In a recent memorandum order, Judge Robinson provided rulings and guidance on several evidentiary issues in advance of trial. Ladatech, Inc. v. Illumina, Inc., et al., C.A. No. 09-627-SLR (D. Del. Feb. 14, 2012). First, the Court rejected the defendants’ proposed jury instruction that would have required the plaintiff to show evidence of a “lack of good faith” by the defendants to prove inducement to infringe. Judge Robinson explained, “Defendants may properly argue that Illumina possessed a good faith belief that its directions to customers would not cause the acts that constitute infringement. . . . [but] Illumina’s lack of good faith is not an element of plaintiff’s prima facie case[.]” Id. at 1-2 (emphasis in original). Next, Judge Robinson ruled that, given the parties’ stipulation that Illumina knew of the patent at issue, any evidence regarding failed licensing attempts between the plaintiff and defendants was not necessary to plaintiff’s proving that Illumina intended to induce infringement, and would be more prejudicial and potentially confusing than probative. Id. at 2-3. Judge Robinson disagreed, however, with the defendants’ argument that evidence of licensing attempts also should be inadmissible under Rule 408, explaining that “[t]here is no indication that the parties’ discussions took place while litigation was pending (such that defendants’ license request(s) could be deemed an offer of settlement).” Id. at 2 n.2 (citing SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1375 n.1 (Fed. Cir. 2007)). Finally, Judge Robinson provided guidance on the parties’ use of the reexamination file wrapper at trial, and cautioned that “it has been the court’s observation that reexamination evidence is, at best, confusing vis-à-vis the complex invalidity standards the jury is asked to apply. . . . Therefore, the parties are required to give notice to each other (and to the court) prior to referencing the reexamination at trial. Id. at 4.
Ladatech, LLC v. Illumina, Inc., et al., C.A. No. 09-627-SLR (D. Del. Feb. 14, 2012).
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