Case 1:18-cv-01855-RGA Document 232 Filed 05/04/21 Page 1 of 4 PageID #: 10790
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`GEMAK TRUST,
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`Plaintiff,
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`v.
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`RECKITT BENCKISER, LLC,
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`Defendant.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Civil Action No. 18-1855-RGA
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`MEMORANDUM ORDER
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`For the reasons stated in open court on May 4, 2021, IT IS HEREBY ORDERED that:
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`The motion to exclude testimony relating to GEMAK’s testing and infringement experts
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`(D.I. 175) is DENIED. It is premised upon Defendant’s argument that a review of Dr. Nuckolls’
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`report and a statement by Dr. Clauss at deposition means that Dr. Nuckolls’ SEM analysis is
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`unreliable. (D.I. 176 at 4). While it is true that the report puts photos that are at different
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`magnifications, Dr. Nuckolls’ analysis is not limited to comparing the photos in the body of the
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`report. (See, e.g., D.I. 183-2, Ex. B at ¶ 142) (stating “I conclude from my review of the above
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`two figures, as well as the additional images included in Exhibit I1”). The appendix has
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`numerous additional photos, and I do not read the report as engaging in some sort of unscientific
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`analysis. I note that Defendant’s experts made no comment in their reports on what Dr. Nuckolls
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`did. I also do not think using different beads in the before and after photos makes the method
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`unreliable. At most, what Defendant raises is a matter for a motion in limine or for cross-
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`examination.
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`The motion for summary judgment of invalidity due to indefiniteness (D.I. 177) is
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`DENIED. I do not think the indefiniteness argument is waived. Bringing it up on the basis that
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`Case 1:18-cv-01855-RGA Document 232 Filed 05/04/21 Page 2 of 4 PageID #: 10791
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`Plaintiff’s experts construed the construction provides a reasonable justification for it being
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`raised late. (D.I. 215 at 7-8). However, Defendant’s invalidity argument is premised on the
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`argument that Dr. Clauss could not put a percentage on what it meant to be “surrounded and
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`enclosed.” (D.I. 178 at 7). It does not appear to me that experts in the field use a percentage
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`analysis for what is “encapsulated’ or “surrounded and enclosed.” (See D.I. 198 at 9-10). As
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`Plaintiff noted, “a patentee need not define his invention with mathematical precision in order to
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`comply with the definiteness requirement.” Sonix Tech. Co. v. Publ’n Int’l, Ltd., 844 F.3d 1370,
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`1377 (Fed. Cir. 2017) (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384
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`(Fed. Cir. 2005)). Defendant is relying primarily on expert testimony wherein Dr. Clauss was
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`reluctant to impose a specific percentage limitation after explaining that “people of skill in the art
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`who practice detergent ingredient encapsulation very seldom do a quantitative measurement of
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`surface coverage.” (D.I. 183-5, Ex. E at 158:6-10). Certainly, since Defendant has no additional
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`expert testimony supporting its argument,1 it cannot be said that Defendant has proven
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`indefiniteness by clear and convincing evidence.
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`The motion for summary judgment of no willful infringement and no enhanced damages
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`(D.I. 179) is GRANTED in part and DISMISSED in part. Plaintiff has no evidence of
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`willfulness. That part of the motion is therefore granted. Based on the briefing, Plaintiff
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`presently has no evidence that Defendant had any awareness of the asserted patent before it
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`expired. It has no evidence that Defendant’s parent had any awareness either.2 Plaintiff seeks
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`1 Defendant notes that Dr. Clauss offered a quantitative surface measurement test when asked
`how to tell whether the percarbonate in Mr. Hinton’s patent is encapsulated, but Dr. Clauss first
`qualified this statement with “I don’t think there is a standard test to answer that question.” (D.I.
`178 at 8) (citing D.I. 183-5, Ex. E at 173:4-16).
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` 2
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` Mr. Hinton testified that he had two phone conversations between 2004 and 2006 with someone
`at a European Reckitt entity in Germany or Holland and sent them product samples. (D.I. 203,
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`Case 1:18-cv-01855-RGA Document 232 Filed 05/04/21 Page 3 of 4 PageID #: 10792
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`leave to depose a witness from Defendant’s sister company. (D.I. 197 at 2). The witness
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`appears to be a formulation scientist who was working for the sister company (or at least for
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`related companies) continuously for the last eighteen years. (D.I. 197 at 2; D.I. 203, Ex. 23).
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`Plaintiff had wanted to depose this witness earlier, but the pandemic intervened. (D.I. 197 at 3).
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`The record reflects that I entered an order permitting deposition of the witness after what was
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`otherwise the close of fact discovery. (D.I. 135). Thus, if the deposition can be accomplished in
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`the next three weeks, I will permit it. It will be limited to three hours. If it provides evidence of
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`willfulness, I will reconsider my ruling. But I will not sever willfulness from the rest of the case.
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`The request for no enhanced damages is dismissed as premature, inasmuch as the time for
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`consideration of enhanced damages is post-trial.
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`The motion for summary judgment of non-infringement (D.I. 181) is DENIED. Without
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`even considering the other evidence Plaintiff asserts to exist, I think the Defendant’s documents
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`describing the product and the SEM analysis are sufficient to create an issue for the jury. (See
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`D.I. 182 at 8-13).
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`The motion to exclude unreliable testing and evidence from Dr. Lalgudi (D.I. 184) is
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`DENIED. Plaintiff concedes that Raman Spectroscopy is established science and a “commonly
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`used technique.” (D.I. 218 at 9). Defendant cites scientific sources for the proposition that it is a
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`scientific method that can be used for studying surfaces, which is what Dr. Lalgudi uses it for.
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`(D.I. 196 at 5-6). Plaintiff’s argument with Dr. Lalgudi’s testing is that he used and interpreted it
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`incorrectly. (D.I. 218 at 9). I think the dispute here is at most a dispute between experts on that
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`point, which is an issue to be resolved at trial, not on a Daubert motion.
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`Ex. 21 at 535:20-537:5). He also testified that he did not remember mentioning the ‘514 Patent
`to this individual, only that he would have stated he had worldwide patent rights. (Id. at 541:7-
`19). The ‘514 patent issued September 7, 2004.
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`Case 1:18-cv-01855-RGA Document 232 Filed 05/04/21 Page 4 of 4 PageID #: 10793
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`IT IS SO ORDERED this 4th day of May 2021.
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`/s/ Richard G. Andrews
`United States District Judge
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`Page 4 of 4
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