Following construction of the claims, Judge Capser denied Philips 2019 motion for summary judgment of validity. WAC had sought inter partes review on several grounds, some of which were denied. Judge Casper, citing to Shaw Industries Group v. Automated Creel Systems, found that the Federal Circuit had determined that the estoppel resulting from an unsuccessful IPR did not apply to grounds that were not instituted by the PTO. Judge Casper denied WAC 2019s motion to compel the deposition of the named inventor of one of the patents-in-suit for lack of relevance. WAC had asserted that the inventor 2019s testimony was relevant on patent practices at the time the application was filed, prior art, the problem the patent allegedly solves, the underlying development of the technology claimed in the patent, the alleged contribution of each inventor to the patent, and the facts and circumstances surrounding the alleged invention. The problem was that none of these issues related to any claims or defenses of WAC, thus making these issues irrelevant. The court specifically noted, however, that the inventor was no longer an employee and was a resident of France, suggesting that the relevancy might have been sufficient had the witness been more readily available, but did not outweigh the inconvenience of making the witness appear.
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