432 F.Supp.3d 448
D. Del.2020Background
- Wasica Finance GmbH and BlueArc Finance AG sued Schrader entities for infringement of claim 6 of U.S. Patent No. 5,602,524 (TPMS receiver switching between "normal operating mode" and "pairing mode").
- Schrader and a co-defendant petitioned for IPR after suit was filed; the PTAB and Federal Circuit upheld claim 6 as patentable over at least one prior art reference (Oselin).
- At trial Schrader intends to assert obviousness defenses relying on Oselin plus 14 patents/ publications and a physical product ("ZR-1 Sensors"); many of those publications (and a 1990 article "Siuru") were reasonably available during the IPR, but physical products cannot be asserted in IPRs.
- Wasica moved for summary judgment that Schrader is estopped under 35 U.S.C. § 315(e)(2) from asserting obviousness grounds at trial that were raised or reasonably could have been raised in the IPR; Schrader disputed estoppel where the trial ground includes a physical product not itself raised in IPR.
- The parties also cross-moved on non-infringement ("switching device," autolearning receivers), notice under 35 U.S.C. § 287(a), license/exhaustion defenses, and multiple Daubert challenges to expert testimony.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether IPR estoppel (§315(e)(2)) bars obviousness grounds at trial that include a physical product when an available printed publication disclosing the same product could have been raised in IPR | Wasica: estoppel applies because "grounds" and "evidence" are distinct; swapping a printed publication for the cumulative physical product is just changing evidence for the same ground | Schrader: IPR statute confines grounds to patents/printed publications; because physical products could not be raised in IPR, a trial ground that includes a product was not and could not be raised | Granted for Wasica: estoppel applies where the product is cumulative of printed publications reasonably available in IPR |
| Non-infringement (claim 6 "switching device" / autolearning receivers) | Wasica: Schrader misapplies claim construction; evidence shows receivers switch into pairing mode via connected components and thus infringe | Schrader: CORAX autolearning means receivers simultaneously operate in both modes or otherwise do not meet the switching limitation; also asserted substantial non-infringing uses | Denied for Schrader: genuine disputes of material fact exist; expert testimony admissible; summary judgment denied |
| Whether predecessor/exclusive licensee (Beru AG) gave actual notice under §287(a) allowing damages back to 2007 (or earlier) | Wasica: Beru AG (exclusive licensee) and patent owners communicated clearly with Schrader from 2001–2003 identifying alleged infringing systems; Beru had sufficient rights to give actual notice, so damages period extends | Schrader: Beru lacked patentee status under the license; long delay before suit may render notice ineffective | Granted for Wasica: reasonable jury could only find actual notice by 2003 from Beru; Beru had substantial rights; delay does not negate notice on this record |
| Exclusion of expert opinions (Daubert challenges to Schrader's and Wasica's experts) | Wasica: exclude Dr. Williams for misapplying claim construction; Schrader: exclude Dr. Neikirk on certain opinions; Wasica: exclude Dr. Meyer on damages bases | Defendants argue experts' methodologies are reliable and disputes go to weight | Mixed: court denied exclusion of Dr. Williams and most of Dr. Neikirk, but barred Dr. Neikirk from testifying on commercial-success nexus; denied exclusion of Dr. Meyer (challenges go to weight) |
Key Cases Cited
- Wasica Fin. GmbH v. Cont'l Auto. Sys., 853 F.3d 1272 (Fed. Cir. 2017) (Federal Circuit decision on IPR outcomes for the '524 patent)
- Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993) (trial court's gatekeeping role for expert testimony under Rule 702)
- Elcock v. Kmart Corp., 233 F.3d 734 (3d Cir. 2000) (standards for expert admissibility)
- In re Paoli R.R. Yard PCB Litig., 35 F.3d 717 (3d Cir. 1994) (district court discretion on evidence exclusion)
- Pineda v. Ford Motor Co., 520 F.3d 237 (3d Cir. 2008) (liberal policy of admissibility for expert testimony)
- Alfred E. Mann Found. Sci. Research v. Cochlear Corp., 604 F.3d 1354 (Fed. Cir. 2010) (factors for determining rights of an exclusive licensee)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (use of comparable licenses in reasonable-royalty analysis)
- Trell v. Marlee Elecs. Corp., 912 F.2d 1443 (Fed. Cir. 1990) (comparability of licenses in reasonable-royalty determinations)