Posted on November 9, 2012 by Gregory B. Williams

Judge Stark Denies Defendants' Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 305

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Exelis Inc. v. Cellco Partnership, et al., C.A. No. 09-190-LPS (D.Del., November 6, 2012), the Court issued its rulings on several motions for summary judgment and Daubert motions filed by plaintiff and defendants. Among other things, the Court denied defendants’ motion for summary judgment asserting invalidity of U.S. Patent No. 5,365,450 (“the ‘450 patent”) on grounds that plaintiff violated 35 U.S.C. § 305 by pursuing reexamination of the ‘450 patent for an improper purposes. Id. at 8.

In their motion, defendants contended that plaintiff pursued reexamination for the purpose of “fixing” the claim construction ruling rendered by Chief Judge Sleet in a prior action that involved the ‘450 patent. Id. at 7. During that prior action, Chief Judge Sleet issued a claim construction ruling that was later vacated by the Court on joint motion of the parties after the parties reached a settlement. Id. at 2.

In denying defendants’ motion for summary judgment of invalidity under Section 305, the Court found that “no reasonable fact finder could conclude that Plaintiff violated Section 305 by pursuing reexamination of the ‘450 patent for an improper purpose.” Id. at 7. The Court noted that plaintiff identified several proper purposes for seeking reexamination, including to address the prior art asserted in the prior litigation and to correct typographical errors in the original patent claims, and defendants offered no evidence - other than their mere suspicions – to counter plaintiff’s contentions. Id. at 7. Thus, the Court denied defendants’ motion for summary judgment and found that plaintiff was entitled to summary judgment that the reexamination was not filed for an improper purpose. Id. at 8.

A complete copy of the Memorandum Opinion is attached.
 

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Posted on June 16, 2012 by Gregory B. Williams

Judge Stark Denies Defendants' Motions for Summary Judgment of Non-Infringement

By Memorandum Opinion entered by the Honorable Leonard P. Stark in Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., C.A. No. 10-63-LPS (D.Del., June 14, 2012), the Court denied defendants’ motions for summary judgment of non-infringement, invalidity and no indirect infringement concluding that the record evidence raised genuine issues of material fact. The Court explained that, in large part, the subject “summary judgment motions present a ‘battle of the experts’ that is not amenable to resolution prior to the presentation of evidence, including testimony.” Id. at 2.

A complete copy of the Opinion is attached.
 

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Posted on March 10, 2012 by Gregory B. Williams

Judge Thynge Orders Plaintiffs to Supplement Their Response to Interrogatory Relevant to Defendant's Invalidity Defense

By Memorandum Order entered by the Honorable Mary Pat Thynge in Quantum Loyalty Systems, Inc., et al. v. TPG Rewards, Inc., Civil Action No. 09-022-SLR/MPT (D.Del., March 6, 2012), the Court ordered Plaintiffs, Quantum Loyalty Systems, Inc. and Quantum Corporation of New York, Inc., to supplement their response to interrogatory number 7 of Defendant, TPG Rewards, Inc., which asked Plaintiffs to explain why each claim of the patent-in-suit does not cover defendants 1993 and 2002 products which are at issue as prior art. Judge Thynge found Plaintiffs’ original response, which merely parroted claim language and generally pointed to documents on the Court’s docket, was not an adequate response to the interrogatory. Id. at 5.

A complete copy of the Memorandum Order is attached.
 

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Posted on January 30, 2012 by Gregory B. Williams

Judge Robinson Issues Court's Rulings on Several Dispositive Motions Filed by Parties in Infringement Action

By Memorandum Opinion entered by the Honorable Sue L. Robinson in Ladatech, LLC v. Illumina, Inc., et al., Civil Action No. 09-627-SLR (D.Del., January 24, 2012), the Court granted defendants’ motion for summary judgment of noninfringement with respect to defendant Illumina’s cluster generation products (alone) and the use of third-party prep kits with those products, but denied defendants’ motion in all other respects. The Court also denied defendants’ motion for summary judgment of invalidity and expiration, and granted plaintiff’s motion for summary judgment of no anticipation by the Saiki and/or Liang articles. Id. at 46.

A complete copy of the Memorandum Opinion is attached.
 

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Posted on January 21, 2012 by Gregory B. Williams

Judge Stark Agrees with Defendants that Material Contained in Two Patents Amount to Single Reference for Purposes of Anticipation Defense

By Memorandum Opinion entered by the Honorable Leonard P. Stark in Sunovion Pharmaceuticals Inc. v. Dey Pharma, L.P., et al., Civil Action 06-113-LPS (D.Del., January 18, 2012), the Court agreed with defendants that British patent, GB 1 298 494 (“the GB ‘494 patent”) adequately incorporates by reference the practical utility of the racemic compounds separately described in British patent, GB 1 200 886 (“the GB ‘886 patent”), such that the pertinent material from the two patents can be properly considered a “single reference” for purposes of defendants’ invalidity defense based on anticipation.

A complete copy of the Memorandum Opinion is attached.
 

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Posted on October 22, 2011 by Gregory B. Williams

Judge Stark Grants Defendants' Motion for Partial Summary Judgment of Invalidity for Failure to Disclose Best Mode

By Order, dated September 22, 2011, and Opinion later entered explaining the Court’s reasoning by The Honorable Leonard P. Stark, in Ateliers De La Haute-Garonne, et al. v. Broetje Automation-USA Inc., et al., Civil Action No. 09-598-LPS (D.Del., September 26, 2011, unsealed October 4, 2011), the Court granted the motion of defendants Broetje Automation-USA, Inc. and Bröetje-Automation GMBH (collectively, “Broetje”) for partial summary judgment of invalidity for failure to disclose the best mode as required by 35 U.S.C. § 112 ¶ 1.

A copy of the Court's Opinion is attached.
 

In support of its motion, Broetje asserted two best mode defenses. First, Broetje asserted that the patents-in-suit failed to adequately disclose joint inventor Bornes’s subject belief that tubes with “five grooves” or passageways were the best mode of practicing the claimed invention. Id. at 8. Second, Broetje asserted that the patents-in-suit failed to adequately disclose joint inventor Auriol’s subjective belief that tubes with an “odd number” of grooves were the best mode of carrying out the claimed invention. Id.

In opposition to Broetje’s motion, plaintiffs made, among others, two legal arguments to Broetje’s best mode theories. First, plaintiffs contended that, in cases of joint inventorship, the legal standard for best mode requires that all joint inventors reach an agreement or meeting of the minds that there is only a single best mode for practicing the invention and, thus, the discrepancy between the joint inventors’ subjective best modes should defeat Broetje’s motion as a matter of law. Id. Second, plaintiffs contended that a best mode violation requires “intentional” concealment of the best mode. Id.

The Court rejected both of plaintiffs’ legal arguments. Id. at 9-11. In rejecting plaintiffs’ first legal argument, the Court noted that the Federal Circuit, in Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1357, 1361-62, 1364-65 (Fed. Cir. 2011), in affirming summary judgment of best mode invalidity wherein the patents-in-suit listed six inventors, repeatedly indicated that the best mode requirement was violated by the failure of a single inventor to disclose his or her contemplated best mode. Id. at 9-10. In rejecting plaintiffs’ second legal argument, the Court found that, “[a]lthough some Federal Circuit decisions do contain passing references to intentional concealment in connection with the best mode requirement, the clear weight of Federal Circuit authority holds that intentional concealment is not required for best mode violations.” Id. at 10-11 (internal citations omitted).
 
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Posted on October 15, 2011 by Gregory B. Williams

Judge Stark Denies Broetje's Motion to Dismiss Alleging Lack of Subject Matter Jurisdiction Over Patent-in-Suit

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Ateliers De La Haute-Garonne, et al. v. Broetje Automation-USA Inc., et al., Civil Action No. 09-598-LPS (D.Del., October 13, 2011), the Court denied the motion of defendants Broetje Automation-USA, Inc. and Bröetje-Automation GMBH to dismiss plaintiffs’ first claim for lack of subject matter jurisdiction. In their motion, defendants asserted that the Court lacked subject matter jurisdiction over U.S. Patent No, 5,011,339 (“the ‘339 patent”) because the Applicants’ check to cover the issue fee bounced and, thus, the patent should be regarded as abandoned under 35 U.S.C. § 151 for failure to timely pay the required issue fee. Id. at 2. However, after considering the parties’ respective arguments and the evidence presented in the parties’ briefing and oral arguments, the Court concluded that plaintiffs established by a preponderance of the evidence that the issue fee was paid. Id. Thus, the ‘339 patent was not abandoned and the motion was denied.  Id. at 5.

A copy of the Court’s Memorandum Opinion is attached.
 

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Posted on September 30, 2011 by Gregory B. Williams

Judge Robinson Grants Palm's and Intermec's Motions For Summary Judgment on Invalidity and Infringement in Part

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Intermec Technologies Corp. v. Palm Inc., Civil Action No. 07-272-SLR (D.Del., September 15, 2011), the Court granted Defendant Palm Inc.’s (“Palm”) motion for summary judgment relating to its infringement counterclaims in part by finding no invalidity as to its U.S. Patent Nos. 6,665,803 (“the ‘803 patent”) and 7,096,049 (“the ‘049 patent”). The Court denied Palm’s motion for summary judgment of infringement of the ‘803 and ‘049 patents against Plaintiff Intermec Technologies Corp. (“Intermec”). Id. at 50. The Court also granted Intermec’s motion for summary judgment as to no infringement of claims 17, 18 and 22 of the ‘803 patent and claim 17 of the ‘049 patent. Id. at 51.

A complete copy of the Court’s Memorandum Opinion is attached.
 

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Posted on August 27, 2011 by Gregory B. Williams

Court Grants Defendant's Motion for Summary Judgment of No Willful Infringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Solvay, S.A. v. Honeywell Specialty Materials LLC, et al., Civil Action No. 06-557-SLR (D.Del., August 26, 2011), the Court granted defendant Honeywell’s motion for summary judgment of no willful infringement. The Court concluded that summary judgment of no willfulness was appropriate “because Honeywell presented a credible invalidity defense, precluding a finding of objective reasonableness despite the Federal Circuit’s ultimate rejection of the defense.” Id. at 13. In other words, despite the Federal Circuit's reversal of the district court's grant of summary judgment in favor of Honeywell on invalidity, the prior summary judgment ruling itself was enough to prevent the establishment of the objective prong of the willfulness standard. Id. at 10-13. The Court also denied Honeywell’s renewed motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(g) after finding that there are genuine issues of material fact as to whether Honeywell, as the party alleging prior invention, abandoned, suppressed or concealed the invention. Id. at 9-10.

A complete copy of the Court’s Opinion is attached.
 

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Posted on January 9, 2011 by Gregory B. Williams

Judge Robinson Grants Defendant's Motion for Summary Judgment of NonInfringement

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Autocell Laboratories, Inc. v. Cisco Systems Inc., Civil Action No. 08-760 (D.Del., January 5, 2011), the Court granted defendant’s motion for summary judgment of noninfringement, denied defendant’s motion for summary judgment of invalidity of the patent in dispute, and denied plaintiff’s motion for summary judgment of infringement. After comparing the defendant’s accused products to the construed claims at issue, claims 1 of 2 of U.S. Patent No. 7,369,858 (“the ‘858 patent”), the Court found that defendants’ products do not infringe the asserted claims of the ‘858 patent as a matter of law.

A complete copy of the Memorandum Opinion is attached.
 

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Posted on October 3, 2010 by Gregory B. Williams

Chief Judge Sleet Finds Two Of The Asserted Claims Of Plaintiffs' Patent-In-Suit Are Invalid Due To Indefiniteness

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in the consolidated patent infringement action, Aventis Pharma S.A., et al. v. Hospira, Inc., C.A. No 07-721-GMS and Aventis Pharma S.A., et al. v. Apotex, Inc., C.A. No. 08-496-GMS (D.Del., September 27, 2010), the Court concluded, among other things, that (1) claims 2 and 10 of the ‘561 patent are invalid due to indefiniteness; (2) all asserted claims of the patents-in-suit are invalid due to obviousness; and (3) the asserted claims are unenforceable due to inequitable conduct. Id. at 2. The Court made its ruling following a seven day bench trial and post-trial submissions by the parties.

A complete copy of the Memorandum Opinion is attached.
 

A patent claim satisfies the definiteness requirement of 35 U.S.C. § 112 if a person of ordinary skill in the art would understand the bounds of the claim when read in light of the specification. See 35 U.S.C. § 112 (2000). Paragraph 2 of 35 U.S.C. § 112 requires that the specification conclude with one or more claims “particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” Id. Significantly, “[a] claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope.” Id. at 20 (quoting Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008)).

With respect to its conclusion that claims 2 and 10 of the ‘561 patent are invalid due to indefiniteness, the Court agreed with defendants, Hospira and Apotex, that claims 2 and 10 of the ‘561 patent are indefinite because they impermissibly mix two categories of patentable subject matter. Id. at 20. Specifically, defendants asserted that claims 2 and 10 of the ‘561 patent, both of which are composition claims, “impermissibly include a process limitation: ‘whereby said composition is used to form’ (claim 2), and ‘whereby said therapeutic composition forms or is used to form’ (claim 10). Id. at 20.

After analyzing the claims at issue and the Federal Circuit’s holdings in IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005) (when a claim impermissibly mixes two or more classes of patentable subject matter, the claim is indefinite) and Microprocessor Enhancement Corp., 520 F.3d at 1375 (clarifying scope of IPXL Holdings opinion), the Court found that claims 2 and 10 of the ‘561 patent “fall squarely within the category of indefinite claims discussed in IPXL Holdings, even as that holding was limited by Microprocessor Enhancement Corp.” Id. at 23. The Court followed the Federal Circuit’s reasoning in IPXL Holdings that noted, “when two separate statutory classes of invention are impermissibly mixed, a manufacturer or seller of the claim apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus.” Id. at 23 (citing IPXL Holdings, 430 F.3d at 1384. The Court concluded that same reasoning applied to claims 2 and 10 of the ‘561 patent, because they are mixed subject matter claims and it is not clear from those claims when they would be infringed. Id. at 22.
 
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Posted on June 19, 2010 by Gregory B. Williams

Judge Robinson Enters Judgment in Favor of Defendants Apotex Upon Finding Patent Claims Invalid Based on Obviousness

In Senju Pharmaceutical Co. Ltd., et al. v. Apotex Inc., et al., Civil Action No. 07-779-SLR, the U.S. District Court for the District of Delaware, by and through a memorandum opinion entered by The Honorable Sue L. Robinson on June 14, 2010, entered judgment in favor of defendants, Apotex Inc. and Apotex Corp. (“Apotex”), and against plaintiffs, Senju Pharmaceutical Co. Ltd (“Senju”), Kyorin Pharmaceutical Co. Ltd. (“Kyorin”) and Allergan, Inc. (“Allergan”). The case is an infringement action that was tried by bench trial on January 12-14, 2010. In rendering judgment in favor of defendants, the Court concluded among other things that, although plaintiffs had demonstrated by a preponderance of the evidence that defendants’ ANDA product infringed claims 1-3, 6,7, and 9 of the patent in dispute, U.S. Patent No. 6,333,045 (“the ‘045 patent”), defendants demonstrated by clear and convincing evidence that those claims are invalid based on obviousness given the asserted prior art. Id. at 15-21 and 37.

A complete copy of the Court’s Memorandum Opinion is attached.
 

By way of background, plaintiffs Senju and Kyorin, are co-owners of the ‘045 patent and plaintiff Allergan is the holder of an approved New Drug Application (“NDA”) for a 0.3% gatifloxacin ophthalmic solution containing disodium edetate sold under the trade ZYMAR®. Id. at 1. The Orange Book lists, among other things, the ‘045 patent and U.S. Patent No. 4,980,470 (“the ‘470 patent”) in connection with ZYMAR®. Id. In July 2007, Defendant Apotex filed an Abbreviated New Drug Application (“the ANDA”) with the United States Food and Drug Administration (“FDA”) seeking approval, prior to the expiration of the ‘045 patent, to manufacture, market and sell a generic version of ZYMAR®. Id. at 1-2. On October 17, 2007, defendants sent plaintiffs written notification that the ANDA contained a Paragraph IV certification for the ‘045 patent. In the Paragraph IV certification, defendants contended that the ANDA product would not infringe claims 4, 5, 10 and 11 of the ‘045 patent and that all claims of the ‘045 patent are invalid. Id. at 2.

In November 2007, plaintiffs brought this action, pursuant to 35 U.S.C. § 271(e)(2)(A), alleging that the ANDA product would infringe claims 1-3,6,7 and 9 of the ‘045 patent. Id. Defendants responded with affirmative defenses and counterclaims seeking declaratory judgments of non-infringement, invalidity and unenforceability of the ‘045 patent. Id. The parties stipulated that, if the claims were found valid, the ANDA product would infringe claims 1-3 and 9 of the ‘045 patent. Infringement of claims 6 and 7 had to be proven by plaintiffs because defendants disputed that the ANDA product would infringe those claims. Id.

After considering all of the documentary evidence and testimony, the Court found and concluded as follows: (1) plaintiffs demonstrated by a preponderance of the evidence that defendants’ ANDA product infringes claims 1-3,6,7 and 9 of the ‘045 patent; (2) defendants demonstrated by clear and convincing evidence that claims 1-3 and 6-9 of the ‘045 patent are rendered obvious by the prior art; (3) defendants failed to demonstrate by clear and convincing evidence that claims 6 and 7 of the ‘045 patent are invalid for lack of enablement; and (4) defendants failed to demonstrate by clear and convincing evidence that the ‘045 patent is unenforceable due to inequitable conduct. Id. at 50.
 
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Posted on June 12, 2010 by Gregory B. Williams

Judge Kelly Denies Motion to Stay Defendants' Patent Counterclaims Pending Re-examination of Patents At Issue By USPTO

In Life Technologies Corporation, et al. v. Illumina, Inc., et al., Civil Action No. 09-706-RK (D.Del., June 7, 2010), the Court , by opinion entered by Senior Judge Robert F. Kelly, denied plaintiff Life Tech's motion to stay defendants' patent counterclaims pending re-examination of defendants' patents-in-suit by the United States Patent and Trademark Office ("USPTO").  In support of their motion, plaintiffs asserted that the re-examinations by the USPTO would likely to result in cancellation or changes of the asserted patent claims, that a stay would streamline issues in the action and promote judicial economy, and proceeding with Life Tech's invalidity case against defendant Illumina's patents in this action could be contradictory to the result of the re-examination of those patents by the USPTO.  Id. at 2-4.  Defendants countered by asserting that the delay in the re-examination process will be much longer than plaintiff suggests, the subject matter underlying plaintiffs and defendants infringement and invalidity claims are related, plaintiffs and defendants are direct competitors in the technology, and that it would be highly unlikely that proceeding in this action could produce a contradictory result in the re-examination proceeding before the USPTO because of the mandates of 35 U.S.C. § 317(b).  Id.

In denying plaintiffs' motion to stay, the Court reasoned that, although the re-examinations before the USPTO have the potential for simplifying the issues pertaining to the counterclaim patents in the case, the potential benefit would be at the expense of placing the counterclaim on hold for years while the plaintiffs' case continues.  Id. at 5.  Also, the patents in plaintiffs' case and the patents in defendants' counterclaim overlap at least to a certain extent and ,when one further considers that the claims at issue involve parties who are in direct competition, the potential for irreparable harm caused by a stay of the counterclaim far outweighs the possibility of simplifying some of the claims at issue.  Id. at 5-6.  Further, it is highly unlikely that a contradictory result could be reached in this Court and the USPTO in its re-examination proceeding because 35 U.S.C. § 317(b), which is applicable to inter-partes re-examinations, mandates that, if the Court proceeds in this action and Life Tech fails to prove that Illumina's patent claims are invalid, that result would be binding in the re-examinations.  Id. at 4.  Thus, the Court denied plaintiffs' motion to stay the counterclaim action.

A complete copy of the opinion is attached. 

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Posted on June 5, 2010 by Gregory B. Williams

Judge Farnan Issues Second Phase Opinion in LGD v. AUO

On April 30, 2010, The Honorable Joseph J. Farnan, Jr. issued the opinion setting forth the Court's findings of fact and conclusions of law in the second phase of the patent infringement action captioned LG Display Co., Ltd. v. AU Optronics Corp., C.A. No. 06-726-JJF (D.Del.).  In the second phase, the claims at issue were those asserted by LG Display Co., Ltd. ("LGD") alleging infringement of four patents against AU Optronics Corporation ("AUO") as well as AUO's invalidity defense.  In its latest opinion, the Court defined the disputed terms in the asserted patents and concluded that LGD did not establish by a preponderance of the evidence that AUO infringes the asserted patents.  The Court also concluded that AUO did not establish by clear and convincing evidence that the asserted patents are invalid.

Readers may recall that, in February 2010, Judge Farnan issued the opinion setting forth the Court's findings of fact and conclusions of law in the first phase of this patent infringement action which addressed AUO's patent infringement claims against LGD and LGD's invalidity defense.  See Blog Posting of February 21, 2010.  In the first phase opinion, the Court concluded that AUO did establish by a preponderance of the evidence that LGD infringed the patents asserted by AUO in this action, and LGD did not establish by clear and convincing evidence that such patents were invalid.

Thus, the Court ruled in favor of AUO in both phases of the action following the bench trial that took place in June 2009.  A complete copy of the second phase opinion is attached. 

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Posted on March 8, 2010 by Gregory B. Williams

Judge Robinson Defers Ruling On Process Patent Until After Bilski Decision By U.S. Supreme Court

In an opinion entered by The Honorable Sue L. Robinson on February 26, 2010 in Accenture Global Services GMBH v. Guidewire Software Inc., Civil Action No. 07-826-SLR, the Court denied without prejudice defendant Guidewire Software Inc.'s motion for partial summary judgment asserting the invalidity of U.S. Patent Nos. 7,013,284 ("the '284 patent") and 7,017,111 ("the '111 patent") claiming unpatentable subject matter and ordered that it be re-filed after the U.S. Supreme Court issues its ruling in Bilski v. Doll, 129 S. Ct. 2735 (U.S. 2009).

In their complaint, plaintiffs assert that Guidewire infringes the '284 patent and '111 patent.  The patents at issue describe a computer program for developing component-based software capable of performing tasks relating to insurance transactions such as claim processing.  Guidewire's motion for partial summary judgment of the invalidity of the '284 and '111 patents for claiming unpatentable subject matter is based on the machine-or-transformation test ("MORT test") set forth by the Federal Circuit in In Re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc).

The Bilski court explained that "a process is 'surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing."  Id. at 954.  However, in its opinion, the District of Delaware noted that the "Bilski court did not provide guidance as to the machine prong of the MORT test, stating that it would 'leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.'"

The District Court also noted that it believes "the claims of plaintiffs' patents would not meet the 'transformation' prong of the MORT test, but raise substantial questions under the 'machine' prong."  The Court further noted that, while the plaintiffs' patents recite some machine connection, it is unclear whether the degree of connectivity meaningfully limits the claimed scope.  Thus, given the fact that the U.S. Supreme Court may illuminate or alter the framework of the determination under the MORT test, the Court found it prudent to defer the subject matter inquiry under 35 U.S.C. § 101 until a decision is issued in Bilksi v. Doll. 

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Posted on February 21, 2010 by Gregory B. Williams

JUDGE FARNAN RULES THAT LG LITERALLY INFRINGES PATENTS OF AU OPTRONICS

In a Memorandum Opinion entered by The Honorable Joseph J. Farnan, Jr. on February 16, 2010, the United States District Court for the District of Delaware set forth its findings of fact and conclusions of law on the patent infringement claims of AU Optronics Corporation (“AUO”) against LG Display Co., Ltd. (“LGD”) which were tried by the parties during phase one of the bench trial held before Judge Farnan in June 2009.  The Opinion also sets forth the Court’s claim construction of the disputed terms in the asserted patents and its analysis concerning the infringement claims asserted by AUO against LG, and the invalidity defense asserted by LG.

Ultimately, the Court concludes that (1) AUO established by a preponderance of the evidence that LGD literally infringes the patents asserted by AUO in the action, and (2) LGD did not establish by clear and convincing evidence that the patents asserted by AUO in the action are invalid.  A complete copy of the Opinion is attached.

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Posted on February 14, 2010 by Gregory B. Williams

D.DEL. GRANTS INLINE'S MOTION FOR JUDGMENT AS MATTER OF LAW IN PART

By an opinion rendered by the Honorable Mary Pat Thynge, dated February 5, 2010, in Inline Corp. v. Earthlink, Inc., the U.S. District Court for the District of Delaware granted the motion for judgment as a matter of law of plaintiff, Inline Connection Corporation ("Inline"), as to the jury's patent invalidity verdict, but denied the motion as to the jury's non-infringement verdict.  The Court also denied Inline's motion for a new trial.

A copy of the opinion is attached.

By way of background, in June 2002, Inline filed suit against Earthlink, Inc. ("Earthlink") alleging infringement of U.S. Patent Nos. 5,844,596 ("the '596 patent"), 6,243,446 ("the '446 patent") and another patent.  In 2003, Inline added its U.S. Patent No. 6,542,585 ("the '585 patent") to the litigation.

The trial in the matter commenced in February 2007.  During trial, Inline asserted infringement of the following by Earthlink:  1) claim 61 of the '596 patent; 2) claims1 through 5 of the '446 patent; and 3) claims 1,2, 4, 8 and 9 of the '585 patent.  Earthlink denied infringement and alleged that the asserted claims were invalid because they were anticipated and obvious, and the patents failed to comply with the written description and enablement requirements of 35 U.S.C. § 112.

The jury returned a verdict in favor of Earthlink of non-infringement and that the asserted claims were invalid as anticipated and obvious, and the patent failed to comply with the written description and enabling requirements of 35 U.S.C. § 112.  Thereafter, Inline renewed its motion for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a) and, in the alternative, moved for a new trial pursuant to Rule 59(a).

Upon careful analysis of the jury's verdicts and the record, the Court concluded that there was not substantial evidence to support the jury's verdict on anticipation and that the record could not support the jury's verdict on obviousness.  The Court also concluded that there was not substantial evidence to support the jury's verdict of invalidity of the patents for failure to comply with the written description and enablement requirements of 35 U.S.C. § 112.  The Court further concluded that there was substantial evidence in the record to support the jury's verdict on non-infringement, and the jury's verdict of non-infringement was not "contrary to the great weight of the evidence", or "wholly irrational" as to warrant the granting of a new trial on the infringement issue. 
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