Federal Judiciary

Summary Judgment Rulings in "Petty Squabbles" Case

By Michael Smith

Candela v. Palomar Medical Technologies, Inc., 9:06cv277 (E.D. Tex. 2008)
Judge: Ron Clark
Holding: Motions for Summary Judgment DENIED (mostly)
Judge Clark's trial management order I posted on separately was accompanied by rulings on three pending summary judgment motions. I had them open anyway, so I thought I'd scribble down a quick summary for readers with nothing better to look at.
In the first, a motion by the defendant seeking to find the patent invalid on enablement grounds, Judge Clark denied the motion, holding that "[b]ased on a careful and thorough review of the record and the arguments presented, the court is persuaded that there are genuine issues of material fact as to whether the [patents-in-suit] are invalid for lack of enablement. Therefore, the court will deny [defendant's] motion for summary judgment."
Next up was the defendant's motion for summary judgment of noninfringement, which resulted in the by-now familiar pretrial staple (a post-trial requirement lately), the Eastern District Trim.   Judge Clark held that "[Plaintiff's] claims of active inducement of infringement . . . will be limited to actions occurring after [defendant] learned of the '999 patent on June 13, 2006" but denied the motion insofar as plaintiff's inducing infringement claim.  "Where there is a substantial non-infringing use," Judge Clark wrote, "the Plaintiff must either demonstrate that the accused product necessarily infringed the patent or point to a specific instance of direct infringement and restrict its suit to liability stemming from that specific instance. While the Plaintiff who identifies 'individual acts of direct infringement must restrict their theories of vicarious liability- and tie their claims for damages or injunctive relief to the identified act,' the Plaintiff who identifies 'an entire category of infringers (e.g., the defendant's customers) may cast their theories of vicarious liability more broadly and may consequently seek damages or injunctions across the entire category."
Finally, the defendant's motion for summary judgment re: damages based on the alleged lack of marking was denied.  Despite plaintiff's failure to produce a copy of the patent label for its products, "e-mails which show a general corporate policy of marking products with patent numbers" was sufficient to create a fact issue as to whether plaintiff marked its products with the patent number of the patent-in-suit. 
The fact issues are headed for trial in a Eastern District courtroom near you.

Full post as published by Eastern District of Texas Federal Court Practice on September 10, 2008 (boomark / email).