Judge Lee applies Therasense and Global-Tech in Summary Judgment Ruling
Among his eleven summary judgment rulings in MeadWestvaco’s (“MWV”) patent infringement suit against Rexam and Valois, Judge Lee dismissed claims of inequitable conduct under Therasense but allowed claims of inducement of infringement to survive under the Supreme Court’s new standard of “willful blindness.”
Judge Lee’s rulings heavily favored MWV, which prevailed on its motions for summary judgment on anticipation, obviousness and inequitable conduct and defeated Rexam’s and Valois’ motions on indefiniteness, infringement and willfulness. MWV lost only on the defendants’ motion for summary judgment on infringement under the doctrine of equivalents.
Judge Lee’s opinion can be found here and at MeadWestvaco Corp. v. Rexam PLC, Case No. 1:10CV511, 2011 U.S. Dist. LEXIS 92947 (E.D.Va. Aug. 18, 2011). Our earlier post on this case can be found here, and a summary of Judge Lee’s rulings follows:
Inequitable Conduct
Applying the heightened standard for inequitable conduct set forth in Therasense v. Becton, Dickinson & Co., 2011 U.S. App. LEXIS 10590 (Fed. Cir. May 25, 2011), Judge Lee held that the information allegedly withheld from the PTO was neither material nor established the requisite intent. MeadWestvaco had disclosed other references on the same subject of the withheld information, and so that information was cumulative. Further, the defendants “cannot provide any evidence of a specific intent to deliberately withhold information to the PTO.” “‘[N]on-disclosure, by itself, cannot satisfy the deceptive intent element.’”
For more information on the Therasense decision, see our earlier post here.
Willful Blindness
Judge Lee found sufficient evidence to send the issue of “willful blindness” under Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060, 2069-72 (2011) based on:
- Valois’ attempts to design around the MWV patents before the patents issued;
- Valois’ complete lack of knowledge of its supplier’s manufacturing process could support an inference that it deliberately avoided learning whether its supplier’s process infringed;
- Valois’ assertion that it has not provided any parameters or instructions to its suppliers lacked credibility.
For more detail on the "willful blindness" standard for inducement of infringement and the Global-Tech decision, see our earlier posts here and here.
Willful Infringement
Judge Lee also allowed MWV’s willful infringement to go to trial even though MWV did not move for a preliminary injunction. Judge Lee found evidence of objective recklessness based on evidence that:
- Valois copied MWV’s design;
- Valois lacked any good faith belief that its product did not infringe;
- Valois had a pure pecuniary motive
- Valois attempted to conceal its infringement;
- Valois failed to investigate its own conduct
The failure to move for a preliminary injunction, the Court held, was not dispositive but was merely a single factor in the willfulness analysis.
Other rulings
In addition, Judge Lee:
- Granted MWV’s motions for summary judgment on the defenses of anticipation and obviousness;
- Denied Rexam’s and Valois’ motions for summary judgment on indefiniteness because the claim terms at issue were amenable to construction;
- Denied Valois motion for summary judgment on infringement under 35 U.S.C. 271(a) based on its claim that its products were made outside the United States;
- Granted Valois’ motion for summary judgment on infringement under the doctrine of equivalents because MWV had added the key limitation during prosecution of the patent to overcome prior art.
