Intellectual Property – Summary Judgment

February 22, 2011

Publication| Intellectual Property

Judge Robinson Denies Motion for Summary Judgment of Infringement
In Intermec Technologies Corp. v. Palm Inc., C.A. No. 07-272-SLR (D. Del. Sept. 14, 2010), Judge Robinson denied Intermec Technologies’ motion for summary judgment of infringement, but granted summary judgment of validity against most of Palm Inc.’s anticipation defenses. Intermec sued Palm for infringing two groups of its patents, the “system patents” for data capture systems and the “terminal patents” for data collection devices. The accused products were Palm’s data collection devices. On its motion for summary judgment of infringement, Intermec failed to show that the accused products met the limitations of the claims of the system or terminal patents. Without a finding of direct infringement, the Court did not have to consider Intermec’s indirect infringement allegations. In addition, Judge Robinson invalidated the claims of one of the system patents, but not those of one of the terminal patents; found that the system patents were not anticipated; found no anticipation on five of the six references asserted against the terminal patents; denied Palm’s summary judgment motion to invalidate one of the system patents for its failure to disclose best mode, for lack of enablement, and for inadequate written description; granted Intermec’s motion for partial summary judgment on Palm’s inequitable conduct defense against the system patents and the terminal patents; and granted Intermec’s motion for summary judgment that the terminal patents were not unenforceable for failure to join inventors.

Judge Robinson Grants Motions for Summary Judgment of Non-Infringement
In S.O.I. TEC Silicon on Insulator Technologies, S.A. & Commisseriat à l’Énergie Atomique v. MEMC Electronic Materials, Inc., C.A. No. 08-292-SLR (D. Del. Oct. 13, 2010), Judge Robinson granted both parties’ motions for summary judgment of non-infringement on their respective claims. Plaintiffs S.O.I. TEC Silicon on Insulator Technologies, S.A. and Commisseriat à l’Énergie Atomique (collectively, “Soitec”) had accused Defendant MEMC Electronic Materials, Inc. of infringing patents for silicon-on-insulator semiconductor wafers. The Soitec patents-in-suit comprised the “Bruel” patent, which was reissued from a patent found invalid for lack of enablement in an unrelated suit, and three patents sharing a common specification referred to as the “Aspar” patents. MEMC counterclaimed for the infringement of one of its patents. Judge Robinson granted MEMC’s motion for summary judgment of non-infringement of the Bruel patent, but found that Bruel satisfied the written description requirement; on the Aspar patents, prosecution history estoppel prevented Soitec from arguing that MEMC’s method of manufacturing wafers infringed Soitec’s patents.

Judge Robinson denied Soitec’s motion that the certificate of correction issued for one of the Aspar patents was valid; granted MEMC’s motion for summary judgment of invalidity that the phrase “sufficiently low” in the ’234 Aspar patent was indefinite; and on cross motions concerning the validity of the ’009 Aspar patent, found that the patent was neither anticipated nor made obvious by Bruel. The Court also found that the Aspar patents could claim priority to the first patent in the family that led to the Aspar patents. Judge Robinson granted summary judgment to Soitec that the ’009 Aspar patent satisfied the written description requirement and did not violate the best mode requirement. The judge denied Soitec’s motion for summary judgment of no inequitable conduct, however, since an attorney responsible for prosecuting the Aspar patents never informed the examiner about litigation involving a Soitec patent, the resulting invalidation of which led Soitec to narrow the claims of the ’009 Aspar patent during prosecution. Judge Robinson denied Soitec’s motion that MEMC’s patent failed to meet the enablement requirement, denied Soitec’s motion for summary judgment of invalidity for obviousness, and granted Soitec’s motion for summary judgment of no infringement on a single claim, denying the remainder of the motion.

Judge Robinson Grants Motion for Partial Summary Judgment of Infringement
In Kenexa Brassring Inc. v. Taleo Corp., et al., C.A. No. 07-521-SLR (D. Del. Nov. 18, 2010), Judge Robinson granted Plaintiff Kenexa Brassring Inc.’s motion for partial summary judgment of infringement. Plaintiff alleged that programs made by Defendants Taleo Corp. and Vurv Technology, Inc. (“Defendants”) infringed its patents (the ’939 and the ’561) for a technology that reads résumés submitted online and prompts the user to verify that the information extracted is correct. Plaintiff moved for partial summary judgment of infringement, and Defendants moved for summary judgment on invalidity. On infringement, Judge Robinson found that the Vurv products infringed the claims of all the patents-in-suit and the Taleo products infringed most of the claims at issue in the motion. The Court also denied Defendants’ motion for summary judgment of invalidity.

Judge Stark Denies Summary Judgment and Rules on Several Other Motions
In Laboratory Skin Care, Inc., et al. v. Limited Brands, Inc., et al., C.A. No. 06-601-LPS (D. Del. Dec. 6, 2010), Judge Stark denied Defendants’ motion for summary judgment of invalidity because Defendants failed to show that there was no genuine issue of fact; granted Plaintiffs’ motion to preclude Defendants from relying on documents identified for the first time in their reply brief because Defendants violated Rule 7.1.3(c)(2) of the District of Delaware Local Rules, which prohibits the party filing an opening brief from reserving material for the reply brief; and denied Plaintiffs’ motion for leave to file a sur-reply brief in support of their motion for summary judgment of invalidity as moot in light of the Court’s decision to deny Defendants’ motion for summary judgment. Judge Stark granted Defendants’ motion to bifurcate liability issues from damages and willfulness because the Court found it proper to exercise its discretion and try infringement separately from the issues of damages and willfulness.

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