Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

Defendants contend that plaintiff waited over six years after filing the patent application before telling the PTO it had claims to “automatically complet[ing] an on-line purchase,” an unreasonable delay serving to keep its invention hidden from the world.  Plaintiff responds that several of five patents in the same family were prosecuted simultaneously.  The Court finds that it must look at the history of the family as a whole.  It noted that Plaintiff’s explanation about the need to be selective in patent applications was reasonable.  The Court rejects the argument that Plaintiff misused its patents by coercing the World Wide Web Consortium into licensing its patent and by obtaining a contract to provide services beyond the life of the patents by asserting they were essential to a standard.  The court was unable to determine as a matter of law that Plaintiff’s agreements with XDI.ORG did not constitute per se patent misuse.  The court also found that evidence offered is insufficient on marking issues raised, and therefore denies Plaintiff’s motion, which asks the Court to hold as a matter of law that its marking was substantially consistent and continuous.  Finally, the Court grants plaintiff’s motion for summary judgment on the § 288 defense, noting that under that statute an invalid claim must be disclaimed before the commencement of suit.  None of the claims in dispute have been invalidated, and the motion is granted as a matter of law.