Magistrate recommends denial of defendant's motion to dismiss -- again.
McKesson Automation, Inc. v. Swisslog Holding AG, et al., Civ. No. 06-28-LPS, October 30, 2009.
The Magistrate recommends denial of defendant’s motion to dismiss. Disputed terms are construed following a Markman Hearing. In addition recommendations are made on several competing motions for summary judgment. Finally, the parties’ competing motions to preclude expert testimony are denied.
The parties are in the business of manufacturing and selling automated pharmaceutical retrieval and distribution systems to hospitals. The patents-in-suit relate to automated systems for selecting and delivering packages to fill orders such as patient prescriptions. The accused device is a patented system for dispensing medications in hospitals. Defendant moves to dismiss based on its contention that plaintiff has failed to establish that it holds all rights, title, and interest to the patents-in-suit. This issue (whether a 1990 transaction plaintiff’s predecessor-in-interest and several investors did not involve an assignment of patent rights to the investors but, instead, only gave the investors a security interest in the patent rights) was previously considered and the motion denied by the Magistrate. Plaintiff objected and Judge Robinson declined to adopt the recommendation to deny the earlier motion to dismiss on the merits and instead denied it without prejudice to renew. Revisiting the issue, the Magistrate again finds that plaintiff holds all right, title, and interest in the patent rights and denies the motion.
The Court next considers the construction of the disputed claims following a Markman Hearing. Eight terms are construed for the two patents-in-suit.
Also decided are several competing motions for summary judgment. The Magistrate recommends granting plaintiff’s motions on inequitable conduct and validity as well as plaintiff’s equitable motion as it relates to the defenses of unclean hands, waiver, laches, and equitable estoppel. The Magistrate also recommends that defendant’s motion with respect to failure to mark be granted. The parties are granted leave to refile certain motions after the liability phase, including plaintiff’s equitable motion as it relates to the defense of patent misuse and defendant’s motions on willfulness. The remaining motions are denied including the parties respective motions to exclude expert testimony.
