United States District Court, D. Delaware
ATELIERS DE LA HAUTE-GARONNE (French Corporation) and F2C2 SYSTEMS S.A.S. (French Corporation), Plaintiff,
BROETJE AUTOMATION-USA INC. (Delaware Corporation) and BRÖ TJE-AUTOMATION GMBH (German Corporation), Defendant
For Ateliers De La Haute-Garonne, a French Corporation, F2C2 System SAS, a French corporation, Plaintiffs: James L. Higgins, Melanie K. Sharp, LEAD ATTORNEYS, Mary Frances Dugan, Monte Terrell Squire, Young, Conaway, Stargatt & Taylor LLP, Wilmington, DE.
For Broetje Automation USA Inc., a Delaware corporation, Defendant: Carrie A. Beyer, PRO HAC VICE; Darren Cahr, PRO HAC VICE; Patrick J. Kelleher, PRO HAC VICE; Todd C. Schiltz, Drinker Biddle & Reath LLP, Wilmington, DE.
For Broetje-Automation GMBH, a German Corporation, Defendant: Todd C. Schiltz, Drinker Biddle & Reath LLP, Wilmington, DE.
LEONARD P. STARK, UNITED STATES DISTRICT JUDGE.
Presently before the Court is Plaintiffs Ateliers de la Haute-Garonne (" AHG" ) and F2C2 Systems' (" F2C2" ) (i) Motion for Partial Summary Judgment as to Defendants Broetje Automation-USA Inc. and Brotje-Automation GMBH's (collectively, " Broetje" ) Invalidity Defenses (D.I. 176) and (ii) Plaintiffs' Cross-Motion to Strike Defendants' Late Asserted Defenses, Late Disclosed Prior Art References and Prior Art Combination Unsupported by Expert Testimony (D.I. 203). The Court has already addressed Plaintiffs' requests for judgment of no anticipation, non-obviousness, and no invalidity due to failure to disclose best mode. ( See D.I. 367¶ 3) The Court reserved judgment on Plaintiffs' motion for judgment of no invalidity due to indefiniteness. ( Id. ) Similarly, the Court has already denied Plaintiffs' cross-motion to strike except for Plaintiffs' request to strike the indefiniteness defense for being untimely. ( Id. at ¶ 5) For the reasons set forth below, the Court will now deny the remaining portion of Plaintiffs' motions to strike (D.I. 176) as well as Plaintiffs' request for judgment of no invalidity due to indefiniteness (D.I. 203).
1. On May 12, 2009, Plaintiffs filed this lawsuit in the Central District of California alleging, among other things, that Defendants infringed U.S. Patent Nos. 5,011,339 (" the '339 Patent" ) and 5,143,216 (" the '216 Patent" ). (D.I. 1) The action was transferred to this Court on August 13, 2009. On August 22, 2011, Plaintiffs filed a motion for partial summary judgment on issues related to the validity of the patents-in-suit. (D.I. 176) On September 1, 2011, Plaintiffs filed a cross-motion to strike Defendants' defenses related to the validity of the patents-in-suit. (D.I. 203)
2. On September 26, 2011, this Court invalidated the asserted claims of the patents-in-suit for failure to disclose the best mode. (D.I. 335) On appeal, the United States Court of Appeals for the Federal Circuit reversed that ruling and remanded the case to this Court for further proceedings. (D.I. 350)
3. Plaintiffs renewed both the motion to strike as well as the motion for partial summary judgment. (D.I. 362)
4. In their motion to strike, Plaintiffs contend that Defendants' invalidity defenses are untimely because Defendants did not assert or disclose any of the invalidity
defenses until one month after discovery purportedly closed. As the Court ruled with respect to Defendants' other allegedly untimely invalidity defenses, Defendants' indefiniteness defense was not untimely when filed. Defendants obtained the basis for asserting their indefiniteness defense after deposing the named inventors of the patents-in-suit. (D.I. 299 at 4) Defendants presented their invalidity defenses days after those depositions. ( Id. at 4-5) Moreover, since Plaintiffs have now had notice of the defenses for years, and because trial is still more than two months away, any undue prejudice that Plaintiffs may face can be remedied before trial. As such, the Court will deny Plaintiffs' motion to strike.
5. In their motion for partial summary judgment, Plaintiffs contend that Defendants are foreclosed from proving indefiniteness at trial because " [a]s a matter of law, 'a claim that is amenable to construction is not invalid on the ground of indefiniteness.'" (D.I. 178 at 16) (citing Microprocessor Enhancement Corp. v. Tex. Instruments, Inv., 520 F.3d 1367, 1376 (Fed. Cir. 2008)) Defendants counter that " [e]ven if a claim term's definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into ...