Magistrate Judge Thynge Recommends Grant of Defendants’ Motion for Summary Judgment on Willful Infringement and Denial of Motion for Summary Judgment on Lost Profits Damages

In Masimo Corp. v. Philips Electronics North American Corp. and Philips Medizen Systeme Boblingen GMBH, C.A. No. 09-80-LPS-MPT (D. Del. June 14, 2013), Magistrate Judge Thynge recommended that the defendants’ motion for summary judgment of no willful infringement be granted, but that their motion for summary judgment on lost profits damages be denied with regard to four patents-in-suit.  Regarding the defendant’s motion for summary judgment of no willful infringement, Judge Thynge found that the defendants presented legitimate and credible defenses to the infringement claims and presented credible invalidity arguments.  Judge Thynge noted that the defendants “demonstrate[d] the lack of an objectively high likelihood that [the defendants] took actions constituting infringement of a valid patent.”  Relying on her previous ruling on all of the challenges to expert testimony, Judge Thynge denied the defendants’ motion for summary judgment on damages because the Court had decided previously to allow experts to provide conflicting testimony on the acceptability of a non-infringing alternative, as well as to allow the plaintiff’s expert to present his analysis on lost profits at trial.  

Judge Robinson Grants Defendants’ Motion for Summary Judgment of Non-Infringement and Denies Reconsideration

In Golden Bridge Technology, Inc. v. Apple Inc., C.A. No. 10-428-SLR (D. Del. Apr. 19, 2013), Judge Robinson granted the defendant’s motion for summary judgment of non-infringement and denied the plaintiff’s motion for partial summary judgment of infringement.  The Court found that the plaintiff had not carried its burden of showing that the accused products practiced a limitation at issue, which was recited in each asserted claim.  With respect to invalidity, the Court denied the defendant’s motion for summary judgment, applying the old Section 102 (and not the Leahy-Smith America Invents Act) because the asserted claims had effective filing dates before March 15, 2013.  The Court found that the plaintiff had offered evidence to assert conception along with evidence to corroborate that assertion, which created genuine issues of material fact.  Likewise, viewing the evidence of record in the light most favorable to the plaintiff, the Court concluded that genuine issues of material fact existed with respect to the diligence of the plaintiff from the date of the alleged conception to reduction to practice.  On April 25, 2013, in a memorandum order, after hearing oral argument and reviewing supplemental submissions related to the plaintiff’s emergency motion for reconsideration, Judge Robinson rejected the plaintiff’s “new attorney argument” and declined to change the Court’s summary judgment finding of non-infringement of all claims asserted against the defendant.  On June 13, 2013, Judge Robinson again denied reconsideration.  The Court noted that motions for reconsideration are not to be used as a means to argue new facts or issues that were inexcusably left out in the matter previously decided.

Judge Robinson Construes Claims and Denies Summary Judgment and Daubert Motions 

In Cellectis S.A. v. Precision BioSciences et al., C.A. No. 11-173-SLR (D. Del. Apr. 9, 2013), Judge Robinson issued the Court’s opinion construing claims, denying summary judgment, and denying the plaintiff’s Daubert motion one day before the pre-trial conference.  After construing the claims at issue, Judge Robinson denied the parties’ respective motions for summary judgment.  In so holding, Judge Robinson found that there were issues of material fact regarding infringement and invalidity for anticipation.  She also refused to preclude the defendant’s expert on best mode and obviousness and found that the expert’s opinions were admissible, but that his analysis and conclusions could be questioned on cross-examination. 

Judge Robinson Rules on Several Summary Judgment Motions

In Invista North America S.A.R.L. et al. v. M&G USA Corporation et al., C.A. No. 11-1007-SLR-CJB (D. Del. June 25, 2013), Judge Robinson granted the defendants’ motion for summary judgment of no direct infringement of the ’159 and ’216 patents, but granted the plaintiffs’ motion for summary judgment of post-filing induced infringement and contributory infringement of the ’216 patent.  The Court denied the plaintiffs’ motion for summary judgment of indirect infringement of the ’159 patent and the defendants’ motion for summary judgment of no indirect infringement of the ’930 patent, holding that questions of fact remained in dispute.  The Court also denied the defendants’ motion for summary judgment of invalidity as to all asserted claims of the three patents-in-suit, and granted in part the plaintiffs’ cross-motion for partial summary judgment of validity, to the extent that the defendants raised untimely theories of invalidity regarding the ’159 and ’216 patents.  Finally, the Court denied the parties’ motions for summary judgment of invalidity and validity of the ’930 patent on the grounds that the parties relied on competing expert testimony regarding the defendants’ various 35 U.S.C. § 112 defenses, and therefore genuine issues of material fact remained.