Wednesday, August 15, 2018

Plaintiff’s Controlling Shareholder Joined as Necessary Party for Potential Attorney Fees Liability

Following summary judgment, the court granted defendant's motion to join plaintiff's founder/inventor as a necessary party and pursue attorney fees against him under 35 U.S.C. § 285. "There is no evidence in the record that establishes that [plaintiff] currently has income or liquid assets. In fact, [the founder's] own declaration shows that [plaintiff] lacks sufficient financial resources. . . . Moreover, [defendant] provides evidence that [plaintiff] has not paid its fees and costs to its former counsel for over a year. . . . Given [the founder's] controlling shareholder power and his status as the only person from [plaintiff] who is involved in this litigation, the Court finds that [his] activities may potentially subject him to liability for attorneys’ fees and that he should be joined in this action."

Phigenix, Inc. v. Genentech, Inc., 5-15-cv-01238 (CAND August 13, 2018, Order) (Freeman, USDJ)

Tuesday, August 14, 2018

Jury Finding of Willful Infringement Does Not Satisfy Section 287 Notice Requirement

Following remand, the court granted defendant's motion for summary judgment to preclude plaintiff from seeking pre-suit damages and rejected plaintiff's argument that the jury's willful infringement finding satisfied plaintiff's obligation to establish actual notice. "⁠[Plaintiff] argues . . . that it meets it burden to show actual notice under Section 287 based on both the Court’s rulings and the jury’s findings of willful infringement. [Plaintiff] further points to evidence introduced at trial that [defendant] knew about the [patents-in-suit] and was aware internally about potential infringement. But the reading of the statute that [plaintiff] urges conflates the patentee-centered inquiry of notice under Section 287(a) with the infringer-centered inquiry of willfulness with regard to liability. . . . The jury’s finding of willfulness does not relieve [plaintiff] of its obligation to mark or notify -- neither of which [plaintiff] did prior to [filing suit]. "

Arctic Cat Inc. v. Bombardier Recreational Products Inc. et al, 0-14-cv-62369 (FLSD August 10, 2018, Order) (Bloom, USDJ)

Monday, August 13, 2018

Counsel’s Removal of Non-Disclosure Footer From Purported Prior Art Document Warrants Award of Monetary and Evidentiary Sanctions

The court imposed monetary sanctions against defense counsel for removing a non-disclosure footer from an exhibit in support of defendant's motion to dismiss on the ground that the accused device was publicly disclosed prior art. "I do not find that [counsel] intentionally doctored the Power Point presentation or intentionally proffered false or misleading evidence to the Court when he filed [defendant's] motion to dismiss. . . . However, I do find that his conduct was reckless . . . both as to the initial filing of the Power Point presentation from which the non-disclosure footer was removed, and as to his failure to undertake a serious investigation as to why the error occurred and to timely bring the matter to the Court’s attention. The gist of [defendant's] motion to dismiss was that the presentation to [an automotive group] was a public disclosure that invalidated Plaintiff’s claim as prior art. The basis of the motion would therefore be open to question in the light of evidence that the presentation was not public, but subject to confidentiality and non-disclosure. . . . [A] reasonable attorney who became aware that he or she had inadvertently filed an exhibit that had deleted this information would be horrified. . . . Instead, after being informed that he filed an exhibit that he should have known had relevant information removed, he dug in."

Webasto Thermo & Comfort North America, Inc. et al v. Bestop, Inc., 2-16-cv-13456 (MIED August 9, 2018, Order) (Whalen, MJ)

Friday, August 10, 2018

Knowledge of Potential Infringement During Prior Settlement Does Not Trigger Equitable Estoppel

Following jury and bench trials, the court found that equitable estoppel did not preclude plaintiff's claims for infringement of its footwear design patents because there was no misleading conduct following the parties' settlement of an earlier case. "⁠[Plaintiff] did not act in a misleading way when it contractually gave [defendant] the right to sell potentially infringing boots in the [prior] Settlement Agreement. . . . [Defendant] argued that [plaintiff] was aware of the [current accused] designs as early as [seven years ago]; even if that were true, [plaintiff] did not act in a misleading manner because [plaintiff] had no obligation to settle claims that exceeded the scope of the [prior] Litigation."

Deckers Outdoor Corporation v. Romeo and Juliette, Inc. et al, 2-15-cv-02812 (CACD August 8, 2018, Order) (Hatter, USDJ)

Thursday, August 9, 2018

Instruction That Jury “Should” Consider Objective Indicia Not Erroneous

Following a jury verdict of invalidity, the court denied plaintiff's motion for a new trial because the jury instructions regarding obviousness were proper. "⁠[T]he Court instructed the jury that it 'should' consider objective indicia of nonobviousness in making its obviousness determinations. [Plaintiff] contends that the jury should have been instructed that it 'must' consider objective indicia of non-obviousness because such considerations are mandatory. . . . [Plaintiff's] argument . . . has more traction in the context of statutes and contracts: words written by lawyers, argued over by lawyers, and interpreted by lawyers. Here, however, in the context of jury instructions, 'should' sufficiently conveyed to the members of the jury (none of whom were lawyers) the purportedly mandatory nature of their consideration of objective indicia of nonobviousness. . . . Even if it was error for the Court to use 'should' rather than 'must,' such error was harmless -- it neither misled the jury nor had a probable effect on the verdict."

Bombardier Recreational Products, Inc et al v. Arctic Cat, Inc et al, 0-12-cv-02706 (MND August 7, 2018, Order) (Tunheim, USDJ)

Wednesday, August 8, 2018

Post-Verdict Sales of Infringing Product Support Award of Enhanced Damages

Following a jury verdict of willful infringement, the court granted in part plaintiff's motion for enhanced damages and increased the damage award by 25% because one-quarter of defendant's sales at issue took place after the verdict. "⁠[E]nhancement is appropriate in light of evidence of culpable conduct presented at trial and [defendant's] deliberate and conscious decision to continue selling [the accused product] after the verdict. . . . [O]n the pre-trial record, the question of infringement was, without doubt, debatable. But the situation changed at trial. [Plaintiff] presented credible evidence of deliberate copying. . . . The evidence also raised doubts about whether [defendant] attempted in good faith to evaluate infringement after being sued. . . . After the verdict, [defendant] continued to sell [the accused product] and did not modify the units in any way. Its course of conduct can only be seen as intentional, and entirely at its own risk."

Johnstech International Corp. v. JF Technology Berhad et al, 3-14-cv-02864 (CAND August 6, 2018, Order) (Donato, USDJ)

Tuesday, August 7, 2018

Vague Interrogatories a "Gift" to Answering Party

The court granted in part plaintiff's motion to compel further interrogatory responses regarding defendants' offers to sell the accused surgical products. "The dispute lies with Defendants’ response to the portion of the Interrogatory calling for a 'detailed description of the circumstances of [defendants'] offering to each customer.' Defendants assert that this portion of the request is vague, irrelevant and not proportional. . . . Its vagueness was a gift from Plaintiff; Defendants were free to interpret it and provide a response, so long as the response was reasonable. Doing nothing was not acceptable. . . . Defendants need not, in supplementing their response, respond directly to the 8 categories of information Plaintiff believes should be in the response. Defendants may consider the list merely as suggestions that it may use to craft a reasonable response."

NuVasive, Inc. v. Alphatec Holdings, Inc. et al, 3-18-cv-00347 (CASD August 3, 2018, Order) (Dembin, MJ)