Corning Incorporated v. Wilson Wolf Manufacturing Corporation

Background

Corning brought this case after Wilson Wolf filed patent-infringement lawsuits against users of Corning’s HYPERStack cell-culture product. Corning sought declarations concerning noninfringement, invalidity, unenforceability based on inequitable conduct, claim preclusion, and the Kessler doctrine, as well as a state-law claim for tortious interference with prospective economic advantage.

The remaining claims involved unenforceability of the ’192 and ’443 Patents based on alleged false declarations, noninfringement and invalidity of claims 6, 7, and 9 of the ’317 Patent, claim preclusion and Kessler-doctrine issues concerning the ’317 Patent, and tortious interference. The court had previously construed disputed patent terms and granted Corning summary judgment that the HYPERStack product did not infringe the ’192 and ’443 Patents.

’192 and ’443 Patent Claims

Defendants asked the court to dismiss Corning’s remaining unenforceability claims concerning the ’192 and ’443 Patents, arguing that the earlier noninfringement ruling made those claims moot. The court concluded that a live controversy still existed, but exercised its discretion to dismiss the claims so the case could proceed more efficiently. It granted the motion and dismissed Counts 2 and 5 without prejudice.

’317 Patent Summary Judgment

Corning sought summary judgment that claims 6, 7, and 9 of the ’317 Patent were invalid or, alternatively, that Corning’s product did not infringe them. The court held that issue preclusion—meaning that an issue already finally decided cannot be relitigated—applied based on findings in the earlier round of this litigation and on the Patent Trial and Appeal Board’s invalidation of claims in the related ’044 Patent, which the Federal Circuit affirmed.

The court determined that the claimed features of the ’317 Patent had already been found in prior art, including the Toner, Barbera-Guillem, and OptiCell references. It also found that the ’317 Patent claims were substantially similar to the invalidated ’044 Patent claims and that their differences did not materially change the invalidity question. The court therefore granted summary judgment for Corning on invalidity, stating that the ’317 Patent claims were invalid as a matter of law. Because invalidity resolved the issue, the court denied as moot Corning’s request for summary judgment on noninfringement.

Defendants’ Partial Summary-Judgment Motion

Defendants sought summary judgment on Corning’s tortious-interference claim and on Corning’s claim-preclusion and Kessler-doctrine claims concerning the ’317 Patent. The court found fact questions about whether the customer lawsuits were objectively baseless and brought in bad faith. It also found evidence that could support a jury finding that the ’317 Patent was patentably indistinct from earlier patents. The court therefore denied Defendants’ motion.

The court also ruled that bad-faith patent-infringement claims could satisfy the requirement under Minnesota law that the interference be independently wrongful or violate a statute or regulation. The court emphasized that denying summary judgment did not mean Corning would ultimately prevail at trial.

Expert-Testimony Motions

The court denied Defendants’ motion to exclude testimony from Corning’s experts, including opinions about the America Invents Act, prior-art conception dates, obviousness, and patentable distinction. The court concluded that the challenged opinions were sufficiently disclosed, useful, and reliable, while many of Defendants’ objections went to the weight of the testimony rather than its admissibility.

The court denied Corning’s motion to exclude damages expert Carol A. Ludington’s testimony as premature. It declined to exclude her opinions about alternative causes of reduced sales and her damages calculations at that stage, while noting that it could reconsider the issues at trial if the required factual foundation was not presented.

The court granted in part and denied in part Corning’s motion concerning John R. Wilson and Dr. Maury Cosman. Wilson was allowed to submit a more specific disclosure of his prior-art opinions, but he could not offer expert testimony about the commercial success of Corning’s products because he did not adequately connect that success to features claimed by the patents. Dr. Cosman could not rely on dictionary definitions or offer certain testimony about the meaning of patent claims, and his commercial-success opinion was excluded for the same lack of a sufficient connection to the claimed inventions.

Order

The court ordered that:

- Defendants’ motion to dismiss the remaining ’192- and ’443-Patent claims was granted, and Counts 2 and 5 were dismissed without prejudice. - Corning’s motion for summary judgment concerning the ’317 Patent was granted in part and denied in part: it was granted as to invalidity and denied as moot as to noninfringement. - Defendants’ motion for partial summary judgment was denied. - Defendants’ motion to exclude certain expert testimony was denied. - Corning’s motion to exclude Ludington’s testimony was denied as premature. - Corning’s motion to exclude Wilson’s and Dr. Cosman’s testimony was granted in part and denied in part.