Summary judgment on noninfringment and invalidity is granted in part
Sigram Schindler Beteiligungsgesellschaft mbH v. Cisco Systems, Inc., Civ. Nos.09-72-SLR, 09-232-SLR, July 26, 2010.
Robinson, J. Plaintiff's motion to amend its pleadings is denied in part and denied in part as moot; defendant’s motion to dismiss Teles for lack of subject matter jurisdiction is denied as moot; SSBG is substituted for plaintiff pursuant to Rule 25(c); plaintiff’s motion for partial summary judgment of infringement is denied; defendant’s motion for summary judgment of noninfringement is granted; trial on the validity of the '453 and '902 patents is stayed pending final judgment by the Federal Circuit on the pending reexaminations; defendant’s motion for summary judgment of invalidity of the '453 and '902 patents is denied without prejudice to renew should the stay be lifted; defendant’s motion for summary judgment of invalidity of the '431 patent is granted; SSBG's motion for partial summary judgment of no inequitable conduct is denied; and both parties' motions to exclude expert testimony are denied as moot.
The court considers ten motions in two related infringement actions. The patents-in-suit relate to voice over internet protocol ("VoIP") telephony. Teles is the listed owner by assignment of the patents-in-suit. Teles transferred ownership of the '453, '902 and '431 patents by assignment to SSBG, a German corporation owned solely by inventor and founder of Teles. Two of the patents, ‘453 and ‘902 have been subject to an inter partes reexamination requested by defendant which has proceeded concurrently with this litigation. Each of the '453 and ‘902 claims on reexamination were rejected as anticipated and/or obvious. The parties have since appealed both final actions to the Board of Patent Appeals and Interferences. The court first denies as moot defendant's Motion to Dismiss since the parties agree that SSBG should be substituted for Teles in this case. Plaintiff’s attempt to add to the list of accused products is also denied since over 200 had already been listed and additional time had been grated to delete from not add to the list. In light of the concurrent ruling on construction, the court grants defendant’s motion for summary judgment of noninfringement and denies plaintiff’s motion for partial summary judgment of infringement. Defendant seeks judgment that two patents are invalid in view of the same references it has advanced in the reexaminations. The BPAI and Federal Circuit have not affirmed the rejection of any of the claims on reexamination and, consequently, the PTO's findings at this stage are not binding. However, due to the unique posture of this case, the court will stay the issue of validity of the '453 and '902 patents pending appeal of the rejections on the reexaminations. Daubert motions relating to validity are denied as moot. Defendant’s inequitable conduct claim, defendant asserts that the prosecuting attorney for the '431 patent application who also acted as lead counsel for SSBG in the '453 and '902 reexaminations, committed inequitable conduct by knowingly and intentionally failing to disclose information about those reexaminations to the examiner of the copending '431 patent application. In light of the similarity of rejected and copending claims in related applications, counsel’s involvement with both the reexaminations and the '431 application, counsel's failure to specifically inform the examiner of the rejections on reexamination, and the lack of any indication that the Examiner excused counsel from his duty of disclosure - an intent to deceive on the part of counsel is readily inferrable. Plaintiff’s motion for summary judgment of no inequitable conduct is denied because in view of the high level of materiality of the withheld information in this case, an intent to deceive by a named inventor on both the rejected patents and new '431 patent application is inferable. Defendant’s motion for summary judgment on the invalidity of the ‘431 patent is granted. The Court finds that it is indefinite and that the written description requirement is not satisfied by the '431 patent disclosure.
