Intellectual Property Law

Judge Robinson: Lengthy Summary Judgment Opinion in Intermec Case

By Karen E. Keller, Andrew A. Lundgren et al.

On Wednesday, Judge Robinson issued a lengthy summary judgment opinion on multiple invalidity and infringement issues in Intermec Tech. Corp. v. Palm, Inc., C.A. No. 07-272-SLR (D. Del. September 15, 2010).

The opinion touches on a variety of issues: indefiniteness, anticipation, direct & indirect infringement, written description, best mode, enablement, inequitable conduct, and, on top of everything else, non-joinder of inventors.

The Court held that the Palm devices did not infringe the Intermec patents, based largely on the Court's simultaneous claim construction opinion.

The Court then addressed several interesting issues. It held that two claims of one of the Intermec patents were invalid for indefiniteness, because the claims required a "first style" and a "second style" that were "different," but the specification did not explain with sufficient precision what the first and second styles were, or how to judge whether they were "different."

The Court also denied Palm's inequitable conduct defense, holding that Palm had failed to show an intent to deceive (despite showing knowledge of prior art references that were not disclosed.)

Palm was shot down again when it tried to assert that some of the Intermec patents were invalid or unenforceable because the patents omitted inventors. Palm argued that since the patents-in-suit included fewer named inventors than earlier patents to which they claimed priority, some inventors must have been omitted. The first patent in the chain included four inventors, but the patents-in-suit included only two. The Court, however, held that Palm had failed to show that the two unnamed inventors had contributed to the claims of the patent-in-suit, rather than just to the specification. Additionally, even if they had contributed to the claims, the failure to name inventors does not invalidate a patent or render it unenforceable under current Federal Circuit law.

The Court addressed several other issues in its 67-page opinion, most of them coming out in favor of Intermec. Given the infringement outcome, though, Palm does not have much to complain about.

Intermec Tech. Corp. v. Palm, Inc., C.A. No. 07-272-SLR (D. Del. September 15, 2010)

Full post as published by Delaware IP Law Blog on September 17, 2010 (boomark / email).