ST. CLAIR INTELLECTUAL PROPERTY CONSULTANTS, INC., Plaintiff,
ACER, INC., et al., Defendants. MICROSOFT CORPORATION, Plaintiff,
ST. CLAIR INTELLECTUAL PROPERTY CONSULTANTS, INC., Defendant.
Richard D. Kirk, Stephen B. Brauerrnan, BAYARD, P.A., Wilmington, DE. Raymond P. Niro, Christopher J. Lee, Richard B. Megley, Frederick C. Laney, NIRO, HALLER & NIRO, Chicago, IL, Attorneys for St. Clair Intellectual Property Consultants, Inc.
Richard L. Horwitz, David E. Moore, POTTER ANDERSON & CORROON LLP, Wilmington, DE, Attorneys for Defendants.
Kai Tseng, Craig R. Kaufman, Michael C. Ting, FREITAS, TSENG & KAUFMAN LLP, Redwood City, CA, Attorneys for Defendants Acer Inc., Acer America Corporation, and Gateway, Inc.
Constance S. Huttner, VINSON & ELKINS LLP, New York, NY. Christopher V. Ryan, Avelyn Ross, Jennifer Nall, VINSON & ELKINS LLP, Austin, TX, Attorneys for Defendant Dell, Inc. and Lenovo (United States), Inc.
Jeffrey K. Sherwood, Leslie Jacobs, DICKSTEIN SHAPIRO LLP, Washington, DC. Attorneys for Defendants Toshiba Corporation, Toshiba America Information Systems, Inc., and Toshiba America, Inc.
William J. Marsden, Jr., Tara D. Elliot, FISH & RICHARDSON P.C., Wilmington, DE. Lauren A. Degnan, Brian Racilla, FISH & RICHARDSON P.C., Washington, DC, Attorneys for Microsoft Corporation.
Chad S. Campbell, Timothy J. Franks, PERKINS COlE LLP, Phoenix, AZ. Michael D. Broaddus, PERKINS COIE LLP, Seattle, WA, Attorneys for Intervenor Intel Corporation.
LEONARD P. STARK, District Judge.
Presently before the Court is Defendants Acer, Inc., Acer America Corporation, Gateway, Inc., Dell, Inc., Intel Corporation, Lenovo (United States) Inc., Toshiba Corporation, Toshiba America Information Systems, Inc., Toshiba America, Inc., and Microsoft Corporation's (collectively, "Defendants") Motion for Summary Judgment ofLaches (D.I. 637, C.A. No. 09-354; D.I. 352, C.A. No. 10-282), as well as St. Clair Intellectual Property Consultants, Inc.'s ("St. Clair") Motion for Summary Judgment Dismissing Defendants' Affirmative Defenses and Counterclaims for Inequitable Conduct (D.I. 647, C.A. No. 09-354; D.I. 296, C.A. No. 10-282).
St. Clair filed suit against Acer, Inc., Acer America Corporation, Dell Inc., Gateway Co., Inc., Gateway, Inc., Lenovo Group, Limited, and Lenovo (United States) Inc. on May 15, 2009 (D.I. 1, C.A. No. 09-354), and against Apple Inc., Toshiba Corporation, Toshiba America Information Systems, Inc., and Toshiba America, Inc. on September 18, 2009 (D.I. 1, C.A. No. 09-704) alleging infringement of U.S. Patent Nos. 5, 613, 130 (the "130 patent"), 5, 630, 163 (the "163 patent"), 5, 961, 617 (the "617 patent"), 5, 710, 929 (the "929 patent"), 5, 758, 175 (the "175 patent"), 5, 892, 959 (the "959 patent"), and 6, 079, 025 (the "025 patent") (collectively, the "patents-in-suit") relating to power savings and management. The 929, 175, 959, and 025 patents are referred to as the "Fung patents." Microsoft Corporation ("Microsoft") filed a declaratory judgment action on April 7, 2010 for non-infringement and invalidity of the Fung patents. (D.I. 1, C.A. No. 10-282) Intel Corporation's ("Intel") motion to intervene in the earlier filed suit was granted on June 4, 2010 and, on June 25, 2010, St. Clair filed counterclaims against Intel. (D.I. 178, 191, C.A. No. 09-354) On June 13, 2011, the Court consolidated case Nos. 09-354, 09-704, and 10-282. (D.I. 406, C.A. No. 09-354)
Fact discovery closed on December 16, 2011 and expert discovery closed on April 27, 2012. The Court construed the claims on August 7, 2012 and heard oral argument on numerous motions on March 27, 2013. On March 29, 2013, the Court issued a memorandum order granting Defendants' motion for summary judgment of laches and denying in part and granting in part St. Clair's motion for summary judgment dismissing Defendants' inequitable conduct defenses. (D.I. 875, C.A. No. 09-354) This memorandum opinion further explains the Court's decision on those two motions.
II. LEGAL STANDARDS
"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585-86 (1986). An assertion that a fact cannot be - or, alternatively, is - genuinely disputed must be supported either by citing to "particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials, " or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation marks omitted). The Court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
To defeat a motion for summary judgment, the nonmoving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586; see also Podobnik v. US. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue") (internal quotation marks omitted). However, the "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment;" a factual dispute is genuine only where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (stating entry of summary judgment is mandated "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will ...