Intellectual Property > IP Newsflash > E.D. Tex. Judge Denies Motion for Summary Judgment of Invalidity Based in Part on Expert Testimony
18 Mar '16

Judge Gilstrap of the Eastern District of Texas denied defendant Genband US LLC’s motion for summary judgment that plaintiff Metaswitch Networks Ltd.’s patent, relating to the control of communication sessions in a telecommunications network, was invalid. Metaswitch argued that the prior art patent application is fundamentally different from the asserted patent and does not disclose even a single limitation of the asserted claim 8. In general, Metaswitch’s arguments related to the asserted patent and prior art reference having different network topologies.

In denying the motion for summary judgment, the court found that “Metaswitch raise[d] material factual issues about whether [the patent application] actually fact [sic] discloses the limitations of claim 8 . . .” and “cite[d] the testimony of its expert . . . to support its position.” Specifically, the court stated that “Metaswitch’s arguments, supported by evidence and expert testimony, create material fact questions that defeat summary judgment on the issue of anticipation under § 102. These same fact questions, combined with additional disputes on the issue of whether the [reference used in combination] was publicly available, whether one of ordinary skill in the art would have been motivated to combine [patent application] and [combination reference], and whether secondary considerations undermine a finding of obviousness, compel denial of summary judgment on § 103 grounds as well.”

Metaswitch Networks Ltd. et al. v. Genband US LLC et al., 2-14-cv-00744 (E.D. Tex. Mar. 10, 2006). (J. Gilstrap).