Intellectual Property – Summary Judgment
November 8, 2013
Publication| Intellectual Property
Judge Robinson Grants in Part Defendant’s Motions for Summary Judgment, Denies Defendant’s Daubert Motion, and Construes Claims
In Netgear, Inc. v. Ruckus Wireless, Inc., C.A. No. 10-999-SLR (D. Del Sept. 30, 2013), Judge Robinson decided several motions and cross-motions for summary judgment, including plaintiff’s summary judgment motion of infringement and for validity of the patents-in-suit, as well as defendant’s motion for summary judgment on invalidity and non-infringement of the patents-in-suit. Finding certain claim limitations indefinite, the Court could not complete a meaningful infringement analysis. Therefore, plaintiff’s motions for summary judgment of infringement and validity were denied. The Court granted defendant’s cross-motion for summary judgment of non-infringement of the asserted claims and also granted in part defendant’s summary judgment motion of invalidity. As there was no direct infringement, plaintiff’s motion for summary judgment of indirect infringement was moot.
Defendant also filed a motion to exclude plaintiff’s expert testimony regarding the source code related to the patents-in-suit, because he did not review the entirety of the source code; rather, he reviewed the selections of source code provided to him by counsel. Defendant also argued that plaintiff’s expert did not test any accused infringing products. In response, plaintiff argued that the expert reviewed numerous source code files and that the selection was made based on testimony relating to the source code and defendant’s discovery responses. The Court agreed with plaintiff and denied defendant’s motion because the expert was not required to test the accused products and defendant failed to show that the expert’s testimony was based on unreliable sources. Further, the Court noted that the expert’s testimony was based on defendant’s source code and the testimony of defendant’s witnesses.
Finally, Judge Robinson construed several disputed terms for the five patents-in-suit, but found other disputed terms to be indefinite.
Judge Stark Grants Summary Judgment of Non-Infringement on Withdrawn Claims and Denies All Other Motions
In Personalized User Model, L.L.P. and Google Inc., C.A. No. 09-525-LPS (D. Del. Sept. 20, 2013), Judge Stark denied all motions for summary judgment, including non-infringement, invalidity, breach of contract, ownership, and lack of standing, except for Google’s motion for summary judgment of non-infringement with regard to one of the three patents-in-suit. Personalized User Model (PUM) earlier dropped the asserted claim and argued that the Court could not grant summary judgment over unasserted claims because the Court did not have jurisdiction over claims that were voluntarily withdrawn. The Court noted that the parties failed to come to an agreement regarding the stipulation of dismissal, and therefore the Court believed that it still had jurisdiction over claims relating to this patent. As there was no evidence to support a finding of infringement of this patent, the Court granted summary judgment of non-infringement.
Judge Andrews Grants Defendants’ Motion for Summary Judgment of Non-Infringement
In L-3 Commc’ns Corp. v. Sony Corp., et al., C.A. No. 10-734-RGA (D. Del. Sept. 19, 2013), Judge Andrews granted defendants’ motion for summary judgment. By way of background, at the Markman hearing, Judge Andrews found in favor of defendants and agreed that the performance of the patent at issue included two steps that were accomplished by “separate and distinct” elements. Granting defendants’ summary judgment as to literal non-infringement, Judge Andrews determined that defendants’ accused product performed these steps as a single circuit element, not as “separate and distinct elements.” Judge Andrews also held that the accused product did not achieve the same function in substantially the same way as what was claimed by plaintiff, and therefore defendants were entitled to summary judgment under the doctrine of equivalents.
Judge Robinson Construes Terms and Grants Summary Judgment of Non-Infringement of Certain Claims
In Vehicle IP, LLC v. Werner Enterprises, Inc., C.A. No. 10-503-SLR (D. Del. Sept. 9, 2013), Judge Robinson granted in part and denied in part defendant’s motion for summary judgment of non-infringement. The Court also denied plaintiff’s motion for partial summary judgment of infringement and construed eight terms of the patent-in-suit. Due to the complexity of the accused system and because the Court’s constructions differed from both parties’ proposed constructions, the Court could not determine at the summary judgment stage that, under the undisputed facts, “the accused system calculated taxes owed” under the Court’s construction with respect to two of the claims. As for the remaining asserted claims, Judge Robinson determined that there were sufficient undisputed facts to grant summary judgment of non-infringement. Further, the Court denied as moot defendant’s motion for summary judgment of invalidity and plaintiff’s motion for partial summary judgment that the pre-1995 system and methods are not prior art. According to the Court, both parties’ motions were moot given the Court’s prior decision to preclude defendant’s invalidity theory for being asserted untimely.
Judge Robinson Grants Non-Infringement Summary Judgment and Partial Invalidity Summary Judgment
In Gevo, Inc. v. Butamax™ Advanced Biofuels LLC, et al., C.A. No. 13-576-SLR (D. Del. July 26, 2013), Judge Robinson granted defendant Butamax™ Advanced Biofuels LLC’s (“Butamax”) motion for summary judgment of non-infringement of both biofuel patents-in-suit. The Court rejected Gevo’s doctrine of equivalents argument due to prosecution history estoppel, and in addition held that the doctrines of ensnarement and claim vitiation precluded its application. Further, the Court granted Butamax’s motion for summary judgment of invalidity as to one of the biofuel patents for lack of written description and enablement; however, the Court denied the motion as to the second patent because a single inoperative embodiment did not render the entire patent invalid in light of its extensive disclosures, and genuine issues of material fact remained as to the disclosures and the amount of experimentation required to practice the full scope of the claims. The Court also denied Gevo’s motion for summary judgment of validity, as material issues remained. Finally, the Court denied Butamax’s motion to exclude Gevo’s expert.