Fiber Systems Intern., Inc. v. Applied Optical Systems, Inc., 2009 WL 3571350(E.D.Tex. Oct 26, 2009) (NO. 2:06-CV-473)
Judge: T. John Ward
Holding: Plaintiff's Motion for Summary Judgment as to Defendant's Affirmative Defense and Counterclaims GRANTED IN PART
This is a patent case which just had its pretrial conference and jury selection last week. In response to FSI's infringement claim, defendant AOSI raised eight affirmative
defenses and counterclaims: (1) patent invalidity, (2) inequitable
conduct, (3) impermissible broadening of claims, (4) unenforceability
due to express or implied license, (5) patent misuse, (6) antitrust
violations, (7) unfair competition, and (8) fraud and negligent
misrepresentation. FSI filed a motion seeking summary judgment as to all of these claims.
On invalidity, AOSI contended that the patent in suit was invalid on grounds of anticipation, obviousness, and lack of enablement. Judge Ward granted the summary judgment in part here, knocking out AOSI's defenses of anticipation and enablement (the latter of which AOSI did not respond in opposition), but denied it as to obviousness, noting that while AOSI had not designated an expert on obviousness, it was not required to put on expert testimony to support its claim of obviousness. AOSI had also argued as a ground of invalidity that FSI impermissibly broadened the scope of its claims during reexamination. For essentially the reasons outlined in the Report and Recommendation filed by Judge Everingham, Judge Ward held that AOSI's defense lacked merit, and FSI was entitled to summary judgment on this defense.
On inequitable conduct, Judge Ward denied the motion, finding a genuine issue of material fact. Also, because AOSI claimed that it was not alleging express or implied license or patent misuse as affirmative defenses, Judge Ward denied as moot FSI's motion for summary judgment as to these issues.
Finally, Judge Ward noted that AOSI's answer raised counterclaims against FSI for antitrust violations, unfair competition, and fraud and negligent misrepresentation. He denied the motion for summary judgment on the claim for unfair competition, fraud, and negligent misrepresentation, but found that the trial of the antitrust counterclaim in this patent infringement suit posed a significant risk of confusion for the jury, and accordingly sua sponte ordered a separate trial of AOSI's antitrust counterclaim. As such, FSI's motion for summary judgment on this counterclaim was carried with the case.
