Flatworld Interactives LLC and Samsung Electronics Co., Ltd, et al., C.A. Nos. 12-804-LPS ; 12-964-LPS, December 31, 2014.

Stark, C.J.  Defendants’ motion for summary judgment of invalidity is denied. Defendants’ motion for partial summary judgment limiting damages to post-complaint activities is granted. Declaration of Plaintiff’s expert in opposition to Defendants’ invalidity motion is stricken. Briefing on defendants’ motion was completed on November 12 and 14, 2013.  Argument was heard with Markman arguments on November 15, 2013.

The disputed technology relates to a system for manipulating images on a display using a touch-sensitive screen. Defendants contended that the patent was invalid based on lack of written description. Defendants move to strike the declaration of Eric J. Gould as improper, erroneous and unnecessary expert testimony.  The court grants the motion to strike without prejudice in light of the denial of the motion for summary judgment of invalidity.  Defendants argued that the inventor did not possess the negative limitation (removing images without leaving a representation)  because the specification does not describe a reason to exclude the limitation. The court concludes that based on its claim construction issued by separate order, which adopted plaintiff’s proposed construction of “representative thereof”), the claims do contain a negative claim limitation. Genuine issues of material fact preclude summary judgment of invalidity.  The court limits damages to past-complaint activities due to a failure to mark the single embodiment of the patent produced in discovery.  Plaintiff’s stated concern was that since reissue proceedings were ongoing, it could not have known whether any claims would be allowed and therefore was not required to mark or risk false marking claims.  The court finds that marking is required under section 287 during reissue proceedings.  The court also found that the de minimus exception to marking did not apply since the entirety of the articles made or sold were unmarked.  Actual notice was also lacking.