In Lambda Optical Solutions, LLC v. Alcatel-Lucent USA Inc., et al., C.A. No. 10-487-RGA-CJB (D. Del. July 31, 2015), Magistrate Judge Christopher J. Burke recommended denial of Defendants’ motion for summary judgment of invalidity based on anticipation and obviousness. The Court first recommended denial as to anticipation because it concluded that issues of material fact remained as to whether the claimed anticipatory references (printed publications) were enabling. The Court first concluded, as to whether there is a presumption of enablement of prior art publications, that it was in agreement with other decisions of the District Court that it should presume a printed publication is enabled. Id. at 11-12. However, the Court ultimately found that there were genuine issues of material fact as to enablement of the prior art based on how long it took between publications of those articles sand when Defendants introduced an applicable commercial product. See id. at 13-14. As to obviousness, the Court also found issues of material fact remained upon review of the record, including expert testimony. As to objective indicia of non-obviousness, the Court accepted Plaintiff’s position that the uncontested commercial success of Defendants’ accused products was relevant and contributed to the defeat of summary judgment: “[w]hile [Defendants] may later prove that all of its products that are at issue at trial do not infringe . . . the evidence put forth by [Plaintiff] as to such products may be considered at the summary judgment stage.” Id. at 20.
Update: On September 30, 2015, Judge Richard G. Andrews adopted the Report and Recommendation as to its obviousness findings, but denied and returned to the Magistrate Judge’s consideration the issue of anticipation. The Court rejected the recommended disposition that the motion for summary judgment as to anticipation be denied given the lack of expert testimony on the issue of enablement of certain prior art. Id. at 3-5. Instead, the Court concluded that “the dispositive issue for purpose of ruling on the objections is what sort of showing Plaintiff raised about lack of enablement to create a disputed factual issue,” noting that the parties had not focused on this issue in their briefing and “without any relevant expert opinion on enablement, what the records shows in argument about possibly relevant facts. . . . The subject matter is complex, and I do not think, under the circumstances of this case, that attorney argument is an adequate substitute for an analysis by a qualified expert. Expert testimony is, without a doubt, needed on the ultimate issue, should we get there, but I think it is also needed to raise the issue.” Id. at 3-4, 5. As a result, the Court “return[ed] the matter to the Magistrate Judge, for such handling as he deems appropriate. One possibility would be to consider the enablement challenge resolved, and proceed to the merits of the anticipation arguments. Another possibility would be to allow the parties to amend their expert reports to address the enablement issue.” Id. at 6.