Monday, December 22, 2014

Counsel’s Role in Preparing Expert Report Bars Expert’s Testimony

The court granted plaintiff's motion to exclude testimony from a defense invalidity expert who did not draft his own report. "The problems with [the expert's] testimony stem from the fact that he did not draft his own report; defense counsel drafted it for him. The Court finds that practice to be a remarkable breach of ethics and protocol, which defense counsel brazenly attempted to justify at oral argument. . . . He may indeed be competent to provide testimony in support of the invalidity defenses in this case. But he has surrendered his role to defense counsel, and that is not how the adversary process works. . . . [The expert] devoted less than 30 hours developing his opinions about the case, nearly half of which was spent at or traveling to the law office of [defense] attorneys. . . . Because [the expert] did not furnish a report that even approximated his original work in this case, and he could not apply the facts of the case to the principles upon which an obviousness opinion necessarily is based, he cannot testify as an expert in this case."

Numatics, Incorporated v. Balluff, Inc. et al, 2-13-cv-11049 (MIED December 16, 2014, Order) (Lawson, J.)


How have other courts addressed counsel’s role in preparing expert reports?

In the decision report above, Judge Lawson states that counsel’s role in preparing expert reports “generally is limited to ensuring that Rule 26’s formal requirements are satisfied.” Further, “[d]etermining whether counsel crosses the line separating permissible assistance from improper participation in the expert’s report writing calls for ‘a fact-specific inquiry.’”

For Docket Navigator subscribers, if you'd like to view decisions by other courts addressing this issue, click here. If you’d like to be notified of new orders addressing this issue, follow the link and click “Create Alert” at the bottom of the page.

Friday, December 19, 2014

Personal Jurisdiction Premised on Sending Paragraph IV Letter Certified for Appeal

The court granted in part defendant's motion to certify for interlocutory appeal an earlier order denying defendant's motion to dismiss plaintiff's ANDA action for lack of personal jurisdiction, but found defendant's proposed question too narrow. "The court is not familiar with any other judicial decision analyzing person jurisdiction in 'Hatch-Waxman litigation,' in the wake of the Supreme Court's ruling in Daimler AG v. Bauman, 134 S. Ct. 746 (2014). The court agrees with [defendant] that this is a controlling (and novel) question of law for which there is substantial ground for difference of opinion. . . . [G]iven the volume of Hatch-Waxman cases pending in this district, the court is of the view that interlocutory appellate review will provide necessary guidance as to whether these cases are properly before the court. . . . The court considers [defendant's certification] question to be an oversimplification of its holding [and] will therefore certify [its] request for interlocutory appeal . . . without further limitation."

AstraZeneca AB v. Aurobinda Pharma, Ltd. et al, 1-14-cv-00664 (DED December 17, 2014, Order) (Sleet, J.)

Thursday, December 18, 2014

Customized Advertising Patent Invalid Under Alice

The court granted defendant's motion for summary judgment that plaintiff's customizable advertising patent was invalid for lack of patentable subject matter. "[T]he specification . . . makes clear that a primary potential use of the system is to allow advertisers to direct customized ads to individuals. . . . "[Defendant's] characterization of this patent as embodying only an 'abstract idea' is accurate. The concept of gathering information about one’s intended market and attempting to customize the information then provided is as old as the saying, 'know your audience.'. . . The idea is abstract, and no limitations exist in the claims to provide an 'inventive concept' sufficient to transform that idea into patent-eligible subject matter. Indeed, the claim language itself does not even expressly call for the use of computers or the internet."

OpenTV Inc. v. Netflix Inc., 3-14-cv-01525 (CAND December 16, 2014, Order) (Seeborg, J.)


How have other courts ruled on patentable subject matter after Alice?

Since Alice was decided last June, U.S. district courts have issued 31 dispositive or potentially dispositive decisions addressing patentable subject matter. To view those decisions, click here.

If you’d like to be notified of new orders addressing patentable subject matter, follow this link (same as above) and click the “Create Alert” button at the bottom of the results page.
(For Docket Navigator customers only.)

Wednesday, December 17, 2014

Financial Transaction Security Patent Invalid Under Alice

The court granted defendant's motion for summary judgment that plaintiff's financial transaction security patent was invalid for lack of patentable subject matter because the claims were not limited by an inventive concept. "[P]laintiff argues that the claims use 'specific computers' with bank processing software, making them 'special purpose computers.' . . . Plaintiff admits that the applicant did not invent the computer components or the banking software. For example, claim 30 utilizes a memory to store a limitation or restriction, a communication device to transmit, a receiver to receive, and a processing device to process information and generate a signal containing information. While plaintiff objects to the characterization of these components as generic, the addition of well known data processing software does not transform these components into a 'special purpose computer.'. . . While the computer components do allow the abstract idea to be performed more quickly, this does not impose a meaningful limit on the scope of the claim."

Joao Bock Transaction Systems LLC v. Jack Henry & Associates Inc., 1-12-cv-01138 (DED December 15, 2014, Order) (Robinson, J.)

Tuesday, December 16, 2014

Defendant Sanctioned $10,000 for "First Option" Rule 11 Motion

The court sua sponte sanctioned defendant $10,000 for its unsuccessful early motion for Rule 11 sanctions. "The Court looks with particular skepticism on sanctions motions brought immediately after joining issue and well before any type of discovery has taken place. . . . [U]nder the guise of being an abused party, the Defendant ultimately abused the Court through the excessive filing of 10 briefs and 1,700 pages through which the Court had to wade, only to conclude that neither motion was well-founded. For this reason, and as a means of cautioning future litigants against ill-conceived decisions to immediately move for sanctions as a 'first option,' the Court uses its inherent authority to tax a portion of the costs of responding to and defending [defendant's] motion against the Defendants."

Syneron Medical Ltd. v. Viora Ltd. et al, 2-14-cv-00639 (TXED December 12, 2014, Order) (Gilstrap, J.)

Monday, December 15, 2014

Contentious and Unprofessional Discovery Conduct Risks Attorney Ban and Close of Discovery for that Side

The court denied without prejudice the parties' discovery motions and warned counsel that attorneys who did not behave professionally would be banned from discovery and that discovery for that side could be closed altogether. "The court . . . chastised both sides for the contentiousness and unprofessionalism that has marred discovery in this case, particularly the depositions. Both sides are at fault and the attorneys for both sides must change their behavior significantly and immediately. . . . This is particularly important during depositions: no repetitive questioning, no badgering witnesses, no speaking objections, 100% Marquess of Queensbury Rules. . . . [I]n any further discovery concern flagged for the court, the court will ban from any further participation in discovery the offending attorney, regardless where that attorney fits into the hierarchy. The court is the sole judge of what constitutes offending conduct and its threshold in this case now is particularly low. The court further warned that if it then finds a second incident of offensive discovery conduct on either side, the court will completely close discovery for that side. This is not an idle threat, it is a just order under Rule 37(b)(2)(A) and every lawyer involved in this lawsuit must read this order and abide by it."

US Water Services, Inc. v. Novozymes A/S et al, 3-13-cv-00864 (WIWD December 11, 2014, Order) (Crocker, M.J.)

Friday, December 12, 2014

Contrary Construction in Reexamination No Basis for Reconsideration of Court’s Claim Construction

Following an ex parte reexamination of the patent-in-suit, the court denied plaintiff's motion to reconsider claim construction and vacate a related summary judgment order. "Although [plaintiff] concedes that its proposed course of action would result in disrupting litigation which has relied, for eight years, on the 2006 Markman Ruling, it nevertheless contends that 'reconsideration would promote judicial economy and efficiency' because 'reversal [of the 2006 Markman Ruling] is likely.' The Court disagrees. . . . [P]ut simply, the PTO Ruling is not binding on this Court, nor is it binding on the Federal Circuit. . . . [Plaintiff] has repeatedly sought -- and has been repeatedly denied -- reconsideration of the 2006 Markman Ruling based on the contrary construction in [another case involving the same patent]. The fact that the PTO Ruling is apparently consistent with [that other case] does not alter the Court's conclusion about whether reconsideration is warranted, nor does it undermine the soundness of the 2006 Markman Ruling."

Enzo Biochem, Inc., et al v. Molecular Probes, 1-03-cv-03816 (NYSD December 10, 2014, Order) (Sullivan, J.)