Wednesday, March 21, 2018

Internal Invention Disclosure Document Protected by Attorney-Client Privilege

The court denied plaintiff's motion to compel the production of a clawed back deposition exhibit and found the document was privileged. "⁠[Senior in-house counsel] confirmed that [the exhibit] is consistent with the format required for submission of an invention disclosure to [defendant's Patent Review Committee] through the Portal. . . . Although [the exhibit] does not expressly state that it is a request for legal advice, the request is implied. . . . The fact that attorneys on the PRC required engineers or technical experts to assist them in evaluating the invention for purposes of determining whether to pursue a patent does not disqualify [the exhibit] from being covered by the attorney client privilege. . . . [Counsel's] declaration describes PRC’s function as making 'individual patenting decisions on specific intentions that have been submitted to the PRC.' The PRC attorneys 'assess whether the invention was novel and patentable.'"

The California Institute of Technology v. Broadcom Limited et al, 2-16-cv-03714 (CACD March 19, 2018, Order) (Rosenberg, MJ)

Tuesday, March 20, 2018

Doctrine of "Ancillary" Venue Does Not Provide Independent Basis for Venue

The court granted counterclaim defendants' motion to dismiss for improper venue because defendants lacked a regular and established place of business in the district and ancillary venue did not apply. "Even assuming that [defendants] have committed acts of infringement in the Northern District of Illinois, venue would still be improper because neither maintains a 'regular and established place of business' in the District. [One defendant] has no offices or property in the District, and no phone number or mailing address here. [The other defendant] likewise does not have a regular and established place of business in the District. . . . [Counterclaimant] cites no authority for the proposition that the doctrine of ancillary venue (whatever that really is) can override the clear terms of the patent venue statute. And [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017)] puts the nail in the coffin: if the general federal venue statute does not supplement the patent venue statute, then it is unclear why a nonstatutory doctrine could do so."

Shure Incorporated v. ClearOne, Inc., 1-17-cv-03078 (ILND March 16, 2018, Order) (Chang, USDJ)

Monday, March 19, 2018

Pre-Markman Attorney Fees Awarded Due to Unreasonable Manner of Litigation

The court awarded defendant its attorney fees under 35 U.S.C. § 285 and rejected plaintiff's argument that defendant was not entitled to attorney fees prior to claim construction. "The Federal Circuit stated that '⁠[plaintiff's] suit became baseless after the district court’s Markman order.'. . . However, as the Federal Circuit identified, this was not the extent of [plaintiff's] misconduct. [Plaintiff] also 'litigated the case in an "unreasonable manner."'. . . [T]his Court, in an exercise of its discretion and as guided by the Circuit’s opinion and directive, finds that it is appropriate in this exceptional case to award [defendant] the fees it incurred from the time of filing through dismissal."

Adjustacam LLC v., Inc., et al, 6-10-cv-00329 (TXED March 15, 2018, Order) (Gilstrap, USDJ)

Friday, March 16, 2018

Nonparty's Compilation of Prior Art Protected by Work Product Doctrine

The ALJ denied respondents' motion to certify for judicial enforcement its prior art subpoena to two nonparties whom complainants sued for infringement of the same patents in district court because the documents sought were protected attorney work product. "⁠[Nonparty] represents in its opposition that the prior art at issue 'was developed by [its] counsel because of' the district court litigation. [Respondent] speculates that [nonparty] may have also identified prior art 'outside the contours' of the district court case. [Respondent's] speculation, however, is groundless. . . . Such a compilation of prior art is protected under the work-product doctrine, even if the references themselves are publicly available. . . . [P]rotecting the mental impressions and thought processes of an attorney from disclosure is not the only interest protected by the work-product doctrine. The work-product doctrine also seeks to prevent attorneys from relying 'on wits borrowed from the adversary' instead of relying on their own efforts and professional judgment."

LED Lighting Devices, LED Power Supplies, and Components Thereof, 337-TA-1081 (ITC March 13, 2018, Order) (Lord, ALJ)

Thursday, March 15, 2018

Previously Undisclosed Market Share Apportionment Theory Stricken From Expert Report

The court overruled plaintiff's objections to the magistrate judge's order partially striking the report of plaintiff's damages expert. "⁠[Plaintiff] contends . . . all of the information [the expert] relied upon in forming his market share apportionment opinion was made known to [defendant] during fact discovery. To the extent [defendant] needed additional third-party discovery, [plaintiff] alleges it is [defendant's] fault for not seeking it earlier. The Court disagrees. Even if all the information [the expert] relied upon in forming his opinion was made known to [defendant], the market share apportionment theory itself was never disclosed prior to [his] report. Instead, [plaintiff] maintained only its two-player/product market theory, a theory that (at least in part) contradicts the newly-asserted market apportionment theory. That [defendant's] own discovery may have shown that the market was not a two-party/product market is not the issue."

Integra LifeSciences Corporation et al v. HyperBranch Medical Technology, Inc., 1-15-cv-00819 (DED March 13, 2018, Order) (Stark, USDJ)

Wednesday, March 14, 2018

Post-Trial Amendment of Pleadings Permitted to Assert Alter-Ego Claim Against Bankrupt Defendant’s Individual Owners

Following a $30 million jury verdict and defendant's filing for bankruptcy, the court granted plaintiff's motion to amend its complaint to add defendant's co-owners as defendants along with alter ego and veil-piercing claims. "⁠[Plaintiff] explains that it learned of [defendant's] and the [defendant's owners'] alleged efforts to avoid liability only when it reviewed the bankruptcy filings.⁠ . . . [Defendant] counters that [plaintiff] was 'on clear notice before trial of the substantial risk that [defendant] would be unable to pay the enormous sums [plaintiff] was seeking. Had it wanted to hedge its bets by asserting claims against other entities, it should have sought leave to do so long before now.' But that argument entirely misses the point. Veil-piercing and alter-ego claims are not mere contingency plans for uncollectable defendants. They are specific theories of liability which, absent plausible grounds, would be frivolous to plead. [Plaintiff] argues that the alleged abuse of the corporate form -- the necessary fact that underlies veil-piercing and alter-ego claims -- only came to light later on. The Court certainly will not punish [plaintiff] for failing to assert a claim prior to having the evidence to back it up."

FieldTurf USA, Inc. et al v. Astroturf, LLC, 2-10-cv-12492 (MIED March 12, 2018, Order) (Murphy, USDJ)

Tuesday, March 13, 2018

Apple Not Collaterally Estopped From Denying Infringement by Redesigned Version of FaceTime

The court denied plaintiff's motion for summary judgment that the redesigned version of defendant's adjudicated product infringed its network security patents because there were genuine disputes of material fact which precluded a finding of collateral estoppel. "⁠Apple argues that issue preclusion is inapplicable here, as the redesigned product differs in design and operation from the product at issue in the [earlier lawsuit]. . . . Particularly, Apple notes that the accept message from the FaceTime servers to the caller device was changed between the first version of FaceTime and the redesigned FaceTime. Apple suggests this change to FaceTime was so significant that the servers can no longer meet the 'indication' requirement of the claims. . . . [T]he accused devices in this case are not essentially the same as the devices at issue in the [prior] case. [Defendant] has raised a question of material fact as to whether the redesigned version of [the adjudicated product] infringes the claims of the asserted patents. The parties’ arguments stem from a fundamental factual dispute with respect to the design and operation of the redesigned product, which the Court declines to resolve at summary judgment. Whether, after the changes to the accept message, the [accused] servers fall within the scope of the court’s claim construction is a question of fact for the jury to resolve at trial."

VirnetX Inc. et al v. Apple Inc., 6-12-cv-00855 (TXED March 9, 2018, Order) (Schroeder, USDJ)