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

The disputed technology concerns semiconductor films (wafers) used in the manufacture of microelectric devices.  The court previously bifurcated willfulness and damages for both discovery and trial, but declined to bifurcate the issues of intervening rights and inequitable conduct.  Defendant’s motion for summary judgment of noninfringement is granted with respect to the Bruel patent; plaintiff’s motion that the patents in suit satisfy the written description requirement is granted with respect to the Bruel patent.  On cross motions regarding the ‘396 patent, the court finds the patent to be invalid, noting the disarray in the prosecution history, and finding the argument that the patent is valid to border on being frivolous.  The court finds that claim 24 of the ‘234 patent is not amenable to construction since there is no disclosure how diffusion of free gas from the wafer is to be measured, and is, therefore, indefinite as a matter of law.  Challenges to plaintiff’s ‘009 patent based on anticipation, obviousness, and written description fail.  Defendant also fails to convince the court on a best mode challenge based on the argument that the inventors failed to disclose a pre-cleaning step in a bonding technique.  The court denies plaintiff’s motion regarding no inequitable conduct, finding an inference of intent to deceive is justified.  Defendant did not file a cross motion on the topic of inequitable conduct.  A bench trial on inequitable conduct will be held but stayed pending expected guidance from the Federal Circuit in the pending matter of Therasense, Inc. v. Becton, Dickinson & Co.  With respect to Defendant’s ‘812 patent, Plaintiff’s lack of enablement defense fails because Plaintiff’s own expert admitted the patent is enabled.  The court denied Plaintiff’s motion regarding obviousness due to the cursory treatment of those issues and lack of expert opinion.  As for Plaintiff’s non-infringement motion, the court finds that Defendant did not narrow its claim as Plaintiff argues.  Plaintiff’s motion as to non-infringement of one claim of defendant’s patent is granted.  A motion to admit the testimony of patent law expert John T. Goolkasian is denied.