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

The four patents-in-suit relate to needleless intravenous connector valves.  Plaintiff’s motion to exclude evidence (other than basic documentary evidence) from prior ICU patent litigations, including claim constructions and rulings on summary judgment motions, is denied to the extent it seeks to exclude claim construction on the same claim terms at issue here since they are relevant as to the defense to willful infringement.  A jury instruction will limit consideration of prior constructions to that defense.  The motion is otherwise granted. Defendant is precluded from referencing invalid claims and fee award from prior litigation as irrelevant and potentially prejudicial.  Motion to preclude evidence of comparison between the accused product and the commercial embodiment of the patents-in-suit is mooted by agreement not to preclude as to willfulness and obviousness contentions and otherwise granted. T hree in limine motions relating to inequitable conduct claims are denied based on prior rulings in this case.  Motion to exclude evidence of an inventor defense as untimely, confusing and prejudicial is denied.  Leave was granted to add this defense.  Motion to preclude documents ICU had withheld as relating to inequitable conduct is denied and the documents are to be produced within 7 days.  Defendant’s motion to preclude evidence of Lanham Act action is granted as the evidence is irrelevant and prejudicial.  Motion to prevent evidence of defendant’s prior alleged copying is granted.  Plaintiff’s motion to preclude defendant from asserting an untimely prosecution history estoppel defense is denied since the scheduling order entered by previous judge has been vacated and prosecution history estoppel is scheduled for bench trial in January 2011.  Court will consider whether additional discovery is needed.  Plaintiff’s motion to strike section 282 notice based on 28 prior art references noted, 12 of which were previously undisclosed, is denied.  ICU will not be permitted to use the newly discovered references as a basis for invalidating the patent. Plaintiff’s motion to exclude testimony of expert Dr, William R. Jarvis is granted.  This expert is an epidemiologist whose rebuttal report appears to the court to be a back-door way of encouraging the jury to conclude defendant’s products are safer than plaintiff’s.  The relative safety is not relevant and is unfairly prejudicial.  Finally, the court denies plaintiff’s motion for judgment on the pleadings or partial summary judgment with respect to inequitable conduct. The court finds credibility is important and notes that charges of inequitable conduct are ill-suited to summary judgment.