Wednesday, July 23, 2014

PTAB’s Rejection of Inherency Argument Supports Summary Judgment of No Invalidity

The court granted plaintiff's motion for summary judgment that its tooth whitening patents were not invalid as obvious in light of prior art patents based, in part, on the PTAB's findings during inter partes review. "[U]nder this 'reasonable likelihood' standard, which is significantly lower than the 'clear and convincing' burden in this litigation, the PTAB found that [defendant and its expert's] inherency arguments were insufficient. . . . The PTAB rejected [defendant's] inherency arguments, under a lower standard of proof, not once, but twice. . . . [Defendant] directed its requests for rehearing almost exclusively to the PTAB’s rejection of the . . . inherency arguments [regarding the limitations at issue]. In both instances, the PTAB rejected [defendant's] requests, confirming its ruling that [defendant] had failed to show a reasonable likelihood that it could prove, by a preponderance of the evidence, that [three prior art patents] inherently disclose the [limitations at issue]."

The Procter & Gamble Company v. Team Technologies, Inc. et al, 1-12-cv-00552 (OHSD July 3, 2014, Order) (Black, J.)

Tuesday, July 22, 2014

No Stay Pending IPR in Light of Previous Unsuccessful IPR

The court denied defendant's motion to stay pending inter partes review because of the undue prejudice to plaintiff. "Third parties have already unsuccessfully challenged these patents in a previous IPR proceeding. Now, five months after that denial, other parties have filed a successive IPR petition with similar claims. . . . Any delay of this kind is inherently prejudicial to Plaintiff’s right to pursue its claims. . . . [B]ecause the PTAB has already denied challenges to the patents in the first IPR proceeding, it would seem even less likely that the current petition would succeed. . . . If the PTAB should issue a decision which changes any of these assumptions or the status of the overall disputes, then the Court can certainly review this denial. In the meantime, the Court’s judgment is that the parties should reach agreement on an appropriate litigation plan and proceed with it."

CTP Innovations, LLC v. VG Reed and Sons, Inc., 3-14-cv-00364 (KYWD July 18, 2014, Order) (Heyburn, J.)

Monday, July 21, 2014

Deficient Report Warrants Exclusion of Damages Expert

The court granted defendant's motion to exclude plaintiff's damages expert from trial for failing to comply with Rule 26 regarding the contents of his report. "The report prepared by [plaintiff's expert] provides virtually none of the information required by Rule 26 (a)(2)(B)(i). Plaintiff's response to the motion asserts as an excuse for noncompliance lack of sufficient discovery before [its expert] prepared his report for him to have the information he would need to comply with the requirements of Rule 26(a)(2)(B). . . . Plaintiff had ample time before [its expert] prepared and submitted his report for the collection of whatever information it needed for [him] to provide the information in his report. . . . The court has concluded that no lesser sanction would adequately address plaintiff's failure to comply with the scheduling order as to [plaintiff's damages expert]."

InVue Security Products, Inc. v. Langhong Technology USA Inc. et al, 4-13-cv-00457 (TXND July 17, 2014, Order) (McBryde, J.)

Friday, July 18, 2014

Covenant Not to Sue Manufacturer Exhausts Patent as to Downstream Customers

The court granted in part a customer defendant's motion for summary judgment of patent exhaustion following plaintiff's offer of a covenant not to sue to defendant's manufacturer. "[Plaintiff's] offer of a covenant not to sue [the manufacturer] is an 'authorized sale' within the meaning of the patent exhaustion doctrine, as to the [patent-in-suit]. It is undisputed that [plaintiff] offered [the manufacturer] a covenant not to sue during the proceedings on [the manufacturer's] declaratory judgment action. [Plaintiff] cannot retract its admission in this case. The offer of a proposed covenant not to sue shows [plaintiff's] intent to allow [the manufacturer] to use and employ the patented practice while promising not to sue for infringement. [Plaintiff's] stated intent to prevent any rights under the covenant to extend to [the manufacturer's] customers is not a relevant consideration under a patent exhaustion analysis. Consequently, [the manufacturer's] downstream customers, like [defendant], have the right to practice the patent through the doctrine of patent exhaustion."

Alberta Telecommunications Research Centre v. AT&T Corporation, 3-09-cv-03883 (NJD July 14, 2014, Order) (Sheridan, J.)

Thursday, July 17, 2014

Indicative Ruling: Octane Fitness Does Not Alter Attorneys’ Fee Decision

The court gave an indicative ruling that if its denial of plaintiff's motion for attorneys' fees under 35 U.S.C. § 285 was remanded for reconsideration following the Supreme Court decisions in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014); and Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014), it would deny the motion. "Considering the totality of the circumstances, given that the 'evidence was close' and the litigation misconduct was 'modest,' there is not a sufficient basis to conclude that Defendants maintained an exceptionally weak litigating position or advanced exceptionally meritless claims."

Jake Lee v. Mike's Novelties, Inc., et al, 2-10-cv-02225 (CACD July 14, 2014, Order) (Kronstadt, J.)

Wednesday, July 16, 2014

Previously Denied Motion for Attorneys’ Fees Reconsidered and Granted Under Octane Fitness

Following the Supreme Court's decision in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (April 29, 2014), the court granted plaintiff's motion to reconsider an earlier order denying plaintiff's motion for attorneys’ fees under 35 U.S.C. § 285. "Under the discretionary, flexible framework endorsed by the Supreme Court, the Court finds that this case is exceptional within the context of § 285. The Court does not alter its previous finding that there was no evidence of bad faith or litigation misconduct. . . . However, contrary to [defendant's] argument, Octane Fitness makes clear that these findings are not required for an award of fees under § 285. Rather, employing the more flexible approach embraced by the Supreme Court, the Court finds that this case 'stands out from others with respect to the substantive strength of [defendant's] position.' This is not to say that [defendant's] decisions to file infringement counterclaims and pursue litigation were necessarily objectively baseless. . . . The Court, however, finds that this case is uncommon based on the absence of evidence supporting [defendant's] theories of infringement at summary judgment. . . . Despite ample time to obtain evidence supporting its theories of infringement, the only evidence [defendant] submitted to support its claims were excerpts from websites purportedly explaining the effects of stress on different materials."

Medtrica Solutions Ltd. v. Cygnus Medical LLC, 2-12-cv-00538 (WAWD July 10, 2014, Order) (Lasnik, J.)

Tuesday, July 15, 2014

No Stay Pending IPR Prior to Institution Decision

The court denied without prejudice defendant's motion to stay pending inter partes review because it was premature, but maintained the discovery stay pending the PTO's decision on the petitions for review. "While the approach taken by courts varies, a recent decision from this District held that the court would not address the defendants’ motion to stay pending IPR until after the PTO actually rendered a decision granting such review. There, like here, the defendants had applied for IPR, but such review had not yet been granted at the time the defendants moved to stay the underlining action. In light of this decision, the Court agrees with [plaintiff] that [defendants'] application to stay pending IPR is premature. . . . The Court finds that it would be inefficient to reopen discovery at this juncture given the fact that the PTO has at most 27 days to render its decision as to whether to grant the review requested by [defendants]."

Depomed, Inc. v. Purdue Pharma LP et al, 3-13-cv-00571 (NJD July 9, 2014, Order) (Bongiovanni, M.J.)