Tuesday, January 16, 2018

Patent Claims Acquired After Filing Date of Earlier Lawsuit Subject to Claim Preclusion if Directed to the Same Product or Process

The court granted defendant's motion to dismiss all but three of plaintiff's patent infringement claims for claim preclusion, including claims for a patent that issued after the filing date of the parties' earlier lawsuit. "⁠[I]t appears that if a party acquires a patent infringement cause of action during the course of litigation, the party need not attempt to add that cause of action to the ongoing litigation or risk claim preclusion—even if the new infringement claim arises from the same transactional facts that prompted the ongoing litigation.⁠ . . . [T]he Court is confident that the Federal Circuit did not intend to draw a non-rebuttable line on the date that a party files its lawsuit, particularly where a later lawsuit attacks the same product or process at issue in an earlier lawsuit -- as is the case here. . . . [A] hard-and-fast rule that the filing of the original complaint ends the availability of claim preclusion could lead to significant, costly, and potentially unmanageable mischief. . . . [T]he Court holds that after-acquired claims, at least when they address the same, or substantially the same, subject matter as previously filed claims and when directed at a previously accused product or process, may be subject to claim preclusion under the Restatement’s pragmatic approach endorsed by the Federal Circuit. . . . [U]nder the circumstances [plaintiff] had a duty to move to amend (as it had already moved to amend to add an after-acquired claim) given that it would be accusing the same [defendant] products and processes, and that the [unasserted patent] was a continuation of a patent already in suit."

XY, LLC v. Trans Ova Genetics, LC, 1-17-cv-00944 (COD January 11, 2018, Order) (Martinez, USDJ)

Friday, January 12, 2018

Threat of Litigation Against Customers Does Not Create Actual Controversy With Supplier

The court granted defendant's motion to dismiss plaintiff's declaratory relief action for lack of an actual case or controversy stemming from defendant's proposed license agreement or litigation against plaintiff's customers. "Even if [defendant] did 'demand' that Plaintiff consider the license agreement it proposed 'to prevent [the initiation of] further patent infringement actions against [plaintiff's] customers,' as Plaintiff asserts, there is no indication of any discussion or threat of litigation against Plaintiff. Nor, drawing all reasonable inferences in favor of Plaintiff, do Defendant’s actions constitute an 'aggressive enforcement strategy' warranting a finding of subject matter jurisdiction here, as Defendant’s strategy 'appears to involve suing . . . users,' including [plaintiff's] customers, 'not . . . suppliers,' such as [plaintiff]."

Broadsign International, LLC v. T-Rex Property AB, 1-16-cv-04586 (NYSD January 10, 2018, Order) (Swain, USDJ)

Thursday, January 11, 2018

Venue Determined When Cause of Action Accrued, Not Complaint Filing Date

The magistrate judge recommended denying defendant's motion to transfer for improper venue because defendant had a regular and established place of business in the district through two offices that closed before plaintiff filed suit and one office acquired a year after plaintiff filed suit. "⁠[A]pplication of the rule proposed in [Personal Audio, LLC v. Google, Inc. (E.D. Tex. Dec. 1, 2017)] -- using the exact date of the filing of the Complaint -- is too rigid. No one disputes that the causes of action accrued while [defendant] had at least one office in this district, and the undersigned has already found that until [its] closure, such a presence was regular and established. . . . [S]ince [defendant] had a regular and established place of business in this district when the causes of action accrued, and [plaintiff] filed its Complaint within a reasonable time thereafter, the undersigned finds that this element is met as to [defendant]."

ParkerVision, Inc. v. Apple Inc. et al, 3-15-cv-01477 (FLMD January 9, 2018, Order) (Klindt, MJ)

Wednesday, January 10, 2018

Repeated Sloppiness With Privilege Designations Justifies Discovery Sanctions

The court granted in part plaintiffs' motion for monetary sanctions for their motions to compel discovery defendants withheld as privileged. "The Court has conducted three previous in camera reviews of documents that Defendants withheld, and each time, the Court has compelled Defendants to review their privilege logs and produce additional documents in accordance with the law. . . . As a result of Defendants' consistent sloppiness and noncompliance, the Court has expended a great deal of time reviewing exemplars, holding conferences, and preparing opinions and orders compelling Defendants to produce additional documents that were improperly withheld. Likewise, Plaintiffs have spent substantial resources seeking to obtain documents that should have been produced long ago."

Au New Haven, LLC f/k/a Uretek LLC et al v. YKK Corporation, 1-15-cv-03411 (NYSD January 5, 2018, Order) (Netburn, MJ)

Tuesday, January 9, 2018

Storing Products at Amazon Fulfilment Center Does Not Qualify as Place of Business for Venue

The court granted defendant's motion to dismiss for improper venue because defendant did not have a regular and established place of business in the district through its use of an online retailer's fulfillment centers. "Plaintiff does not present any evidence or legal authority to support its argument that the Amazon FCs are the physical, geographical location of [defendant]. . . . Plaintiff contends that [defendant] leases the place of business since it pays a storage fee to Amazon in exchange for storing the product. Plaintiff has not conducted a legal analysis demonstrating that a monthly subscription fee equates to leasing space in the FCs. On the other hand, Defendant has presented evidence that it has no control over which FCs its products will be sent, and once stored at one Amazon FC, Amazon has discretion to redistribute [defendant's] products to another Amazon FC. Since [defendant] has no control over its products once they are sent to Amazon FCs, these storage centers cannot be said to be the 'place of Defendant.'"

Reeflection, LLC v. Spire Collective LLC d/b/a StoreYourBoard et al, 3-17-cv-01603 (CASD January 5, 2018, Order) (Curiel, USDJ)

Monday, January 8, 2018

Fact Dispute as to Scope of Assignment Precludes Summary Judgment on Assignor Estoppel

The court denied plaintiff's motion for summary judgment that defendant's invalidity counterclaim was barred by assignor estoppel because defendant's founders were named inventors of the patent-in-suit and assigned plaintiff the right to the patent's application. "It is undisputed that [defendant] is in privity with [the inventors]. But the question remains, and the parties greatly dispute, whether [the inventors] assigned to [plaintiff] an invention that is claimed in the [patent]. The issue turns on whether the invention assigned by [the inventors] to [plaintiff] is different from or merely a narrower version of the invention claimed in the [patent]. Although assignor estoppel is an equitable doctrine for the Court to ultimately decide, these subsidiary factual disputes make summary judgment on the issue inappropriate at this time."

Verinata Health, Inc., et. al. v. Ariosa Diagnostics, Inc., et al, 3-12-cv-05501 (CAND January 4, 2018, Order) (Illston, USDJ)

Friday, January 5, 2018

IPR Estoppel Does Not Apply to Invalidity Grounds Omitted From Petition

The court denied plaintiff's motion for summary judgment that its lighting patents were not invalid for lack of novelty or obviousness due to IPR estoppel. "⁠[Plaintiff] contends that, any invalidity contention that [defendant] did disclose in its preliminary and supplemental invalidity disclosures must fail because [defendant] is estopped from asserting such contention in federal court under 35 U.S.C. § 315(e)(2), since [defendant] 'raised or reasonably could have raised' any such contentions in its IPR petition. . . . Some courts . . . reason[] that [Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016)] only requires excluding from the scope of Section 315(e)(2) those invalidity grounds for which the PTAB did not institute review, but not invalidity grounds that the petitioner failed to raise in its petition because the narrower estoppel suggested by Shaw would encourage petitioners to hold back 'a second-string invalidity case in reserve in case the IPR does not go the defendant’s way.'. . . . There is much appeal in a broader reading of the estoppel provision. . . . [But that] reading of the estoppel provision is foreclosed by Shaw. The Federal Circuit in Shaw held that the phrase 'during inter partes review' applies only to the period of time after the PTAB has instituted review, and notwithstanding [plaintiff's] claims to the contrary, that holding was not limited to Section 315(e)(1) nor was it mere dicta."

Koninklijke Philips NV et al v. Wangs Alliance Corporation d/b/a WAC Lighting Co., 1-14-cv-12298 (MAD January 2, 2018, Order) (Casper, USDJ)