Friday, April 21, 2017

Top Law Firms by Number of Accusations in 2016

What is a Patent Accusation?

A Patent Accusation is a more granular way to measure the volume of litigation activity than counting the number of cases or litigants. As used in this report, the term means a request for relief in a U.S. district court, the ITC or the PTAB (AIA proceedings), the resolution of which could determine if a patent has been infringed or the patent’s validity or enforceability.
For example, a civil case with one plaintiff asserting one patent against one defendant would involve one patent accusation, whereas a case with one plaintiff asserting 5 patents against 10 defendants would result in 50 infringement accusation. Multiple claims involving the same parties and patents (e.g., a claim of infringement and a declaratory judgment counterclaim of invalidity or unenforceability) are counted as a single accusation. In a PTAB proceeding, each challenge to the patentability of a patent would create one patent accusation.


Sale of Software and Separate Plug-In Capable of Infringing When Combined Does Not Constitute Direct Infringement​

The court granted defendant's motion for summary judgment that it did not directly infringe plaintiff's dynamic web page generation patent. "[Plaintiff] contends that [defendant] infringed the asserted claims by storing (separately and in different locations) [its] Server software and ARR plug-in on its severs and by selling [the] Server software to customers while also making its optional ARR plug-in available for download. That infringement theory is problematic in light of the Supreme Court's decision in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 526-29 (1972). . . . The Court . . . explained that a patent 'does not cover the manufacture or sale of separate elements capable of being, but never actually, associated to form the invention.' But contrary to the decision in Deepsouth, [plaintiff] argues that [defendant] directly infringed the asserted claims even though, under this theory, [defendant] did not assemble the software components into the accused product."

Parallel Networks Licensing LLC v. Microsoft Corporation, 1-13-cv-02073 (DED April 10, 2017, Order) (Jordan, CJ)

Thursday, April 20, 2017

Until Shaw is Limited or Reconsidered, IPR Estoppel Does Not Apply to Non-Instituted Invalidity Grounds Asserted in Petition​

Following inter partes review of the patent-in-suit, the court denied plaintiff's motion to preclude defendant from contesting validity under 35 U.S.C. § 315(e) with respect to invalidity grounds that were asserted in the IPR petition but not instituted. "[Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir.), cert. denied, 137 S. Ct. 374 (2016)] makes the Federal Circuit’s view of whether § 315(e) estoppel applies to non-instituted grounds crystal clear. So until Shaw is limited or reconsidered, this court will not apply § 315(e)(2) estoppel to non-instituted grounds. . . . For the record, this court is not persuaded by Shaw’s interpretation of the term 'during' in § 315(e). Shaw does not adequately consider the history and purpose of the statutory language, and it does not satisfactorily reconcile the narrow interpretation of 'during' with the broader language 'reasonably could have raised.' What are the grounds that the petitioner 'reasonably could have raised' if the petitioner is limited to raising them after review is instituted, when the opportunity to assert new grounds is exceedingly limited? The more reasonable interpretation is that 'during that inter partes review' includes not only the instituted review itself but also the petition process."

Douglas Dynamics, LLC v. Meyer Products LLC, 3-14-cv-00886 (WIWD April 18, 2017, Order) (Peterson, USDJ)

Wednesday, April 19, 2017

Discovery Concerning Plaintiff’s Investor Funding, R&D Costs, and IPO Valuation Not Proportional to Needs of Case​

The court denied without prejudice defendant's motion to compel further interrogatory responses regarding investor funding, initial public offerings, and research and development costs because the discovery was not proportional to the needs of the case. "While it is conceivable that the documents sought by each of these production requests could contain information relevant to one or more issues in this case, the record does not presently show that they are likely to do so. At the same time, the production sought by each production request is extensive, the burden on [plaintiff] of making the production significant, and the intrusion into [plaintiff's] operations entailed by the production substantial."

Valencell, Inc. v. Apple Inc., 5-16-cv-00001 (NCED April 17, 2017, Order) (Gates, MJ)

Tuesday, April 18, 2017

Claim Construction Appropriate at Pleading Stage Where Patent Provides Explicit Definition​

The court denied defendant's motion to dismiss plaintiff's direct patent infringement claim on the ground that plaintiff's claim was based on an implausible interpretation of its patent, but rejected plaintiff's argument that claim construction of its DNA microarray patent was premature. "[T]he Court concludes that it may properly construe a claim term at the pleading stage in certain circumstances. The purpose of a 12(b)(6) motion is, after all, to determine whether a plaintiff states a legally cognizable claim for relief. . . . Defendant’s argument is premised on what is perhaps one of the most appropriate exercises of claim construction at the pleading stage: a claim of lexicography; that is, that the [patent] itself allegedly provides an explicit definition of parameter 'a.'. . . The Court finds that there is merit to both parties’ arguments and thus the Court cannot say at this stage that Defendant’s construction is correct as a matter of law."

The Scripps Research Institute v. Illumina, Inc., 3-16-cv-00661 (CASD April 14, 2017, Order) (Sammartino, USDJ)

Monday, April 17, 2017

Challenge to Printed Publication Status of Prior Art Reference Does Not Justify Late Disclosure of New Reference​

The court granted plaintiff's motion to strike a previously undisclosed prior art publication from defendant's invalidity contentions and rejected defendant's argument that the reference was necessary to address plaintiff's challenge to another reference. "[W]hile it is true that the printed publication argument was raised only in response to [defendant's] motion for summary judgment of anticipation, [defendant] should not have been caught entirely unawares by [plaintiff's] printed publication defense to [defendant's] reliance on the [originally disclosed] reference as anticipating prior art. Given the obscurity of the [original] reference, it is not surprising that [plaintiff] would raise an issue as to whether the [original] publication was sufficiently in the public domain to qualify as prior art. . . . Nothing prevented [defendant] from citing both [the original] and the [new] reference in its original invalidity contentions. . . . [I]t would be highly prejudicial to [plaintiff] for [defendant] to be allowed to use the [new] reference after having raised it for the first time only a few weeks before trial and after the close of discovery."

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED April 13, 2017, Order) (Bryson, CJ)

Friday, April 14, 2017

Defendant’s Multiplication of Proceedings No Basis for Reducing Attorney Fees Award for Plaintiff’s Exceptionally Weak Claims

​ The court granted in part defendant's requested attorney fees under 35 U.S.C. § 285 and rejected plaintiffs' objection that the fees should be reduced on the ground that defendant unreasonably multiplied the proceedings. "In the Court’s [prior] Order, it found that [defendant] engaged in some activity that prolonged the litigation, including 'unreasonably' refusing to designate representative products. . . . Where a plaintiff’s case is exceptionally weak on the merits, as here, rather than because of litigation misconduct, this rule counsels full fee shifting from the time the case became exceptionally weak on the merits. The entire case from that point on is exceptional and the extra legal effort required to counteract the lawsuit includes the entirety of a vigorous defense. In the context of this case, [defendant] did not exceed that limitation."

Technology Properties Limited, LLC v. Canon, Inc. et al, 4-14-cv-03640 (CAND April 12, 2017, Order) (Wilken, USDJ)