Friday, November 21, 2014

Damages Expert’s Linear Valuation of User Activations Excluded

The court granted in part defendant's motion in limine to exclude the opinion of plaintiff's damages expert concerning the value of user activations. "The Court grants the Motion with respect to [the expert's] opinion that user activations beyond the initial activation should be valued at a constant $0.115 rate. Based on the evidence before the Court, [the expert's] report applies too linear a relationship between the first and all subsequent activations. If there is a quantifiable value for the second, third, and other activations, [plaintiff] may present evidence of that value at trial."

Uniloc USA, Inc. et al v. Activision Blizzard, Inc., 6-13-cv-00256 (TXED November 18, 2014, Order) (Davis, J.)

Thursday, November 20, 2014

Dilatory Tactics and Gamesmanship Warrant Limiting Number of Disputed Claim Terms to Five

The court sua sponte limited the parties to five terms for claim construction because of their litigation tactics. "Nearly a year into this litigation, the record thus far suggests that both parties have engaged in dilatory tactics — and potentially gamesmanship — inconsistent with the Court’s efforts to reach a 'just, speedy, and inexpensive determination of the action.'. . . [I]n light of the consistent delays and, in the Court’s view, needless disputes that have been emblematic of this litigation thus far, the Court invokes its inherent authority to reduce the number of claim terms that it will construe during claims-construction to five terms. The parties’ failure to move this case forward consistent with the Court imposed schedule seriously impacts the time to consider and resolve disputes related to the construction of terms in the relatively straightforward patents at issue."

Zamperla, Inc. et al v. IE Park srl, 6-13-cv-01807 (FLMD November 18, 2014, Order) (Dalton, J.)

Wednesday, November 19, 2014

Excluding Dollar Amount of Prior License to Aggregator Does Not Undermine Jury’s Finding of Obviousness

Following a jury trial, the court denied plaintiff's motion for judgment as a matter of law that its patent was not obvious and rejected plaintiff's argument that it should have been permitted to present the dollar amount of its license with a patent aggregator as a secondary consideration of nonobviousness. "[Plaintiff] argues that the Court's decision to exclude the dollar amount of its license agreement with [the aggregator] precluded the jury from considering that agreement as an indicator of non-obviousness. . . . [T]he Court, citing circumstances surrounding the [aggregator] agreement that were vastly different from those of other licensing agreements, found that evidence of the exact dollar amount of the license would 'skew the jury's perception of a reasonable royalty, causing unfair prejudice to [defendant].'. . . [Plaintiff] argues that the very fact that it has executed a multi-million-dollar licensing agreement with [the aggregator] demonstrates that the [patent-in-suit] was not obvious. [Plaintiff] overstates the case. Although the jury was not presented with the precise dollar amount of the [aggregator] agreement, it heard testimony describing the agreement, and specifically stating that it was 'much, much higher' in value than the other license agreements in evidence. . . . Although evidence of a multi-million-dollar licensing agreement may be evidence of non-obviousness, the Federal Circuit has 'often held [that] evidence of secondary considerations does not always overcome a strong prima facie showing of obviousness.'"

Digital Reg of Texas, LLC v. Adobe Systems Incorporated, et al, 4-12-cv-01971 (CAND November 17, 2014, Order) (Wilken, J.)

Tuesday, November 18, 2014

Provisional Rights Must be Pled as Separate Claim

The court denied plaintiff's motion to compel discovery as to when defendant became aware of plaintiff's patent applications. "The Court’s research indicates that a claim of pre-issuance infringement pursuant to 35 U.S.C. § 154(d) should generally be expressly pled in a complaint as a claim that is separate from a claim of infringement pursuant to 35 U.S.C. § 271. Plaintiff has not offered any legal authority or argument that its conclusory reference in its prayer for relief and allegation regarding only one of the two elements of a claim of pre-issuance infringement is sufficient to have alleged a claim of pre-issuance infringement pursuant to 35 U.S.C. § 154(d). . . . As such, the supplemental answers Plaintiff seeks . . . would involve information that is not relevant to a claim or defense currently in the case and Plaintiff is not entitled to obtain discovery regarding that issue."

Sorna Corporation v. Pacsgear, Inc., 0-13-cv-02794 (MND November 14, 2014, Order) (Brisbois, M.J.)

Monday, November 17, 2014

Supplemental Damages for Pre-Verdict Infringement Requires Bifurcation

The court denied plaintiff's motion for pre-verdict supplemental damages following a jury verdict based on defendant's failure to produce damages discovery. "During discovery, [defendant] failed to produce any financial records later than 2011. . . . [Plaintiff's] expert purported to reserve the right to seek post-2011 damages after trial, and [plaintiff] argues that it 'reserved the right in its complaint and again in its pretrial statement to seek an accounting of all damages.' [Plaintiff's] attempts to reserve these rights do not empower it to take the question of damages from the jury. Damages are part of a trial by jury. If [plaintiff] wished to bifurcate a portion of its damages for a separate, later trial, it would have had to ask the Court to do so, or reached an agreement to that effect with [defendant]."

TransPerfect Global, Inc., et al v. MotionPoint Corporation, 4-10-cv-02590 (CAND November 13, 2014, Order) (Wilken, J.)


Does plaintiff’s failure to compel damages discovery as to pre-verdict time periods bar supplemental damages?

Another decision from the Northern District of California takes the opposite view: “While [plaintiff] did not do everything it could have to compel [defendant] to comply with its discovery obligations, it asked for damages information relating to [a pre-verdict time period] and was essentially stonewalled. [Defendant] cites no case holding that a failure to move to compel or some other relief warrants capping [plaintiff's] access to supplemental damages."

To view other decisions addressing supplemental damages, click this link.

Friday, November 14, 2014

Casino Monitoring Patent Not Abstract Under Alice

The court denied defendants' motion for summary judgment that plaintiff's casino monitoring patent was invalid for lack of patentable subject matter and rejected defendants' argument that the prior art showed the abstract concept of a customer loyalty program was practiced before plaintiff's invention. "[A]utomation of manual tasks is not necessarily abstract. U.S. Patent No. 72 (1794) to Eli Whitney for a cotton gin is one familiar example of a solidly tangible automating machine. Of course, one could posit a way of drafting even a claim to a cotton gin in a way that renders it abstract: 'a machine comprising metal and wood configured to remove cotton seeds from cotton fiber.' Read most charitably, Defendants are arguing something like that — that the prior art shows that all of the steps in the claimed method were performed together previously, and the [patent-in-suit] merely says 'do that, on a computer,' neatly fitting the [Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)] mold. But Defendants rely on multiple combinations of references to make that argument, and as couched by Defendants, those combinations seem more like an obviousness argument under 35 U.S.C. § 103 than a patent eligibility analysis under 35 U.S.C. § 101. . . . Defendants have not demonstrated that the claims simply cover generic computer implementation of the way poker rooms were managed before the invention."

Ameranth, Inc. v. Genesis Gaming Solutions, Inc. et al, 8-11-cv-00189 (CACD November 12, 2014, Order) (Guilford, J.)

Thursday, November 13, 2014

Withdrawing Infringement Claims During Discovery and After Claim Construction Does Not Justify Attorneys’ Fee Award

The court denied defendant's motion for attorneys’ fees under 35 U.S.C. § 285 after plaintiff dropped three of six asserted patents before a jury trial. "[T]here is no basis to conclude that Plaintiff engaged in a 'kitchen sink' approach without a good faith basis for bringing suit. . . .One of the purposes of discovery . . . is 'to allow the plaintiff to pin down the defendant’s theories of defense, thus confining discovery and trial preparation to information that is pertinent to the theories of the case.' Plaintiff’s withdrawal of [one] patent during the course of discovery . . . was not unreasonable, and does not weigh in favor of an 'exceptional' case finding. Similarly, the Court does not regard Plaintiff’s withdrawal of its claims on [two other] patents after receipt of the Court’s claim construction order as unreasonable. A party is free to alter its litigation strategy after receiving an unfavorable claim construction."

NXP BV v. Research In Motion Ltd., et al, 6-12-cv-00498 (FLMD October 22, 2014, Order) (Kane, J.)