Friday, August 29, 2014

Assertion of “Steaming Mounds of Objections” Results in Waiver of all Objections to Trial Exhibits

The court rejected both parties' objections to exhibits and deemed all objections waived for their failure to comply with the Federal Rules of Evidence and the court's scheduling order. "It seems the parties are under the misconception that the Federal Rules require a judge to shovel through steaming mounds of objections in a Herculean effort to discern the shining gold nugget that will result in a ruling that prevents an opponent from introducing a document. Nothing could be further from the truth. Objections must be specific. . . . Inundating the court with a smorgasbord of objections from which to choose leads to the firm perception that, being unable to articulate clear grounds for an objection, counsel simply feels the evidence might hurt the client’s case. But introducing evidence that is prejudicial to an opponent’s case is a trial lawyer’s job. . . . Counsel should keep in mind that the purpose of the court’s requirements concerning exhibits is to conserve counsel’s limited trial time, and to eliminate the need for the boring (to the jury, although perhaps not to evidence professors) exercise of laying lengthy predicates, making objections and obtaining formal rulings. "

Affinity Labs of Texas, LLC v. Ford Motor Company, 1-12-cv-00580 (TXED August 25, 2014, Order) (Clark, J.)

Thursday, August 28, 2014

Off-Label Use of Generic Drug Cannot Establish Existence of Noninfringing Uses

Following a bench trial, the court found that defendant indirectly and contributorily infringed plaintiff's patents for gabapentin through its generic drug product. "[T]he ANDA product may not be marketed for non-infringing uses. Drug companies are not permitted to promote their products for anything other than what is approved in the label. . . . Defendant argues that this element of the contributory infringement analysis (i.e., that there are not significant noninfringing uses) has not been met due the existence of a number of off-label uses exist for the ANDA. However, because [defendant] cannot expressly market its product for any of these uses, the Court finds this . . . element to be met."

Depomed, Inc. v. Actavis Elizabeth LLC et al, 3-12-cv-01358 (NJD August 25, 2014, Order) (Pisano, J.)

Wednesday, August 27, 2014

Unsubstantiated Claim of “Extortive Litigation Tactics” No Basis for Attorneys’ Fee Award

The court denied defendant's motion for attorneys’ fees under 35 U.S.C. § 285 after plaintiff executed a covenant not to sue and dismissed its action. "[Defendant] argues that it is entitled to attorney fees because [plaintiff's] attempts to extract settlements from each of the defendants evidences bad faith. . . . While [defendant] presents a chart outlining the licensing fees paid by each defendant and calculates an average payment of $15,188 per defendant, [defendant] fails to fully substantiate its claim that [plaintiff] was engaged in extortive litigation tactics. Moreover, despite offering its subjective interpretation of [plaintiff's] decision to dismiss its infringement claims, [defendant] provides no other evidence of any improper settlement negotiations or that other defendants in the case were strong-armed into paying licensing fees."

Charge Lion LLC v. Semtech Corporation, 6-12-cv-00769 (TXED August 25, 2014, Order) (Love, M.J.)

Tuesday, August 26, 2014

Sanctions Awarded for “Filibuster” Deposition Tactics

The court granted plaintiff's ex parte motion to compel a further deposition and sanctioned defendant for its "filibuster." "It strains credulity to take the witness’s expressed inability to understand common terms such as 'what,' 'sales,' 'marketing,' 'does,' 'have,' 'use,' 'offer,' 'involvement,' 'which,' 'communication,' etc. at face value. The witness started the train wreck of a deposition by asking counsel 'to clarify' what he meant by such obvious words as 'responsibilities' and 'educational background.'. . . Counsel stepped up the attempt to disrupt any worthwhile examination by continually interposing inappropriate objections, 'cluing' the witness to ask the questions to be rephrased, and wasting everyone’s time trying to engage plaintiff’s counsel in banter. . . . The witness and his counsel may have taken some temporary pleasure in frustrating plaintiff’s counsel’s ability to obtain any information from the witness, but the judicial process and the public’s perception of it suffers. . . . Defendant is ordered to reimburse plaintiff for the attorney fees and court reporter fees it incurred during the . . . deposition and the attorney fees incurred in the preparation of the ex parte motion."

MAG Aerospace Industries, Inc. v. B/E Aerospace, Inc., 2-13-cv-06089 (CACD August 22, 2014, Order) (Mumm, M.J.)

Monday, August 25, 2014

Late Assertion of Unpatentability Defense Barred Despite Intervening Decision in Alice Corp.

The court denied defendant's motion for judgment that plaintiff's patents were invalid for ineligible subject matter because defendant failed to preserve that argument. "After trial and shortly before the . . . hearing on post-trial motions, [defendant] requested supplemental briefing to argue that the asserted claims of [two asserted patents] are invalid under 35 U.S.C. § 101, in light of the Supreme Court’s decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (June 19, 2014)." . . .[Defendant] could have — but failed to — preserve § 101 invalidity defenses, and [defendant's] request for the Court to adjudicate a legal theory that was disclosed after trial is untimely, regardless of the Supreme Court’s intervening decision . . . [Defendant's] technical experts on invalidity . . . did not disclose any opinions regarding § 101 in their reports. . . . [Defendant] also declined to assert § 101 in summary judgment motions. [Defendant] has identified no other disclosure after its . . . invalidity contentions [over a year ago] where [it] stated that it would continue to assert § 101. . . . [Defendant] did not 'implicitly' include § 101 by merely requesting a declaration of invalidity of the asserted patent claims because invalidity encompasses a range of legal theories under separate statutes that require different forms of proof. . . . Critically, [defendant] did not raise § 101 at trial or in any pre-verdict or post-verdict motions for judgment as a matter of law. . . . Any uncertainty in the law due to the pending Alice decision did not excuse [defendant's] delay."

Apple Inc. v. Samsung Electronics Co., Ltd., et al, 5-12-cv-00630 (CAND August 21, 2014, Order) (Koh, J.)

Friday, August 22, 2014

Stay Pending Third Party IPR Requires Estoppel Condition

The court granted defendants' motion to stay pending inter partes review, but conditioned the stay on defendants' agreement to estoppel. "[T]his court has previously explained in similar cases that the benefits of a stay are partially contingent upon the application of the IPR proceeding’s estoppel effect. . . . In cases such as this one, where Defendants are not parties to the pending IPRs, the fact that the patent infringement defendants are not automatically estopped jeopardizes the IPRs’ critical intended effects on any subsequent district court action. Indeed, should any claims survive the pending IPRs in this case, the expected efficiencies would be eviscerated should Defendants go on to bring invalidity arguments in this court that were raised or could have been raised before the PTAB. . . . With that [estoppel] condition in place, the court concludes that the potential for streamlining these proceedings by awaiting the final resolution of IPR proceedings weighs heavily in favor of a stay."

PersonalWeb Technologies LLC v. Google, Inc. et al, 5-13-cv-01317 (CAND August 20, 2014, Order) (Davila, J.)

Thursday, August 21, 2014

Patent Aggregator License Excluded from Evidence, Except to Provide Context for Other Licenses

The court granted in part defendant's motion in limine to exclude evidence of plaintiff's $8.5 million license of a patent-in-suit to a patent aggregator. "Because [the aggregator's] business model is unique, [defendant] argues [the] license is of limited relevance to [defendant's] hypothetical licensing posture and should be excluded. . . . Some of the license agreements [the expert] reviewed involved licensees . . . that already had a license to [a patent-in-suit] through their membership with [the patent aggregator]. These licensees would have contemplated the effect of their existing license and paid a lower rate to settle claims with [plaintiff]. Ignoring the [aggregator's license] would leave the jury with the mistaken impression that the license agreements included [that patent-in-suit]. . . . [Defendant] argues that even though the [aggregator] license is relevant, its $8.5 million figure will skew the jury’s perception of a reasonable royalty, causing unfair prejudice to [defendant]. Accordingly, [plaintiff] may describe the circumstances of the [aggregator] license, but not the actual amount."

Digital Reg of Texas, LLC v. Adobe Systems Incorporated, et al, 4-12-cv-01971 (CAND August 19, 2014, Order) (Wilken, J.)