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

This case was originally filed in California in May, 2009, and then transferred to Delaware in August, 2009.  The disputed technology relates to a method and apparatus for dispensing objects, such as rivets, through a tube.  Claim construction opinion issued in February, 2011.  Defendant deposed the inventors of the patents-in-suit and then amended its contention interrogatory responses to assert a best mode invalidity defense based on the inventors’ deposition testimony.  Thereafter, it moved for summary judgment of invalidity for failure of the inventors to disclose their best mode.  Plaintiff crossed moved to strike the defense.  Summary judgment briefing concluded September 9, 2011, oral argument took place on September 19, 2011, and this opinion issued two weeks later.  Fact discovery closed on July 8, 2011, yet the newly asserted best mode defense was not disclosed until August 8, 2011.  The motion to strike was denied because, inter alia, plaintiff was partly to blame for the late timing of the inventors’ depositions.  Defendant’s motion for invalidity for failure to disclose the best mode was granted.  The inventors testified that the undisclosed information concerned the use of grooves essential to practicing the claimed invention and was determined through experimentation.  After reviewing the entirety of the inventors’ deposition transcript, no genuine issue of material fact existed regarding whether the best mode was disclosed in the patents-in-suit.