Friday, June 22, 2018

Seven Month Delay While Actively Litigating Waives Venue Challenge

The court denied defendants' motion to dismiss or transfer for improper venue because defendants waived their venue challenge through their litigation conduct. "⁠[D]uring the seven months after the [TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017)] decision, [defendants] were actively litigating this case in this District. . . . [M]otions for summary judgment were denied. . . . A Claim Construction Order was issued shortly thereafter. . . . [Defendants] also filed two new motions for summary judgment before filing this Motion. . . . This procedural history reflects the type of 'tactical wait-and-see bypassing of an opportunity to declare a desire for a different forum' expressly identified in [In re Micron Tech., Inc., 875 F.3d 1091 (Fed. Cir. 2017)] as a paradigm for when an objection to venue could be waived notwithstanding the new law as to Rule 12(h). . . . TC Heartland changed the law with respect to the definition of corporate residence for the purposes of patent venue. However, it did not change the underlying prudential framework for the assessment of challenges to venue like the one raised here."

Adrian Rivera v. Remington Designs, LLC d/b/a iCoffee, 2-16-cv-04676 (CACD June 19, 2018, Order) (Kronstadt, USDJ)

Seven Month Delay Alone Does Not Waive Venue Challenge

The court granted defendant's motion to transfer for improper venue and rejected plaintiff's argument that defendant waived its venue challenge. "Plaintiff does not appear to challenge the contention that venue in this Court is improper. Rather, Plaintiff argues that . . . Defendant forfeited its privilege to challenge venue by waiting nearly seven months after the [TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017)] decision to file its motion. . . . [D]espite Defendant’s delay in filing the instant motion, Plaintiff cites no undue prejudice caused by the delay; nor can the Court discern any such prejudice to Plaintiff. Specifically, there has been no additional motion practice, an initial pretrial conference has not yet been scheduled, discovery has not yet commenced, and no trial date has yet been set."

Blue Rhino Global Sourcing, Inc. v. Sky Billiards, Inc. d/b/a Best Choice Products, 1-17-cv-00069 (NCMD June 20, 2018, Order) (Biggs, USDJ)

Thursday, June 21, 2018

Common Interest Doctrine Does Not Apply to Unrepresented Parties

The court granted plaintiff's motion to compel the production of an email with a third party manufacturer that defendants clawed back under the common interest privilege because the manufacturer was not represented by counsel. "There is support for the position that all parties must be represented by counsel for the common interest exception to apply. . . . The requirement that each party to a common interest arrangement have an attorney also comports with the intent behind the common interest privilege, to permit attorneys to develop a joint legal strategy. . . . While this Court was not able to locate any Ninth Circuit precedent that explicitly requires both parties be represented by separate counsel, nor was there any precedent that extended the benefits of the common interest exception to the attorney client privilege when the disclosure at issue involved an unrepresented third-party employed by a separate entity."

The Regents of the University of California et al v. Affymetrix, Inc. et al, 3-17-cv-01394 (CASD June 19, 2018, Order) (Stormes, MJ)

Wednesday, June 20, 2018

District Court Lacks Authority to Stay Execution of $68 Million Judgment Pending a Petition for Certiorari to the Supreme Court

Following the Federal Circuit's affirmance of the jury verdict, the magistrate judge recommended granting plaintiff's motion to enforce liability on defendant's $68 million supersedeas bond and rejected defendant's request to continue the stay pending its certiorari petition to the Supreme Court. "⁠[Rule 62(d)] does not specify when a stay under that provision expires or terminates. The great weight of authority regarding this issue, however, suggests that the Rule 62(d) stay expires when a circuit court issues its mandate. . . . I have found no authority to support [defendant's position] that district courts retain inherent authority to issue a stay of the judgment of a circuit court of appeals pending a petition for certiorari review to the Supreme Court. . . . [B]ecause the Federal Circuit has issued its final judgment and mandate affirming the . . . judgment in [plaintiff's] favor, the district court is obligated to enforce the Federal Circuit's mandate."

PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, 5-11-cv-00761 (NYND June 18, 2018, Order) (Peebles, MJ)

Tuesday, June 19, 2018

Asserted Claims of Wireless Remote Control Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s wireless remote control patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The court concludes that because the asserted claims are directed towards the result -- and therefore, abstract idea -- of wirelessly controlling remote devices, they are patent-ineligible. The specification refers to '⁠[a] method for controlling a remote device[] over a wireless connection.' 'underscor[ing] that [the asserted claims are] directed to an abstract concept.' More importantly, the asserted claims provide only for generic processes and components to achieve that result. . . . And although the Patent purports to solve a number of problems with remotely controlling devices, it does not solve those problems through an improvement in any specific technology."

Uniloc USA, Inc. et al v. HTC America, Inc., 2-17-cv-01558 (WAWD June 15, 2018, Order) (Robart, USDJ)

Monday, June 18, 2018

Plaintiff’s Lost Sales of Unpatented Products Supports Imposition of Preliminary Injunction

The magistrate judge recommended granting plaintiff's motion for a preliminary injunction prohibiting sales of the accused fire trucks and found that plaintiff established irreparable harm through lost sales of non-patented products. "The plaintiff, however, has shown by concrete examples, that when it sells its patent-covered quint to a fire department, there is a reasonable likelihood that the fire department will buy other fire apparatus as well. . . . If the defendants sell their allegedly infringing quints to customers, the plaintiffs opportunity to make sales of other apparatus to those customers in all likelihood will be lost. Moreover, there is no apparent way to quantify the value of those lost sales. Therefore, if the defendants can sell infringing quints, the plaintiff will suffer irreparable harm due to lost sales of other apparatus."

Pierce Manufacturing, Inc. v. E-One, Inc. et al, 8-18-cv-00617 (FLMD June 13, 2018, Order) (Wilson, MJ)

Friday, June 15, 2018

Institution of Claims Based on SAS Mandate May Not Simplify Issues for Trial Such That a Stay of Litigation is Warranted

Following the PTAB’s supplemental institution decision in light of SAS Inst., Inc. v. Iancu, ___ U.S. ___, 138 S. Ct. 1348, 1352–54 (2018) instituting inter partes review of all challenged claims of the patents-in-suit, the court granted defendants’ motion to stay because the potential for simplification of issues, the stage of the litigation, and lack of prejudice to plaintiff weighed in favor of a stay. “The PTAB issued the Supplemental Orders to review [new claims of two patents-in-suit] only because the SAS Institute decision dictates that result—not because [defendants] had demonstrated a reasonable likelihood that those claims were unpatentable on the challenged grounds. To the contrary, PTAB initially found that [defendants’] patentability challenges were lacking. . . . In the absence of a PTAB decision finding a reasonable likelihood that a claim is unpatentable, the question of whether a stay will simplify issues is not so clear. . . . Yet and still, staying [the case for the newly instituted claims] would have the effect of removing them from this case. It is hard to see how this result does not simplify the case. . . . [T]he developments since I last analyzed [the stage of litigation factor] do not alter the conclusion that ‘this case is not so far advanced that a stay would be improper.’ . . . Granting a stay on [the newly instituted claims] would leave [plaintiff] with only four remaining patents. But [plaintiff] does not contend that this amounts to any cognizable prejudice.

Huawei Technologies Co., Ltd. et al v. Samsung Electronics Co., Ltd. et al, 3-16-cv-02787 (CAND June 13, 2018, Order) (Orrick, USDJ)