Richards Layton & Finger
 

Judge Robinson Grants and Denies Pre-Trial Motions

January 13, 2017

In Intellectual Ventures I LLC, et al. v. Toshiba Corporation, et al., C.A. No. 13-453-SLR, 2016 WL 7341713 (D. Del. Dec. 19, 2016), Judge Robinson granted and denied multiple motions by the plaintiffs (“IV”) and defendants (“Toshiba”). The case involved infringement allegations related to five patents. Toshiba filed five pre-trial motions: (1) for partial summary judgment for claim priority as to the ‘270 patent, (2) for summary judgment of invalidity of the ‘788 patent, (3) for summary judgment of noninfringement of the patents-in-suit, (4) to exclude opinions and testimony of one of IV’s damages experts, and (5) for stay of proceedings with respect to the ‘819 patent. IV filed five motions: (1) for summary judgment of no available noninfringing alternatives to the five patents-in-suit, (2) for partial summary judgment of no invalidity of the five patents-in-suit, (3) for partial summary judgment of statutory estoppel of the ‘819 patent, (4) to exclude one of Toshiba’s damages experts, and (5) for certain discovery relief.

In analyzing the parties’ motions, the Court relied upon the parties’ experts to determine whether a particular issue should be left for the jury. Judge Robinson granted Toshiba’s motion for summary judgment of invalidity of the ‘788 patent after determining that Toshiba’s expert’s testimony demonstrated that there were no issues of fact with respect to anticipation of the patent’s claims. As a result, Judge Robinson denied IV’s motion for relief regarding the ‘788 patent as moot due to its prior finding of anticipation.

The Court granted in part and denied in part IV’s motion for partial summary judgment, finding that Toshiba may not raise obviousness arguments due to a prior PTAB decision involving the same patent. However, Toshiba was permitted to present additional invalidity grounds at trial. Also, Judge Robinson granted IV’s motion for relief for additional fact discovery and depositions pertaining to the ‘819 patent due to new noninfringement arguments offered by Toshiba in its rebuttal expert report.

As to Toshiba’s motion for summary judgment of noninfringement of the five patents-in-suit, Judge Robinson denied Toshiba’s motion, finding that there were issues of fact that should be left for the jury, such as whether the relevant SATA standards satisfy the claim limitations of the ‘788 patent. Additionally, the Court denied IV’s motion for partial summary judgment of invalidity of the five patents-in-suit.

The Court granted Toshiba’s motion for partial summary judgment of claim priority as to the ‘270 patent and denied IV’s motion for relief because the “motion practice devolved into a finger-pointing exercise,” id. at *16, stating that the Court will note objections at trial “based on such deficiencies.” Id. Due to the complexity of the case, Judge Robinson decided to bifurcate damages, and denied the parties’ motions to exclude testimony from the two damages experts and IV’s motion for summary judgment of no available, acceptable noninfringing alternates of the patents-in-suit.

Key Points:  Expert opinions and testimony can assist the Court in deciding certain pretrial motions. Often, if the experts present conflicting testimony, the Court will allow the issues to go to the jury.