Wednesday, December 30, 2009
Shifting Positions on Claim Construction Warrants Award of Attorneys' Fees for Additional Claim Construction Briefing
Northbook Digital LLC v. Vendio Services, Inc., 0-07-cv-02250 (MND December 28, 2009, Order) (Schiltz, J.)
Tuesday, December 29, 2009
Failure to Allege Time Period of Infringement Warrants Dismissal of Infringement Claim
Quantum Loyalty Systems Inc. et al. v. TPG Rewards Inc., 1-09-cv-00022 (DED December 23, 2009, Report & Recommendation) (Thynge, M.J.)
Monday, December 28, 2009
Patent Law Trumps Federal Rules of Evidence as to Admissibility of Expert Testimony
Newriver, Inc., v. Newkirk Products, Inc., 1-06-cv-12146 (MAD December 16, 2009, Order) (Young, J.)
Wednesday, December 23, 2009
Defendant Sanctioned for Fabricating Prior Art
Furminator, Inc. v. Kim Laube & Co., 4-08-cv-00367 (MOED December 21, 2009, Memorandum & Order) (Webber, J.)
Tuesday, December 22, 2009
Miscalculation of Deadline Due to Intervening Holiday Does Not Excuse Late Filing
Juniper Networks, Inc. v. Graphon Corp. et al., 1-09-cv-00287 (VAED December 18, 2009, Order) (Lee, J.)
Monday, December 21, 2009
Use of Consulting Expert's Report in Infringement Contentions does not Waive Privilege as to Report
Fast Memory Erase LLC v. Spansion Inc et al., 3-08-cv-00977 (TXND December 16, 2009, Memorandum Order) (Kaplan, M.J.)
Friday, December 18, 2009
Judge's Past Experience With Patents and Technology Support Transfer of Venue
Telcordia Technologies, Inc. v. Tellabs, Inc., 2-09-cv-02089 (NJD December 16, 2009, Opinion) (Greenaway, J.)
Thursday, December 17, 2009
Ashcroft and Twombly Do Not Require That Complaint Allege "How" Accused Products Infringe
WIAV Networks, LLC v. 3Com Corp. et al., 5-09-cv-00101 (TXED December 15, 2009, Order) (Folsom, J.)
Wednesday, December 16, 2009
Plaintiff's Failure to Perform Pre-Suit Investigation Including "Essential Testing" Supports Award of Attorneys' Fees
International Intellectual Management Corporation v. Lee Yunn Enterprises, Inc. (U.S.A.) et al., 2-08-cv-07587 (CACD December 14, 2009, Order) (Real, J.)
Tuesday, December 15, 2009
3D Computer Graphics Patents Deemed Invalid Under In re Bilski
Fuzzysharp Technologies Inc. v. 3DLabs Inc. Ltd., 4-07-cv-05948 (CAND December 11, 2009, Order) (Armstrong, J.)
Monday, December 14, 2009
Apple Strikes Back
Nokia Corporation v. Apple Inc., 1-09-cv-00791 (DED December 11, 2009) (Apple Inc.'s Answer, Defenses, and Counterclaims)
Friday, December 11, 2009
Yahoo! to Pay 23% Ongoing Royalty for Future Infringement
Creative Internet Advertising Corp. v. Yahoo! Inc. et al., 6-07-cv-00354 (TXED December 9, 2009, Memorandum & Opinion) (Love, M.J.)
Thursday, December 10, 2009
In re TS Tech, In re Genentech, and In re Volkswagen Do Not Provide "New Grounds" for Transfer of Venue
Financial Sytems Tech. (Intellectual Property) Pty. Ltd. et al. v. Oracle Corp., 2-08-cv-00371 (TXED December 8, 2009, Memorandum Opinion & Order) (Everingham, M.J.).
Wednesday, December 9, 2009
Assignment Executed by Incorrect Entity Nevertheless Conveyed "Substantial Rights" to Patent Sufficient to Vest Plaintiff with Standing
Southwest Efuel Network, L.L.C. v. Transaction Tracking Technologies, Inc., 2-07-cv-00311
(TXED December 7, 2009, Memorandum Opinion & Order) (Ward, J.)
Tuesday, December 8, 2009
Determination Of Commercial Offer For On-Sale Bar Does Not Include Course of Dealing or Industry Practice
Honeywell Intl Inc., et al. v. Audiovox Corp., et al.,
1-04-cv-01337 (DED December 4, 2009, Memorandum Opinion) (Farnan, J.)
Monday, December 7, 2009
Apple Overturns Willfulness Verdict in Post-Trial Motions
OPTi, Inc. v. Apple, Inc., 2-07-cv-00021
(TXED December 3, 2009, Memorandum Opinion & Order) (Everingham, M.J.)
Friday, December 4, 2009
Defendants' Website, Marketing Activities, and Single $29.95 Sale of Accused Service Warrant Exercise of Personal Jurisdiction
Absolute Software, Inc. et al v. World Computer Security Corporation et al.,
1-09-cv-00142 (TXWD December 2, 2009, Order) (Yeakel, J.)
Thursday, December 3, 2009
Howrey Disqualified From Representing Boston Scientific In New Jersey, But Not Delaware
Wyeth et al. v. Abbott Laboratories et al., 3-08-cv-00230
(NJD December 1, 2009, Letter Order) (Bongiovanni, M.J.)
Wednesday, December 2, 2009
Late Amendment of Contentions: Denied as to New Patent, Granted as to New Prior Art
Sybase, Inc. v. Vertica Systems, Inc., 6-08-cv-0024
(TXED November 30, 2009, Memorandum Opinion & Order) (Davis, J.)
Tuesday, December 1, 2009
Divided Infringement: Outsourcing Accused System Warrants a Finding of Noninfringement as to Both System and Method Claims
Phoenix Solutions, Inc. v. The Directv Group, Inc.,
2-08-cv-00984 (CACD November 23, 2009) (Pfaelzer, J.)
Monday, November 30, 2009
eBay Policy Concerning Sales of Infringing Products Necessitates Injunctive Relief
Zen Design Group, Limited v. Clint, 2-08-cv-14309
(MIED November 23, 2009, Opinion and Order) (Murphy, J.)
Wednesday, November 25, 2009
Lower Standard of Review by PTO Does Not Warrant Denial of Stay Pending Reexamination
Card Activation Technologies, Inc. v. Bebe Stores, Inc.,
1-09-cv-00406 (ILND November 20, 2009, Minutes) (Gottschall, J.)
Tuesday, November 24, 2009
Ten Year Delay And Silence Trigger Laches But Not Equitable Estoppel
Integrated Cards, L.L.C. v. McKillip Industries, Inc., 1-06-cv-02071
(ILND November 19, 2009, Memorandum Opinion & Order) (Kendall, J.)
Monday, November 23, 2009
Evidence of Pending Reexamination Proceeding Excluded from Trial
Presidio Components Inc. v. American Technical Ceramics Corp.,
3-08-cv-00335 (CASD November 13, 2009, Order) (Gonzalez, J.)
Friday, November 20, 2009
Success Rates for Permanent Injunction after eBay v. MercExchange
Docket Navigator beta testers can click the following links to see the actual results, including the underlying orders and summaries
Granted: 58
Denied: 22
Denied without prejudice: 3
Partial: 8
Denied as moot: 2
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In re Seagate's "Objective Recklessness" Test Does Not Render Defendant's Knowledge of Patent Irrelevant to Willfulness
Krippelz v. Ford Mtr Co., 1-98-cv-02361
(ILND November 18, 2009, Memorandum Opinion & Order) (Zagel, J.)
Thursday, November 19, 2009
Defendants' Delay Sinks Bid to Stay Pending Reexam
Motorola Inc. v. Vtech Communications, Inc. et al., 5-07-cv-00171
(TXED November 17, 2009, Order) (Craven, M.J.)
Wednesday, November 18, 2009
Court Strikes Summary Judgment Motions Sua Sponte for Circumventing Page Limits Rule
Aircraft Technical Publishers, Inc. v. Avantext, Inc., 4-07-cv-04154
(CAND November 16, 2009, Order) (Armstrong, J.)
Tuesday, November 17, 2009
Complaint Alleging Sale of Infringing "Goods" Fails to State a Claim of Patent Infringement
Li Ming Tseng v. Marukai Corporation USA et al., 8-09-cv-00968
(CACD November 13, 2009, Order) (Guilford, J.)
Monday, November 16, 2009
Court's Prior Experience With Patents-in-Suit Does Not Override First-to-File Rule
Multimedia Patent Trust v. Tandberg, Inc., 3-09-cv-01377
(CASD November 11, 2009, Order) (Huff, J.)
Friday, November 13, 2009
Tax Refund Loan Patents Deemed Invalid Under In re Bilski
H&R Block Tax Services, Inc. v. Jackson Hewitt Tax Service, Inc.,
6-08-cv-00037 (TXED November 10, 2009, Report and Recommendations) (Love, M.J.)
Thursday, November 12, 2009
Failure to Disclose Pending Reexamination Warrants Monetary Sanctions Against Nondisclosing Party and Counsel
Allflex USA Inc v. Avid Identification Systems Inc., 5-06-cv-01109
(CACD October 30, 2009, Order) (Larson, J.)
Wednesday, November 11, 2009
Permitting Competition in One-Product Market Does Not Create Irreparable Harm Warranting Preliminary Injunction
Conceptus, Inc. v. Hologic, Inc., 3-09-cv-02280
(CAND November 6, 2009, Order) (Alsup, J.)
Monday, November 9, 2009
Local Interests Favor Transfer of Dispute Between Swedish Plaintiff and Pennsylvania Defendant to Pennsylvania
Sandvik Intellectual Property AB v. Kennametal Inc., 1-09-cv-00163
(NCWD November 5, 2009, Memorandum and Recommendations) (Howell, M.J.)
Friday, November 6, 2009
Motion for Claim Construction Denied Because the Parties Failed to Show Why Construction was Necessary
Semiconductor Energy Lab. Co., Ltd. v. Samsung Elect. Co., Ltd. et al.,
3-09-cv-00001 (November 4, 2009, Order) (Crabb, J.)
Thursday, November 5, 2009
Failure to Include Prior Art in Invalidity Contentions Excused Where Defendant Possessed Diagram of Prior Art Before the Disclosure Deadline ...
Defendant's motion for leave to amend its invalidity contentions to include additional prior art was granted. "[T]he parties do not dispute that Defendant had knowledge of [the prior art] in its diagramed form before the [deadline to serve a prior art list]. Defendant never concealed that it believed that the hand-drawn diagram of the [prior art] is relevant to its invalidity defense. Nevertheless, having knowledge or possession of a hand-drawn diagram is different than having knowledge of relevant prior art. A hand-drawn diagram without more does not warrant the conclusion that the diagramed item was an invention that 'was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.'"
Regalo International, LLC v. DEX Products, Inc., 08-cv-04206
(MND November 3, 2009, Order) (Boylan, J.)
Wednesday, November 4, 2009
Court Has Subject Matter Jurisdiction to Hear Constitutional Challenge to Gene Patent
Association For Molecular Pathology et al. v. USPTO et al.,
1-09-cv-04515 (NYSD November 2, 2009, Opinion) (Sweet, J.)
Tuesday, November 3, 2009
Infringing Sales Following Jury Verdict of Infringement Warrant Enhanced Damages
Cummins-Allison Corp. v. Shinwoo Information & Telecomm. Co., Ltd. et al.,
9-07-cv-00196 (TXED October 30, 2009, Order) (Clark, J.)
Monday, November 2, 2009
Case Not Exceptional In Light of Prevailing Defendant's $1.9 Million Post-Markman Attorneys' Fees
WNS Holdings, LLC et al v. United Parcel Service, Inc., 3-08-cv-00275
(WIWD October 29, 2009, Order) (Crabb, J.)
Prior Art Teachings May be Combined to Show Obviousness Even if Prior Art Structures Cannot be Physically Combined
Tokai Corp et al. v. Easton Enterprises Inc et al., 5-07-cv-00883
(CACD October 23, 2009, Order)(Phillips, J.)
Thursday, October 29, 2009
Litigation Over Ownership of Patent Bars Later Infringement Claims as to Related Patent
SLR Partners, LLC et al. v. B. Braun Medical Inc., 3-09-cv-01145
(CASD October 26, 2009, Order) (Miller, J.)
Wednesday, October 28, 2009
Counsel Asserting and Later Withdrawing Privilege Objections Ordered to Pay Costs of Additional Deposition
Davis-Lynch Inc v. Weatherford Int'l Inc., 6-07-cv-00559
(TXED October 26, 2009, Order) (Love, M.J.)
Tuesday, October 27, 2009
Witness Excused for Medical Condition, Barred From Further Testimony
Genetics Institute LLC v. Novartis Vaccines and Diagnostics Inc., 1-08-cv-00290
(DED October 23, 2009, Order) (Robinson, J.)
Monday, October 26, 2009
EDTX Meet & Confer Rule for Discovery Motions Requires Participation by "Lead Counsel"
Konami Digital Entertainment Co, Ltd. et al. v. Harmonix Music Systems, Inc. et al., 6-08-cv-00286
(TXED October 22, 2009, Memorandum & Opinion) (Love, M.J.)
Friday, October 23, 2009
Expert's Failure to "Originate, Author or Understand" His Own Written Opinions Did Not Warrant Exclusion of Testimony
Sunbeam Products, Inc. v. HoMedics, Inc., 3-08-cv-00376
(WIWD October 15, 2009, Order) (Crocker, M.J.)
Thursday, October 22, 2009
Judge Sleet Imposes "Limit of 10 Disputed Terms Per Patent" Rule
Grape Technology Group Inc. et al. v. Jingle Networks Inc.,
1-08-cv-00408 (DED October 20, 2009, Order) (Sleet, J.).
Wednesday, October 21, 2009
Reported In today's Docket Report:
1 monetary award
2 claim terms construed
1 patent determination
10 rulings in 8 cases
For a free trial, send an email to trial@docketnavigator.com
Submission of False Affidavit to PTO Does Not Support Inequitable Conduct Claim Without Allegations of Facts Sufficient to Infer Intent to Deceive
Robert Bosch LLC v. Pylon Manufacturing Corp., 1-08-cv-00542
(DED October 19, 2009, Memorandum Order) (Robinson, J.)
Tuesday, October 20, 2009
Is previously undisclosed prior art admissible at trial to show the state of the art? It depends on the court.
Emcore Corp. et al. v. Optium Corp., 2-07-cv-00326
(PAWD October 16, 2009, Order) (Ambrose, J.)
Plaintiff's motion in limine to exclude certain prior art was granted in part. "Although [defendant] is correct that it may use certain items to show the state of the art, the extent to which [it] may use the references depends largely on the disclosures in [its] expert report. Although [defendant's] expert may testify as to what references were considered, simply listing references as having been considered is insufficient to obtain the admissibility of all of those references."
Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED October 16, 2009, Order) (Everingham, M.J.)
Monday, October 19, 2009
Court Approves Fee Award Based on Hourly Rate 3 Times Local Average for IP Practitioners Due to National Scope of Patent Litigation and Experience
iLOR, LLC v. Google, Inc., 5-07-cv-00109
(KYED October 15, 2009, Memorandum Opinion & Order) (Hood, S.J.)
Interrogatory Response Spanning 1,500 Pages is Inadequate Disclosure of 3-Page Prior Art Reference
Laboratory Skin Care Inc. et al. v. Limited Brands Inc. et al.,
1-06-cv-00601 (DED October 14, 2009, Memorandum Opinion) (Farnan, J.)
Thursday, October 15, 2009
Delay in Asserting Affirmative Defense and "Piratical" Settlement Demand Bar Recovery of Attorneys' Fees by Successful Defendant
Spacesaver Corp. v. The Marvel Group, Inc. et al., 3-08-cv-00354
(WIWD October 13, 2009, Order) (Crocker, M.J.)
Wednesday, October 14, 2009
Dearth of Qualified Experts Does Not Warrant Disclosure of CAD Files to Competitors' Consultant
Saso Golf, Inc. v. Nike, Inc., 1-08-cv-01110
(ILND October 5, 2009, Memorandum Opinion & Order) (Nolan, J.)
Tuesday, October 13, 2009
Lobbying Efforts Not Privileged With Respect to Specific Patent
PA Advisors, LLC v. Google Inc. et al., 2-07-cv-00480
(TXED October 8, 2009, Order) (Folsom, J.)
Friday, October 9, 2009
"Catch-All" Description of "Authors and Inventors of Prior Art" Does Not Satisfy FRCP 26 Obligation
Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED October 7, 2009, Order) (Folsom, J.)
Thursday, October 8, 2009
Plaintiff Not Required to Limit 178 Asserted Claims
i2 Technologies, Inc. et al. v. Oracle Corporation et al.,
6-09-cv-00194 (TXED October 6, 2009, Order) (Davis, J.)
Wednesday, October 7, 2009
Device Capable Of Infringing Use Is Not Exempt From Liability Because Such Use Is "Improper, Unknown, And Dangerous"
Baran v. Medical Device Technologies, Inc., 1-04-cv-01251
(OHND September 30, 2009, Memorandum & Order) (O'Malley, J.)
Tuesday, October 6, 2009
Anti-Trust and Misuse Defenses Severed and Stayed Pending Resolution of Infringement Issues
Eurand Inc. et al. v. Mylan Pharmaceuticals Inc. et al., 1-08-cv-00889
(DED October 2, 2009, Memorandum Order) (Robinson, J.)
Monday, October 5, 2009
Judge Ward Overturns Jury Verdict of Willfulness Based In Part on Closeness of Claim Construction
Centocor, Inc. et al v. Abbott Laboratories, 2-07-cv-00139
(TXED October 1, 2009, Order) (Ward, J.)
Friday, October 2, 2009
Successful Defendant Ordered to Pay Attorneys' Fees and Costs Associated With Unsuccessful Invalidity Defense
Kellogg v. Nike et al., 8-07-cv-00070
(NED September 30, 2009, Memorandum & Order) (Bataillon, J.)
Thursday, October 1, 2009
Five New Orders on Transfer of Venue From EDTX -- Two Denied Where All Public and Private Interest Factors Favored Transfer or Were Neutral
GraphOn Corp. v. Juniper Networks, Inc., 2-07-cv-00373
(TXED September 29, 2009, Order) (Everingham, M.J.)
Wednesday, September 30, 2009
Two Motions To Transfer Venue From EDTX -- 1 Granted, 1 Denied
Novartis Vaccines and Diag., Inc. et al. v. Bayer Healthcare, LLC et al., 2-08-cv-00068 (TXED September 28, 2009, Memorandum Opinion & Order) (Ward, J.)
Venue for suit initiated by Maryland plaintiff against defendants from Ohio, Sweden, Switzerland, and Israel was transferred to the Northern District of Ohio. "Considering all of the private and public interest factors, the defendants have met their burden of showing that the Northern District of Ohio is clearly more convenient than the Eastern District of Texas. Therefore, the motion to transfer venue is granted."
Immerson Medical Inc. v. Mentice AB et al., 2-08-cv-00161 (TXED September 29, 2009, Order) (Everingham, M.J.)
Tuesday, September 29, 2009
Question of Whether Patent Assignment Applies to CIP Certified for Interlocutory Appeal
Gerber Scientific Intl. Inc v. Satisloh AG et al.,
3-07-cv-01382 (CTD September 25, 2009, Amended Order) (Dorsey, J.)
Monday, September 28, 2009
Novo Nordisk Ordered to Correct Overly Broad Orange Book Use Code
Novo Nordisk A/S et al. v. Caraco Pharm. Lab., Ltd.,
2-05-cv-40188 (MIED September 24, 2009, Decision) (Cohn, J.).
Modification of Claim Construction in Jury Instruction Warrants New Trial
Avago Tech. General IP PTE Ltd. et al. v. Elan Microelectronics Corp. et al.,
5-04-cv-05385 (CAND September 23, 2009) (Ware, J.)
Thursday, September 24, 2009
Grouping Accused Products, Alleging Compliance With Industry Standard Prove Fatal to Infringement Claims
Fujitsu Limited et al v. Netgear, Inc.,
3-07-cv-00710 (WIWD September 18, 2009, Order)
(Crabb, J.)
Wednesday, September 23, 2009
Report & Recommendation: Apple's iPhone Does Not Infringe Caller ID Patent
Figa v. Apple Inc., 1-08-cv-10304
(MAD September 21, 2009, Report & Recommendation)
(Dein, M.J.)
Tuesday, September 22, 2009
Research Funding Agreement Granting "Unrestricted Rights" to "Results of Research" Did Not Convey License to Resulting Patent
Wisconsin Alumni Research Foundation v. Intel Corp.,
3-08-cv-00078 (WIWD September 17, 2009, Order) (Crabb, J.)
Monday, September 21, 2009
Use of Web Browser to Display Accused Thumbnail Images Did Not Implicate Divided Infringement
Girafa.com Inc. v. Amazon Web Services LLC et al.,
1-07-cv-00787 (DED September 15, 2009, Memorandum Opinion) (Robinson, J.)
Friday, September 18, 2009
Abandonment Does Not Invalidate Patent, But May Render It Unenforceable
Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED September 15, 2009, Report & Recommendations) (Everingham, M.J.)
Thursday, September 17, 2009
EDTX Addresses Transfer of Venue in Multi-Defendant Case -- Motion Granted as to California Defendants, Denied as to Texas Defendants
Balthaser Online, Inc. v. Network Solutions LLC et al.,
2-08-cv-00430 (TXED September 15, 2009, Order) (Folsom, J.)
Wednesday, September 16, 2009
Unitemized Invoice Sinks Claim for $419,000 in Costs
Boston Scientific Corporation et al. v. Johnson & Johnson et al.,
3-02-cv-00790 (CAND September 14, 2009, Order) (Illston, J.).
Tuesday, September 15, 2009
Obligation to Disclose Best Mode Does Not Include Superior Configuration for Particular Application
Petter Investments, Inc. v. Hydro Engineering Inc. et al., 1-07-cv-01033
(MIWD September 8, 2009, Opinion) (Quist, J.)
What's in a Docket Report?
Monday, September 14, 2009
Party Producing Privilege Log Not Required to Translate Entries Written in Foreign Language
Fujitsu Network Communications Inc. et al. v. Tellabs, Inc. et al., 1-09-cv-04530
(ILND September 10, 2009, Order) (Bucklo, J. )
Friday, September 11, 2009
Withholding Documents Concerning Plaintiff's Standing Warrants $335,000 Sanction
Carl Zeiss Vision International GmbH et al v. Signet Armorlite Inc., 3-07-cv-00894
(CASD September 9, 2009, Order) (Sabraw, J.)
Thursday, September 10, 2009
Controlling Access to Online Service is not Control of End Users Sufficient to Support Joint Infringement
McKesson Information Solutions LLC v. Epic Systems Corp.,
1-06-cv-02965 (GAND September 9, 2009, Order) (Camp, J.).
Wednesday, September 9, 2009
Delay Seeking Certificate of Correction May Support Laches Defense
Advanced Technology Incubator, Inc. v. Sharp Corporation et al., 2-07-cv-00468
(TXED September 4, 2009, Report & Recommendations) (Bryant, M.J.)
Tuesday, September 8, 2009
TiVo Awarded $200 Million in Additional Damages and Sanctions for Violation of Permanent Injunction
TiVo Inc. v. Echostar Communications Corp., et al., 2-04-cv-00001
(TXED September 4, 2009, Order) (Folsom, J.)
Friday, September 4, 2009
For Manufacturing Process Claim, Calculating Reasonable Royalty Based on Price of Assembled Computers Was Not Improper
Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED September 2, 2009, Order) (Everingham, M.J.)
Thursday, September 3, 2009
Claim Requiring "Codes" is not Entitled to a Scope of Equivalents Covering a Single "Code"
Sony Electronics Inc, et al v. Guardian Media Tech, 3-05-cv-01777
(CASD August 31, 2009, Order) (Gonzalez, J.)
Wednesday, September 2, 2009
Inventor's Email to Google Co-Founder and President did not Warrant Deposition Prior to Completion of Other Discovery
PA Advisors, LLC v. Google Inc. et al., 2-07-cv-00480
(TXED August 28, 2009, Order) (Folsom, J.)
Tuesday, September 1, 2009
Two Motions to Transfer Venue From EDTX -- 1 Granted, 1 Denied
Abstrax, Inc. v. Sun Microsystems, Inc., 2-07-cv-00333
(TXED August 28, 2009, Memorandum Opinion & Order) (Everingham, M.J.)
First-to-file rule did not apply because the overlap between the instant case and the earlier filed case were not substantial. "Any two cases involving some of the same parties or similar areas of law have the potential for some overlap. The focus of the first-to-file rule is on whether this overlap is substantial.' . . . The Magistrate Judge carefully explained why the overlap between these two cases is insubstantial, and the Court sees no reason to depart from that explanation."
Document Generation Corp. v. Allscripts, LLC et al., 6-08-cv-00479
(TXED August 27, 2009, Memorandum Opinion & Order) (Davis, J.)
Monday, August 31, 2009
Bifurcation Ruling Highlights Divergent Approaches to Patent Case Management
StreamServe AB v. Exstream Software LLC et al., 1-08-cv-00343 (DED August 26, 2009).Bifurcation is appropriate, if not necessary, in all but exceptional patent cases . . . . [I]n my experience, discovery disputes related to document production on damages and the Daubert motion practice related to damages experts are a drain on scarce judicial resources. . . . I have concluded that bifurcation promotes the just and efficient resolution of what damages, if any, should be awarded by: (1) giving the parties -- those with the most expertise in the market -- the first opportunity to translate [the] decision on liability into practical commercial consequences; or (if the parties cannot resolve the matter) (2) giving the damages jury a focused dispute to resolve.
That same day, Judge Robinson issued an order in Robert Bosch LLC v. Pylon Manufacturing Corp., 1-08-cv-00542 (DED August 26, 2009) again granting bifurcation of liability and damages, but this time clarifying that she includes willfulness as part of the damages analysis: “[U]ltimately, a finding of willfulness is of no moment unless and until the district court, in its sole discretion, chooses to increase damages by reason of the finding; willfulness is a damages issue, not a liability issue."
Judge Robinson’s approach represents one end of a widely-divergent spectrum. The other extreme is expressed in Judge Kenneth A. Marra’s ruling in Baratta v. Homeland Housewares LLC, 0-05-cv-60187 (FLSD October 27, 2008) where he stated:
Nationwide, there does not seem to be a clear trend. In the past 12 months, district courts in the United States have issued substantive rulings on 19 motions to bifurcate liability from damages in patent cases. 11 were granted and 8 were denied.The Court finds that this is not an exceptional case that warrants bifurcation of liability and damages. Defendants point out the complexity of a patent case, which requires the Court to hold a Markman hearing, construe the claims of the patent-in-suit, and assess the validity of the patent in view of the prior art. These are the usual hurdles a court faces in most patent infringement actions and do not necessitate bifurcation. “In all cases, including patent cases, bifurcation is the exception, not the rule.”
What is clear, however, is that district judges tend to have a preference based on past experience and they rarely deviate from that preference. This is suggested by the rulings discussed above and reflected even more clearly in court records. Since January 1, 2008, district courts in the United States have issued substantive rulings on 57 contested motions to bifurcate in patent cases -- 39 were granted, 18 were denied (this includes all motions to bifurcate, not just motions addressing liability and damages). During that same time period, 5 judges ruled on multiple motions to bifurcate. Considered on a judge-by-judge basis, the results are amazingly consistent:
As shown above, only Judge Jones deviated from his own track record. However, the circumstances and basis for the motions in each case were significantly different from each other. Compare IGT v. Alliance Gaming Corp., et al., 2-04-cv-01676 (NVD May 29, 2008) (denying motion to bifurcate antitrust claims from patent claims brought on the “eve” of trial) with Japan Cash Machine Co., LTD v. MEI, Inc., 2-05-cv-01433 (NVD November 20, 2008) (granting motion to bifurcate inequitable conduct from infringement). Stated differently, 83% of the decisions on motions to bifurcate have been consistent with a judge’s other bifurcation rulings.
"Promoting Off-Label Use" Does Not Support Unclean Hands Defense, But May be Considered in Determining Injunctive Relief
Pfizer Inc., et al. v. Zenith Laboratories, et al., 2-01-cv-00193
(NJD August 27, 2009, Opinion) (Hochberg, J.)
Friday, August 28, 2009
Judge Robinson: "Bifurcation is Appropriate, If Not Necessary, in All But Exceptional Patent Cases"
StreamServe AB v. Exstream Software LLC et al., 1-08-cv-00343
(DED August 26, 2009, Memorandum & Order) (Robinson, J.)
This ruling, with a free link to the actual signed order, was reported in today's Docket Report. If you are a patent litigation practitioner, you can request a free 2-week trial of the Docket Report by sending an email to trial@docketnavigator.com.
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Thursday, August 27, 2009
Apple Succeeds in Motion to Transfer Patent Case From the Eastern District of Texas to the Northern District of California
Affinity Labs of Texas, LLC v. Apple, Inc., 9-09-cv-00047
(TXED August 25, 2009, Order) (Clark, J.)
This ruling, with a free link to the actual signed order, was reported in today's Docket Report. If you are a patent litigation practitioner, you can request a free 2-week trial of the Docket Report by sending an email to trial@docketnavigator.com.
To learn more about the Docket Report, visit https://www.docketnavigator.com/everyday.
Wednesday, August 26, 2009
Failure to Disclose Prior Art Previously Cited in a Parent Application is not Inequitable Conduct
E-Bay, Inc. v. IDT Corp et al., 4-08-cv-04015
(ARWD August 24, 2009, Order) (Barnes, J.)
Tuesday, August 25, 2009
Licensee Lacked Standing to Sue Where Patent Owner Retained Rights to "Non-Commercial, Educational Use" of the Patent
Resonant Sensors Inc. v. SRU Biosystems Inc., 3-08-cv-01978
(TXND August 14, 2009, Memorandum Opinion & Order) (Lynn, J.)
Monday, August 24, 2009
Evidence That Defendant Encouraged Infringing Use is Insufficient to Show Direct Infringement by Customers
SRI International v. Internet Security, et al., 1-04-cv-01199
(DED August 20, 2009, Memorandum Opinion) (Robinson, J.)
Friday, August 21, 2009
Thesis Advisor for Inventor's Research was not a Co-Inventor
Juniper Networks Inc. v. Bahattab, 1-07-cv-01771
(DCD August 14, 2009, Report & Recommendation) (Kay, M.J.)
Thursday, August 20, 2009
Merck Wins Battle With Teva Over Singulair® Patent
Merck Sharp & Dohme Pharm. SRL v. Teva Pharm. USA, Inc. et al., 3-07-cv-01596
(NJD August 19, 2009, Findings of Fact & Conclusions of Law) (Brown, J.)
Wednesday, August 19, 2009
Plaintiff's Late Disclosure of Infringement Contentions Bars Claims Against Xbox 360 Wireless Controllers
Hochstein et al v. Microsoft Corporation et al., 2-04-cv-73071
(MIED August 17, 2009, Opinion & Order) (Borman, J.)
Tuesday, August 18, 2009
Court Denies Dorsey & Whitney's Motion to Withdraw, Finding No Conflict From Concurrent Representation of Plaintiff and Non-Party Manufacturers
Motion by Dorsey & Whitney LLP to withdraw as counsel for plaintiff was denied and the court found no conflict warranting such withdrawal under the Washington Rules of Professional Conduct. "Dorsey represents a patent holder claiming that a cellular telephone service provider is infringing one or more of its patents. Dorsey also provides unrelated legal services to a manufacturer of cellular telephones that has an exclusive service arrangement with the provider being sued in this matter. . . . The Court is not persuaded that Dorsey has a concurrent conflict of interest. . . . Even if Dorsey might have good cause for withdrawal, the Court may and does order Dorsey to continue representing plaintiff. . . . This case will be considerably delayed if Dorsey is permitted to withdraw and new counsel is required to make up the ground already covered. Moreover, given the potential impact of this litigation on a large number of cellular telephone manufacturers, plaintiff would likely face significant challenges in retaining substitute attorneys who are free from conflict and experienced in patent litigation. The Court therefore concludes that the administration of justice would be best served by Dorsey remaining plaintiff’s counsel of record."
Airbiquity Inc. v. AT&T Inc. et al., 2-08-cv-00094
(WAWD August 14, 2009, Order) (Zilly, J.)
Monday, August 17, 2009
Single Box of Block Diagram Did Not Describe an Algorithm Sufficient to Support Means-Plus-Function Claim Limitation
Ronald A Katz Technology Licensing L P v. Time Warner Cable Inc., 2-07-cv-02134
(CACD August 13, 2009, Order) (Klausner, J.)
Friday, August 14, 2009
Narrowing Amendment Specifying DNA From Specific Viral Strains Precluded Application of Doctrine of Equivalents to Encompass Other DNA
Defendant's claim of infringement under the doctrine of equivalents was barred by prosecution history estoppel. On the question of whether the subject matter surrendered by the narrowing amendment encompassed the alleged equivalent, the court explained: "[T]he territory between vectors comprising isolated DNA molecules comprising sequences selected from ORFs 1-13 of any organism and vectors comprising isolated DNA molecules comprising sequences selected from ORFs 1-13 of the five viral strains identified in the [patent-in-suit] includes [plaintiff's] PCV WT2/1 isolate. . . . [Plaintiff's] vaccine is not a vector that comprises a sequence selected from ORFs 1-13 of the five viral strains identified in the [patent-in-suit]. Therefore, the Court determines that [defendant] surrendered the territory encompassing [plaintiff's] isolate and that the presumption of prosecution history estoppel applies."
Intervet, Inc. v. Merial Ltd. et al., 1-06-cv-00658
(DCD August 12, 2009, Memorandum Opinion)(Kennedy, J.)
Thursday, August 13, 2009
Jury Argument Equating Non-Practicing Patent Owner to "Banker Seeking a Bailout" Supports Award of Enhanced Damages
i4i Limited Partnership v. Microsoft Corp., 6-07-cv-00113
(TXED August 11, 2009, Memorandum Opinion & Order) (Davis, J.)
Wednesday, August 12, 2009
"Logical Inconsistency" of Claim Limitations Invalidates Digital Messaging Patent Claim
Michael S. Sutton Ltd. v. Nokia Corp. et al., 6-07-cv-00203
(TXED August 10, 2009, Memorandum Opinion & Order) (Davis, J.)