ABBOTT LABORATORIES v. SYNTRON BIORESEARCH, INC., (S.D.Cal. 2001)


ABBOTT LABORATORIES, an Illinois corporation, Plaintiff, v. SYNTRON BIORESEARCH, INC., a California corporation, Defendant. AND RELATED CROSS-ACTIONS.

Case No. 98-CV-2359 H (POR)United States District Court, S.D. California.
August 23, 2001

Order Denying Abbott’s Motion to Bar Syntron from Raising Its Own Patents as a Defense to Infringement
MARILYN L. HUFF, Chief United States District Judge.

Abbott argues that Syntron must not be allowed to raise it own patents as a defense to infringement in this action. “It is well-established that the existence of one’s own patent does not constitute a defense to infringement of someone else’s patent.” Vaupel Textilmaschinen KG v.Meccanica Euro Italia S.P.A., et at., 944 F.2d 870, 879 n. 4 (Fed. Cir. 1991). Abbott contends that Syntron’s own patents, and licenses, are not relevant to this case and will do nothing but confuse the jury.

Syntron states that it will not produce evidence of its three patents to demonstrate that Syntron does not infringe the `484 or `162 patent, and it will not make that argument to the jury. However, Syntron argues that it has three relevant, admissible purposes for offering evidence of its patents. Syntron asserts that the patents are admissible as evidence of (1) Dr. Lee’s knowledge as the inventor the patents and head of the company; (2) what Syntron does; and (3) the calculation of a reasonable royalty rate. Syntron argues that the totality of evidence in the hypothetical negotiation would include its three patents. Abbott’s damages expert, Mr. Barry concludes in his report that Syntron had no attractive patent or technology to offer Abbott under a cross license. Syntron argues that the jury should decide whether its patents would have been relevant in a hypothetical license negotiation.

The Court will permit Syntron to introduce evidence of its own patents for admissible, relevant purposes. To address Abbott’s concern that the jury will be confused by the evidence, the Court will entertain a request for a jury instruction on the issue at the appropriate time during trial. Consequently, the Court DENIES Abbott’s Motion to Bar Syntron from Raising Its Own Patents as a Defense to Infringement.

IT IS SO ORDERED.