Tuesday, December 30, 2008

Prior representation of plaintiff by Oblon partner disqualifies former PTO Commissioner as defense expert witness

Defendants' expert, former PTO Commissioner, Gerald Mossinghoff, was disqualified where another member of his firm, Oblon, Spivak, represented plaintiff in an interference proceeding "involv[ing] the same Plaintiff and same Defendant litigating over the same patent." The court rejected defendant's argument that an internal ethical wall separated the two representations. "Regardless of whether an ethical wall exception to strict firm-wide disqualification may be permitted by the California Supreme Court, the facts of this case make it unmistakably clear that no such effective measures exist at the Oblon, Spivak firm so as to prevent Mr. Mossinghoff’s imputed disqualification."

Roger Plumley v. Doug Mockett & Co. et al., 2-04-cv-02868 (CACD December 22, 2008, Minutes).

Monday, December 29, 2008

Defendant's home state does not have a greater local interest in resolution of a patent infringement case

The court rejected defendant's argument, in support of its motion to transfer venue, that "the state of Washington has a greater local interest in the resolution of that case because [defendant] is a Washington based company and the center of the allegedly infringing activity is in Washington." "This Court has routinely rejected this sort of argument in patent cases. When a company sells allegedly infringing products, or offers allegedly infringing services, nationwide, 'no specific locality has a dominant interest in resolving the issue of [patent infringement].' "

j2 Global Communications Inc v. Protus IP Solutions Inc., 6-08-cv-00211 (TXED December 23, 2008, Memorandum Opinion & Order)

Friday, December 26, 2008

Plaintiff's status as non-practicing entity does not diminish prejudice from a stay pending reexam

"[Plaintiff's] status as a non-practicing entity has no bearing on whether it will be prejudiced by a stay because every patentee has equal rights under the law to enforce his patent rights."

Parallel Networks, LLC v. Priceline.Com, Inc et al., 2-08-cv-00045 (TXED December 23, 2008, Order)

Tuesday, December 23, 2008

Leave to amend infringement contentions granted where the amended contentions focus and narrow the case

Plaintiff was permitted to amend its infringement contentions because it had been diligent in analyzing "500 gigabits of [the defendant's] source code and tens of thousands of [the defendant's] confidential documents since serving its original contentions," and the prejudice to defendant would be minimal since plaintiff's amended contentions "reduced its claims from thirty-five to eighteen while withdrawing all infringement theories based on [one patent], five of the seven accused features of [a second patent], and one accused feature of [a third patent]."

VirnetX, Inc. v. Microsoft Corp., 6-07-cv-00080 (TXED December 19, 2008, Order)

Monday, December 22, 2008

Plaintiff showed a substantial controversy as to accused products that had never been made or sold.

The court could exercise subject matter jurisdiction over plaintiff's declaratory judgment claim for products that had never been made or sold. Where plaintiff "invested what was likely a significant amount of time and effort in the development of the [product] and [was] on the verge of manufacturing that product, [plaintiff] was in the position of having to either pursue arguably illegal behavior or abandon that path altogether, which is sufficient to give rise to declaratory judgment jurisdiction."

RyMed Technologies, Inc. v. Laboratoires Pharm. Vygon, 3-07-cv-01077 (TNMD December 18, 2008, Memorandum)

Friday, December 19, 2008

Short-circuiting interference proceeding deprives a district court of jurisdiction to review BPAI decision

Where plaintiff voluntarily terminated an interference proceeding after a decision on preliminary motions, and before the priority phase, it failed to exhaust administrative remedies and therefore deprived the district court of subject matter jurisdiction to review of the Board of Patent Appeals and Interferences' decision pursuant to 35 USC § 146. "[I]n view of the lack of Federal Circuit precedent mandating otherwise, the court declines to review the underdeveloped and incomplete record below as a matter of judicial economy, and declines to adopt a position that would freely allow litigants to circumvent Board decisions on priority."

Human Genome Sciences Inc. v. Genentech Inc., 1-08-cv-00166 (DED December 17, 2008, Memorandum Opinion)

Thursday, December 18, 2008

Defendant sanctioned for making "material misrepresentations to the court" and "publishing false information about the court's rulings"

"Defendants clearly exercised bad faith in their dealings with the Court. Defendants deliberately withheld from the Court information related to their activities after receiving the Complaint, and such information was material to the Court's determination. Moreover, this information was withheld even after the Court reprimanded [the defendants' CEO], during the default judgment hearing, for making patently false assertions in his affidavit. . . . [Additionally], Defendants filed a misleading, unnecessary, and damaging press release about the status of the litigation . . . intended to inappropriately influence this litigation."

American Science and Engineering, Inc. v. Autoclear, LLC, 2-07-cv-00415 (VAED December 16, 2008, Memorandum Opinion and Order)

Wednesday, December 17, 2008

Spoliation by one defendant warrants sanctions against all defendants

The court rejected defendants' argument that sanctions should not be imposed on two of three defendants. "Plaintiffs submitted evidence . . . showing that [two defendants] controlled [the third defendant] with regard to certain of the accused websites. Moreover, discovery requests were directed at all defendants, and regardless of whether [two defendants] were involved in the spoliation of the source code, all defendants had an obligation to produce responsive documents, and all defendants – who were represented by the same counsel – had a duty to candidly inform plaintiffs and the Court regarding defendants’ compliance with discovery obligations and discovery orders."

Keithley v. The Home Store.Com, Inc., 3-03-cv-04447 (CAND December 15, 2008, Order)

Tuesday, December 16, 2008

$34 million verdict reduced to $6.1 million

Jury verdict of approximately $34 million was reduced 82% to $6.1 million because the jury adopted plaintiff's expert's calculation of damages which was based upon worldwide sales that were "not actually rooted in [defendant's] infringing activity in the United States."

Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 1-04-cv-01371 (DED December 12, 2008, Memorandum Opinion)

Monday, December 15, 2008

Stay pending resolution of Swedish arbitration of license rights granted

Motion to stay pending the resolution of a Swedish arbitration proceeding was granted because the arbitration "will aid this Court in resolving the claims [plaintiff] asserts here" including whether a license agreement was terminated. "While it is possible that, because [plaintiff] is not a party to that arbitration, it may not be bound by the arbitrators’ decision," the arbitration "may cast some additional light on the relevant Swedish legal principles, which govern both the Licensing and Sublicensing Agreements" at issue in the case.

Cobra North America, LLC v. Cold Cut Systems Svenska AB, 1-08-cv-00873 (COD December 11, 2008, Order).

Friday, December 12, 2008

In showing unexpected results to overcome obviousness rejection, applicant's failure to test closest prior art was not inequitable conduct

Plaintiff was entitled to summary judgment on defendant's inequitable conduct defense based defendant's allegation that the test performed by applicants to show unexpected results to overcome an obviousness rejection did not test the "closest prior art." "Defendants have not alleged facts to suggest that Applicants intentionally chose to test a compound that was not the closest prior art. . . . Moreover, the examiner who was informed of all of the identified compounds in the [prior art] did not determine that the compound selected [for testing] was not the closest prior art compound."

Pfizer Inc. v. IVAX Pharm., Inc., 2-07-cv-00174 (NJD December 10, 2008, Opinion)

Thursday, December 11, 2008

Disclosure of prior art in invalidity contentions was not sufficient to support summary judgment argument based on specific combinations of prior art

The court refused to consider defendant's argument in support of summary judgment of invalidity based on a combination of a prior art reference with either of two other prior art references because that argument had not been disclosed in defendant's Final Invalidity Contentions. "[Defendant] cites all three references in its Final Invalidity Contentions. However, in [defendant's] chart identifying those elements of the Cragg Stent article that are present in the claims of the [asserted patents], defendant] does not combine the Cragg Stent article with either Schetky or Delaey."

Medtronic Inc. v. W.L. Gore & Assoc., Inc., 3-06-cv-04455 (CAND December 9, 2008, Order).

Wednesday, December 10, 2008

Failure to conduct adequate pre-filing investigation warrants sanctions against plaintiff and its counsel

"Given the undisputed facts in this case, the intrinsic evidence of record, the Court’s construction of the claims of the [patent-in-suit], and the finding of noninfringement as a matter of law, the Court must conclude that any reasonable pre-suit investigation would have revealed that the allegedly infringing devices did not contain any type of miniature infrared camera and therefore could not have literally infringed [plaintiff's] patent. Likewise, in light of the prosecution history and the doctrine of prosecution history estoppel, there is no nonfrivolous argument for the finding of infringement after applying the doctrine of equivalents. . . . The imposition of Rule 11 sanctions is therefore appropriate in this case against both [plaintiff] and its counsel."

Triune Star, Inc v. The Walt Disney Co., 1-07-cv-01256 (ILCD November 24, 2008, Order)

Tuesday, December 9, 2008

Plaintiff entitled to samples of modified product as defendant "intends for it to be sold"

Where defendant modified its product after providing a sample to plaintiff in discovery, plaintiff was entitled to a sample of the modified product. "[Plaintiff's] sample requests are intended to . . . identify the nature and composition of the . . . product as [defendant] intends for it to be sold. . . . this matter will not be decided based on a hypothetical product."

Eli Lilly and Co. v. Teva Pharm. USA, Inc., 1-06-cv-01017 (INSD December 5, 2008, Order).

Monday, December 8, 2008

Reliance on Prior Art Computer During Inter Partes Reexam Did Not Estop Defendant from Relying on the Same Prior Art for Its Invalidity Defense

Defendants were not estopped under 35 U.S.C. § 315(c) from arguing invalidity based on a prior art computer even though the computer "was actually raised as potential prior art during the [inter partes] reexamination proceeding" because "in reexamination proceedings, the PTO considers only 'patents or printed publications' " and a physical computer is neither.

Acco Brands, Inc. v. PC Guardian Anti-Theft Products, Inc., 3-04-cv-03526 (CAND December 4, 2008, Order)

Friday, December 5, 2008

Counsel encouraged to agree on terms of protective order

"Despite filing a 'Joint Motion for Entry of Protective Order,' the Protective Order as proposed by the parties . . . contained a disputed provision and was therefore not actually agreed to by the parties. . . . [T]he parties may submit a protective order that conforms with the protective order suggested by the local rules or a protective order agreed upon by competent counsel. If the parties' current counsel cannot agree on a protective order, the Court suggests they retain alternative, competent counsel."

Victor Company of Japan, Ltd. v. Cyberlink Corp., 1-08-cv-00041 (TXWD November 25, 2008, Order)

Thursday, December 4, 2008

Prior license does not automatically preclude finding of irreparable harm

"A rule that any patent holder that licensed its product could never obtain a preliminary injunction is at odds with the purpose of 35 U.S.C. § 103. Patent holders are granted exclusive authority to grant licenses and to refuse licenses; such that a patent holder could license to small non-threatening operations, but refuse to license to a competitor that could run the patent holder out of business. The court could be presented with a situation where a patent holder has licensed to non-threatening competitors but is facing irreparable harm because of a large competitor’s unlicensed infringement."

Automated Merchandising Systems, Inc. v. Crane Co., 3-08-cv-00097 (WVND December 2, 2008, Order)

Wednesday, December 3, 2008

Scope of Patent Rule 3-1 infringement contentions is not limited by product branding

"Patent Rule 3-1 -- in connection with confusing and conflicting product branding -- is not meant to be used as a tactical tool. To the contrary, the Rule is in place to allow defendants to have reasonable notice of the plaintiff’s infringement claims. Because of the nature of the patent claim, [plaintiff] had reasonable notice that [defendant] was accusing the [product at issue] and the method that it deployed regardless of the branding or the configuration of its components."

Alcatel USA Resources Inc v. Microsoft Corp., 6-06-cv-00499 (TXED December 1, 2008, Memorandum Opinion and Order)

Tuesday, December 2, 2008

Plaintiff estopped from asserting patent after four year delay in filing suit where defendant invested in accused products during that time

"I hold as a matter of law that [defendant] suffered material prejudice because of plaintiff's [four year] delay in bringing suit. . . . As [plaintiff] did not follow through on its initial threat to sue, [defendant] continued investment in [the accused product] line. [Defendant] . . . invested in marketing [the accused products] and obtaining trademark protection. It increased its sales force and devoted a substantial percentage of its promotional resources to the products. . . . This uncontroverted evidence establishes a nexus between plaintiff's delay and [defendant's] expenditures related to [the accused products]."

Aspex Eyewear, Inc. et al v. Clariti Eyewear, Inc., 1-07-cv-02373 (NYSD November 26, 2008, Memorandum Decision)

Monday, December 1, 2008

Court approves fee award based on attorneys' hourly rates of $300 to $703

"Based upon the Court’s observations of [McDermott Will & Emery partner Joel Freed's] excellent capabilities, the Court finds his $703 per hour billing rate reasonable." The court also awarded fees based on Arnold & Porter's voluntarily discounted billing rates of $432-$542/hour for partners, $300-$456/hour for associates, and $128-$204/hour for paralegals.

Lucent Technologies v. Gateway Inc., 3-02-cv-02060 (CASD November 17, 2008, Order)