaintiff could not have surrendered subject matter that was not part of its application.
Judge Robinson Rules on Cross Motions for Summary Judgment
In Automated Transactions, LLC v. IYG Holding Co., et al., C.A. No. 06-043-SLR (D. Del. Mar. 9, 2011), Judge Robinson construed claims and ruled on a number of summary judgment cross motions concerning the infringement and validity of plaintiff Automated Transactions, LLC’s patents. The patents were related to a kiosk combining an automated teller machine with the ability to complete retail transactions over the internet. Judge Robinson granted the defendants’ motion for summary judgment of non-infringement upon the Court’s construction of the “internet interface” limitation in all the patents-in-suit. The defendants’ ATM systems, connected through a private network, were found not to infringe either literally or by the doctrine of equivalents, since the Court construed “internet” as a public network; that certain users could use the internet to enter one of the defendants’ private networks through a server was found to be immaterial. Furthermore, an “internet interface” was construed to mean access to the internet, not a network connection. Because the accused products did not have internet access, the Court granted the defendants’ motion for summary judgment of non-infringement.
The parties moved for summary judgment on the issue of invalidity for reasons of indefiniteness, anticipation, and obviousness. The Court held that the phrases “encryption services” and “security services” were not insolubly ambiguous in the context of the patent, regardless of the lack of an antecedent basis; Judge Robinson denied the defendants’ indefiniteness motion to this extent. But the Court found that the specification did not disclose sufficient structure to support the means-plus-function limitation in the claims of one of the patents-in-suit, a deficiency that led the Court to invalidate the patent. Genuine issues of material fact prevented summary judgment of anticipation based on the prior art asserted by defendants. Judge Robinson granted plaintiff’s motion for summary judgment on defendants’ obviousness defense, since defendants’ evidence depended on the Court’s construing “internet interface” to mean a TCP/IP connection, a construction not adopted.