Delaware Display Group LLC et al v. VIZIO Inc. et al.
MEMORANDUM OPINION regarding motions for summary judgment, motions to exclude, and motion to strike (D.I. 274 , 275 , 278 , 280 , 284 , and 287 ). Signed by Judge Richard G. Andrews on 3/1/2017. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
DELAWARE DISPLAY GROUP LLC and
INNOVATIVE DISPLAY TECHNOLOGIES
Civil Action No. 13-2112-RGA
Brian E. Farnan, Esq., Michael J. Farnan, Esq., FARNAN LLP, Wilmington, Delaware; Jeffrey
R. Bragalone, Esq., Patrick J. Conroy, Esq., Justin B. Kimble, Esq. (argued), Daniel F. Olejko,
Esq., T. William Kennedy, Jr., Esq. (argued), James R. Perkins, Esq. (argued),
BRAGALONE & CONROY LLP, Dallas, Texas.
Attorneys for Plaintiffs
Pilar G. Kraman, Esq., YOUNG, CONAWAY, STARGATT & TAYLOR, Wilmington,
Delaware; Jason C. Lo, Esq. (argued), Raymond A. LaMagna, Esq. (argued), GIBSON, DUNN
& CRUTCHER LLP, Los Angeles, California.
Attorneys for Defendant
The Plaintiffs are Delaware Display Group LLC and Innovative Display Technologies
LLC. The Defendant is VIZIO, Inc. On January 10, 2017, the Plaintiffs and Defendant
submitted a Joint Status Report identifying motions that require decision. (D.I. 364). This
memorandum addresses the following summary judgment motions identified in that Report: (1)
Defendant's Motion for Summary Judgment ofNon-Enablement and Written Description (D.I.
274); (2) Defendant's Motion to Exclude Expert Testimony of Dr. Frederic Kahn on the Issues of
Non-Enablement and Written Description (D.I. 275); (3) Defendant's Motion for Summary
Judgment of Non-Infringement of U.S. Patent No. 7,537,370 (D.I. 278); (4) Plaintiffs' Motion
for Partial Summary Judgment (on VIZIO's § 112 Enablement/Written Description Defense)
(D.I. 280); (5) Plaintiffs' Motion to Strike VIZIO's Opinions Related to Alleged Non-Infringing
Alternatives (D.I. 284); and (6) Plaintiffs' Motion to Exclude Testimony Relating to the Expert
Reports of Richard A. Flasck (D.I. 287). The parties fully briefed these motions. I held oral
argument on February 13, 2017. (D.I. 379 ("Tr.")).
Motion for Summary Judgment
"The court shall grant summary judgment ifthe movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter oflaw." FED.
R. C1v. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely
disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317,
330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a
dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury
to return a verdict for the non-moving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
2011 ). The burden on the moving party may be discharged by pointing out to the district court
that there is an absence of evidence supporting the non-moving party's case. Celotex, 477 U.S.
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue
for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986);
Williams v. Borough of West Chester, Pa., 891F.2d458, 460-61 (3d Cir. 1989). A non-moving
party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to
particular parts of materials in the record, including depositions, documents, electronically stored
information, affidavits or declarations, stipulations ... , admissions, interrogatory answers, or
other materials; or (B) showing that the materials cited [by the opposing party] do not establish
the absence ... of a genuine dispute .... " FED. R. Crv. P. 56( c)(1 ).
When determining whether a genuine issue of material fact exists, the court must view
the evidence in the light most favorable to the non-moving party and draw all reasonable
inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter,
476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only ifthe evidence is such that a
reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49.
If the non-moving party fails to make a sufficient showing on an essential element of its case
with respect to which it has the burden of proof, the moving party is entitled to judgment as a
matter oflaw. See Celotex Corp., 477 U.S. at 322.
Motion to Strike
Federal Rule of Evidence 702 sets out the requirements for expert witness testimony,
A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of an
opinion or otherwise if: (a) the expert's scientific, technical, or
other specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue; (b) the
testimony is based on sufficient facts or data; (c) the testimony is
the product of reliable principles and methods; and (d) the expert
has reliably applied the principles and methods to the facts of the
Fed. R. Evid. 702. The Third Circuit has explained:
Rule 702 embodies a trilogy of restrictions on expert testimony:
qualification, reliability and fit. Qualification refers to the
requirement that the witness possess specialized expertise. We
have interpreted this requirement liberally, holding that "a broad
range of knowledge, skills, and training qualify an expert."
Secondly, the testimony must be reliable; it "must be based on the
'methods and procedures of science' rather than on 'subjective
belief or unsupported speculation'; the expert must have 'good
grounds' for his o[r] her belief. In sum, Daubert holds that an
inquiry into the reliability of scientific evidence under Rule 702
requires a determination as to its scientific validity." Finally, Rule
702 requires that the expert testimony must fit the issues in the
case. In other words, the expert's testimony must be relevant for
the purposes of the case and must assist the trier of fact. The
Supreme Court explained in Daubert that "Rule 702' s
'helpfulness' standard requires a valid scientific connection to the
pertinent inquiry as a precondition to admissibility."
By means of a so-called "Daubert hearing," the district court acts
as a gatekeeper, preventing opinion testimony that does not meet
the requirements of qualification, reliability and fit from reaching
the jury. See Daubert ("Faced with a proffer of expert scientific
testimony, then, the trial judge must determine at the outset,
pursuant to Rule 104(a) [of the Federal Rules of Evidence] whether
the expert is proposing to testify to (1) scientific knowledge that
(2) will assist the trier of fact to understand or determine a fact in
Schneider ex rel. Estate ofSchneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (footnote
and internal citations omitted). 1 The proponent of expert testimony must "demonstrate by a
The Court of Appeals wrote under an earlier version of Rule 702, but subsequent amendments to the rule
were not intended to make any substantive change.
preponderance of evidence that the [expert's] opinions are reliable." Jn re Paoli R.R. Yard PCB
Litig., 35 F.3d 717, 744 (3d Cir. 1994).
Enablement and Written Description
The material facts are as follows. The patents-in-suit are U.S. Patent Nos. 7,434,974 (D.1.
277-7 ("'974 Patent")) and 7,537,370 (D.I. 277-8 ("'370 Patent")). The patents-in-suit claim
priority to June 27, 1995. (See '974 Patent; '370 Patent). The abstract of the '974 patent
Light emitting panel assembly includes a light emitting panel member received in
a cavity or recess in a tray or housing. The panel member has a pattern of light
extracting deformities on or in at least one surface of the panel member to cause
light received from at least one LED light source positioned near or against the
light entrance surface of the panel member to be emitted from a light emitting
surface of the panel member. The tray or housing acts as an end edge and/or side
edge reflector for the panel member to reflect light that would otherwise exit the
panel member through the end edge and/or side edge back into the panel member
for causing additional light to be emitted from the panel member.
('974 Patent, abstract). The abstract of the '370 patent provides:
Light emitting panel assemblies include an optical panel member having a pattern
of light extracting deformities on or in one or both sides to cause light to be
emitted in a predetermined output distribution. The pattern of light extracting
deformities on or in one side may have two or more different types or shapes of
deformities and at least one of the types or shapes may vary along the length or
width of the panel member. Where the light extracting deformities are on or in
both sides, at least some of the deformities on or in one side may be of a different
type or shape or vary in a different way or manner than the deformities on or in
the other side.
('370 Patent, abstract).
For the purposes of the enablement and written description analysis of the '974 patent,
claim 1 of the '974 patent is representative:
1. A light emitting panel assembly comprising at least a light emitting panel
member having a light entrance surface and a light emitting surface, at least one
LED light source positioned near or against the light entrance surface, and a tray
or housing having a cavity or recess in which the panel member is entirely
received, wherein the panel member has a pattern of light extracting deformities
on or in at least one surface to cause light to be emitted from the light emitting
surface of the panel member, and the tray or housing includes end walls and side
walls that act as end edge reflectors and side edge reflectors for the panel member
to reflect light that would otherwise exit the panel member through an end edge
and/or side edge back into the panel member and toward the pattern of light
extracting deformities for causing additional light to be emitted from the light
emitting surface of the panel member, wherein the tray or housing provides
structural support to the panel member and has posts, tabs, or other structural
features that provide a mount for mounting of the assembly into a larger assembly
('974 Patent). For the purposes of the enablement and written description analysis of the '370
patent, claim 1 of the '370 patent is representative:
1. A light emitting panel assembly comprising at least one light source, an optical
panel member having at least one input edge for receiving light from the at least
one light source, the panel member having front and back sides and a greater
cross sectional width than thickness, both the front and back sides having a
pattern of light extracting deformities that are projections or depressions on or in
the sides to cause light to be emitted from the panel member in a predetermined
output distribution, where the pattern of light extracting deformities on or in at
least one of the sides varies along at least one of the length and width of the panel
member and at least some of the light extracting deformities on or in one of the
sides are of a different type than the light extracting deformities on or in the other
side of the panel member, and at least one film, sheet or substrate overlying at
least a portion of one of the sides of the panel member to change the output
distribution of the emitted light such that the light will pass through a liquid
crystal display with low loss.
The novel aspect of the claimed invention of the '974 patent is using trays as a reflector
to direct the light from the LED light source instead of using a different reflector. (See '974
Patent; Tr. 80:12-14, 94:4-9).
The novel aspect of the claimed invention of the '3 70 patent is using a two-sided light
guide instead of a one-sided light guide in order to better focus light in a light emitting panel.
(See '370 Patent; Tr. 80:14-16, 94:12-23 2).
The claimed invention of the '974 Patent further requires a "LED light source" and the
claimed invention of the '370 Patent requires a "light source." (See '974 Patent; '370 Patent;
D.I. 276 at p. 3).
The light source limitation is "applicable to all sizes and types of edge-lit displays." (D.I.
276 at p. 3; D.I. 277-5 iii! 25, 27, 29). A person of skill in the art in 1995 would be able to use
either of the patents-in-suit to make LED edge-lit BLUs for devices "if they are small." (D.I.
276 at p. 7). For example, the patents could be used to make "[m]aybe 2- to 4- inch diagonal
devices." (Id.). On the other hand, "LED edge-lit monitors of only 15 or 17 inches 'couldn't be
done in 1995' .... " (Id.). I will refer to the latter type of devices as the "larger BLU s."
There is no genuine dispute that the light source limitation is merely a portion of the
claimed invention, and not the novel aspect of the claimed invention. (See Tr. 80:17-18; 94:523). Defendant cites to D.I. 292, Ex.Fat iii! 346, 348, 352-53, 371, 373, 377-78 to argue
otherwise. (D.I. 336 at 14). These cited paragraphs do not support the proposition that the light
source limitation is the novel aspect of the claimed invention. The cited paragraphs merely show
that, because the '974 patent required an LED light source and the cited prior art used
incandescent lighting technology, Plaintiffs' expert Dr. Kahn believed that the prior art failed to
meet the LED light source limitation of the '974 patent. It is an unreasonable to look at these
paragraphs in isolation and conclude from them that Dr. Kahn is saying that the light source
This portion of the transcript mistakenly calls the '370 patent the '974 patent.
limitation is the novel aspect. This evidence is not enough to create a genuine dispute of material
fact that the light source limitation is the novel aspect the claimed invention. This evidence is
consistent with the fact that the light source limitation forms only a tangential part of the asserted
Defendant does not otherwise dispute that, setting the light source limitation aside, the
claimed invention is adequately enabled and described. (See generally D.I. 276; D.I. 336).
The enablement requirement, considered a separate and distinct requirement contained in
35 U.S.C. § 112, ii 1, assesses whether "one skilled in the art, after reading the specification,
could practice the claimed invention without undue experimentation." Sitrick v. Dreamworks,
LLC, 516 F.3d 993, 999 (Fed. Cir. 2008). Because the enablement inquiry takes into account
what is known to one skilled in the art, the Federal Circuit has "repeatedly explained that a patent
applicant does not need to include in the specification that which is already known to and
available to one of ordinary skill in the art." Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d
1142, 1156 (Fed. Cir. 2004). "Enablement is a legal question based on underlying factual
determinations." Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 684 (Fed. Cir.
2015). Factors considered in assessing the enablement requirement include:
(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in the art,
(7) the predictability or unpredictability of the art, and (8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). "A party must prove invalidity for lack of
enablement by clear and convincing evidence." Vasudevan, 782 F.3d at 684.
Here, one skilled in the art, after reading the specification, could practice the claimed
invention without undue experimentation. In light of the overall claimed invention, the mere fact
that one skilled in the art would not be able to make "larger BL Us" in 1995 is not enough for
Defendant to survive Plaintiffs' motion for partial summary judgment, let alone prevail on
Defendant's own motion. The light source limitation is tangential in comparison to the claimed
invention. It is not the novel aspect. As such, disclosure of the "smaller BL Us" is sufficient for
one skilled in the art to practice the light source limitation. Thus, because one could adequately
practice the light source limitation and Defendant does not otherwise dispute that the claimed
invention is enabled, the amount of direction or guidance presented, the state of the prior art, and
the presence of working examples sufficiently sheds light on how to practice the light source
limitation and the claimed invention as a whole. The quantity of experimentation necessary to
practice the claimed invention is de minimis.
Defendant argues that the outcome in Automative Technologies International, Inc. v.
BMW ofNorth America, Inc., 501 F.3d 1274 (Fed. Cir. 2007), "illustrates the enablement
problem here." (D.1. 276 at p. 15). I disagree. Automative Technologies is distinguishable
because the enablement issue there related to the novel aspect of the patent, not to a tangential
limitation. See generally Auto. Techs., 501 F.3d 1274.3 There the court found that "[t]he novel
aspect of this invention is using a velocity-type sensor for side impact sensing." Id. at 1283.
Because electronic side impact sensors were "a distinctly different sensor compared with the
well-enabled mechanical side impact sensor," the court found inadequate enablement. Id. at
1285. Here, if the light source limitation were the novel aspect of the asserted claims,
Automative Technologies would be more on point. Because the light source limitation is not, I
find that there is adequate enablement of how to make or use this tangential limitation. See also
MagSil Corp. v. Hitachi Global Storage Technologies, Inc., 687 F.3d 1377 (Fed. Cir. 2012), is
distinguishable for the same reason.
Conceptus, Inc. v. Hologic, Inc., 2012 WL 44237, at *6 (N.D. Cal. Jan. 9, 2012) (finding that
radiofrequency energy was only a portion of the invention and not the entire novel aspect and
that it was therefore appropriate for the jury to supplement the specification on how to use
radiofrequency energy with the knowledge of one skilled in the art).
To hold otherwise would drastically alter the law of enablement. Suppose I had a product
claim that claimed a camera where the novel aspect was a design that allows it to take improved
pictures. As an additional limitation, I require a battery for the camera. The only role the battery
plays is to supply the power to the camera. The battery plays no other meaningful role. It is
clear that the battery is not the focus of the invention. My specification allows one skilled in the
art to make the battery technology of the time and implement my novel design. Years later,
novel battery technology is developed. It would be very harsh for enablement law to render my
product claim invalid for lack of enablement because my patent did not teach the new battery
technology when batteries were not even the focus of my claim. The law of enablement does not
command that result, nor should it.
The rationale for the enablement requirement is to "ensure[ ] that the public knowledge is
enriched by the patent specification to a degree at least commensurate with the scope of the
claims." Sitrick, 516 F.3d at 999. I think that in my battery example, and with respect to the
claimed inventions of the '974 and '370 patent, the public knowledge is adequately enriched by
the patent specification to the degree at least commensurate with the scope of the claims.
The written description requirement contained in 35 U.S.C. § 112, ~ 1 requires that the
specification "clearly allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Ariad Pharm., Inc., v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en bane) (alteration in original) (internal quotation marks omitted). "In other words,
the test for sufficiency is whether the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had possession of the claimed subject matter
as of the filing date." Id. The written description inquiry is a question of fact. See id. Although
it is a question of fact, "[c]ompliance with the written description requirement ... is amenable to
summary judgment in cases where no reasonable fact finder could return a verdict for the nonmoving party." PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008).
"A party must prove invalidity for lack of written description by clear and convincing evidence."
Vasudevan, 782 F.3d at 682.
My enablement analysis is directly relevant here. The specification clearly allows
persons of ordinary skill in the art to recognize that the inventor invented what is claimed in the
'974 and '370 patent. There is adequate disclosure of the light source limitation and of the
claimed subject matter as a whole.
Since there is no genuine dispute of material fact, Plaintiffs' partial motion for summary
judgment with respect to enablement and written description is granted. Defendant's
corresponding motion is denied. Accordingly, Plaintiffs' motion to strike Defendant's expert's
testimony with respect to enablement and written description and Defendant's corresponding
motion are both dismissed as moot.
Non-Infringement of U.S. Patent No. 7,537,370
Defendant's motion is denied because there are genuine disputes of material fact as to
whether the limitations "projections or depressions on or in the sides," "where the pattern of light
extracting deformities on or in at least one of the sides varies along at least one of the length and
width of the panel member," "at least some of the light extracting deformities on or in one of the
sides vary in a different way or manner than the light extracting deformities on or in the other
side of the panel member," and "transition region" are met. 4
Plaintiffs' Motion to Strike VIZIO's Opinions Related to Alleged NonInfringing Alternatives
The parties dispute whether statements of Defendant's infringement expert, Mr.
Credelle, and damages expert, Dr. Serwin should be stricken. (D.1. 285; D.I. 316; D.I. 333). I
deny Plaintiffs' motion to strike. VIZIO has set forth adequate information for Daubert purposes
that VIZIO had the ability to implement its alleged non-infringing alternatives. VIZIO has set
forth adequate information for Daubert purposes that the alleged non-infringing alternatives are
not equivalent to the accused products. VIZIO has set forth adequate information for Daubert
purposes that the alleged non-infringing alternatives are not purely speculative. Plaintiffs argue
that certain statements of Mr. Credelle and Dr. Serwin constitute ipse dixit testimony. (D.I. 285
at 13-15). They are not ipse dixit testimony because they are based on Mr. Credelle's experience
and adequate facts. Cross-examination is more suitable for Plaintiffs' concerns.
A separate order will be entered.
Defendant's concerns about the doctrine of equivalents and claim 8 are resolved. (D.I. 317 at p. 15).
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