GENBAND US LLC v. Metaswitch Networks Corp. et al

Filing 457

MEMORANDUM ORDER. Signed by Magistrate Judge Roy S. Payne on 1/15/2016. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
GENBAND US LLC
v.
METASWITCH NETWORKS CORP., ET
AL.

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Case No. 2:14-cv-33-JRG-RSP

MEMORANDUM ORDER

Currently before the Court is Metaswitch’s Supplemental Brief Regarding Evidence of
Alleged Copying (Dkt. No. 420) filed by Metaswitch on January 7, 2016 objecting to rulings
made by the Court concerning exhibits and deposition designations during the Pretrial
Conference. The Supplemental Brief identifies statements made by the Court at the pretrial
conference about why evidence of alleged copying was admitted over Metaswitch’s objection.
The Court issues this Order to clarify any ambiguity or misunderstandings these statements may
have engendered.
Plaintiff maintained throughout the pretrial process that it was seeking to introduce
evidence of copying as an indicium of nonobviousness. Accordingly, evidence of alleged
copying was admitted because it is relevant to the obviousness determination, and the Court
admitted only such copying evidence as was shown to bear a nexus to the claimed technology.
See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d
1063, 1075-79 (Fed. Cir. 2012) (secondary considerations of non-obviousness serve as an
important check on hindsight bias and “must always when present be considered.”); Wm.
Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (“a nexus

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between the copying and the novel aspects of the claimed invention must exist for evidence of
copying to be given significant weight in an obviousness analysis”).
However, some evidence that might be used to support an inference of copying, such as
knowledge of the patented technology during development of the accused products, might also
support an inference of infringement. Although the law is clear that the ultimate fact of copying
has no legal relevance to infringement, such evidence is not rendered inadmissible simply
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because it could support either inference. In Allen Engineering Corp. v. Bartell Industries, Inc.,
299 F.3d 1336 (Fed. Cir. 2002), the Federal Circuit held, in discussing “the legal effect of
alleged copying,” that copying “is of no import on the question of whether the claims of an
issued patent are infringed.” Id. at 1350–51. The district court in that case appeared to have
compared the accused products to the patentee’s products in determining infringement. In
the present case, heedful of the Federal Circuit’s guidance, the Court did not pre-admit
evidence of copying on the basis of any perceived relevance to the issue of infringement.
Accordingly, the relief requested in the Supplemental Memorandum was, and is, denied.
SIGNED this 3rd day of January, 2012.
SIGNED this 15th day of January, 2016.

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ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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