Free Order - District Court of Delaware - Delaware

Case 1:04-cv-01199-SLR Document 532 Filed 08/28/2008 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SRI INTERNATIONAL, INC., )
Plaintiff, i
v. g Civ. No. 04-1199-SLR
INTERNET SECURITY SYSTEMS, g
INC., et al., )
Defendants. g
O R D E R
At Wilmington this 28th day of August, 2008, having reviewed the papers
submitted by the parties in connection with various evidentiary disputes;
IT IS ORDERED that:
1. Defendants are precluded from offering into evidence the interim office
actions in the reexaminations of two of the patents-in-suit, as they have failed to offer
any persuasive authority in support of their request. (D.I. 527, 528)
2. Plaintiff is precluded from offering into evidence any "findings of facts"
allegedly made by the United States Court of Appeals for the Federal Circuit in QQ;
International, Inc. v. Internet Security Systems, Inc., 511 F.3d 1186 (Fed. Cir. 2008).
Although the "law of the case doctrine" has its place when a court decides upon a rule
of law, it has no place where the court "perceives factual issues that prevent entry of
summaryjudgment" on an issue of law. Q at 1195. For instance, the Federal Circuit
found, as a matter of law, that the EMERALD 1997 publication was an anticipatory

Case 1:04-cv-01199-SLB Document 532 Filed 08/28/2008 Page 2 of 3
document. Because anticipation is a legal conclusion based on underlying factual
determinations, one could argue that the law ofthe case doctrine embraced both the
legal conclusion and the facts of record to support it.‘
3. By contrast, the Federal Circuit rejected my legal conclusion that the Live
Traffic paper was a printed publication (and, therefore, invalidating prior art), because
the Court "perceive[d] factual issues that prevent[ed] entry of summary judgment." g
Certainly when l deny motions for summary judgment, l do not bind the parties with any
facts of record I note in support of my conclusion denying entry ofjudgment.2 ln the
first instance, a summary judgment record is not necessarily a complete record and, at
a minimum, does not have the benefit of live witnesses and an analysis of their
credibility. Moreover, the standard for reviewing the record in the context of a summary
judgment proceeding is very different than the standard that will pertain at trial, as
recognized by the Federal Circuit. Q, at 1197 ("Therefore, on summary judgment, this
court finds that the prepublication Live Traffic paper, though on the FTP server, was not
catalogued or indexed in a meaningful way and not intended for dissemination to the
_ public."). Finally, the Federal Circuit reviewed my "interpretation of the evidentiary
record." g The ultimate finder of fact, however, is the jury and, absent specific
*This is not inconsistent with the discussion in Aventis Pharma S.A. v. Amphastar
Pharmaceuticals, Inc., 525 F.3d 1334, 1344 (Fed. Cir. 2008), where the Federal Circuit
declined to revisit its legal conclusion as to materiality (except insofar as it related to the
issue of intent) because it had previously determined that there was no genuine issue
of material fact regarding materiality.
fg Univ. of Texas v. Camenisch, 451 U.S. 390, 395 (1981) (“[T]he findings of
fact and conclusions of law made by a court granting a preliminary injunction are not
binding at trial on the merits.").
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Case 1:04-cv-01199-SLR Document 532 Filed 08/28/2008 Page 3 of 3
instructions from the Federal Circuit that it was making binding findings of fact for the
jury, I decline to attribute to that Court such a role.
United State§ District Judge
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