Two Motions To Transfer Venue From EDTX -- 1 Granted, 1 Denied

Defendants' motion to transfer venue for convenience was denied due to the existence of a related case even though all but one of the other private and public interest factors were neutral or weighed in favor of transfer. "The Federal Circuit has found that, in patent cases, the 'consideration of the interest of justice, which includes judicial economy, may be determinative to a particular transfer motion, even if the convenience of the parties and witnesses might call for a different result.' . . . Plaintiffs have pending in this courthouse a related lawsuit against [another company] asserting the [same patent-in-suit]. The two cases involve the same claim construction issues and transferring the case will only consume unnecessarily additional judicial resources. The court finds that the interests of justice weigh heavily against transfer."

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.)

Question of Whether Patent Assignment Applies to CIP Certified for Interlocutory Appeal

The court certified for interlocutory appeal its denial of defendants' motion to dismiss for lack of subject matter jurisdiction. "Defendants convincingly argue that reasonable grounds exist for a difference of opinion. Although courts have found variously worded assignments to include CIPs, Defendants are correct that there is no binding precedent holding that an assignment with the exact terms cited [all "rights, title and interest" in "the inventions covered thereby and any division, reissues, continuations and extensions thereof"] includes CIPs."

Gerber Scientific Intl. Inc v. Satisloh AG et al.,
3-07-cv-01382 (CTD September 25, 2009, Amended Order) (Dorsey, J.)

Novo Nordisk Ordered to Correct Overly Broad Orange Book Use Code

Defendant was entitled to a mandatory injunction requiring plaintiff to change the Orange Book use code for the patent-in-suit. "[Defendant's] ANDA covers repaglinide. [Plaintiff's] patent which is the subject of this patent action does not cover repaglinide; it covers repaglinide only in combination with metformin. The U-968 use code narrative for the [patent-in-suit] states 'a method for improving glycemic control in adults with type 2 diabetes mellitus.' It is so broad as to incorrectly suggest that the [patent-in-suit] generically covers three (3) different FDA-approved methods of use of repaglinide . . . Because the FDA does not review use code narratives . . . it has required [defendant] as part of its ANDA to 'submit an updated patent certification addressing the [patent-in-suit] and its associated Use Code 968.' . . . [Defendant] has therefore been seriously disadvantaged by the improper U-968 use code narrative. . . . [Plaintiff], by the change in the use code narrative is attempting to extend the life of an expired patent."

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

The court granted plaintiff's motion for a new trial where, after the close of plaintiff's case at trial, the court modified its previous claim construction based on evidence presented during trial. "Since this construction came after Plaintiffs had presented their evidence, Plaintiffs were left in the position of having presented expert witness testimony and graphics that were not supported by the Court’s eventual construction. . . . [A]fter a review of the evidence and the trial transcript, the Court finds that the number and significance of the claim terms undefined, defined after key testimony, and that were poorly defined allowed prejudicial error to creep into the trial process such that substantial justice was not done."

Avago Tech. General IP PTE Ltd. et al. v. Elan Microelectronics Corp. et al.,
5-04-cv-05385 (CAND September 23, 2009) (Ware, J.)

Grouping Accused Products, Alleging Compliance With Industry Standard Prove Fatal to Infringement Claims

In granting defendant's motion for summary judgment of noninfringement, the court rejected plaintiff's "shortcuts" of grouping accused products and asserting that compliance with an industry standard constitutes infringement. "When plaintiffs filed this patent infringement suit alleging that three separate patents had been infringed by more than 260 products they had to know it would not be simple or easy to prove that each of the accused products infringed every element of each claim of each asserted patent. Their efforts to take shortcuts by alleging 'compliance with industry standards' and grouping accused products have failed. Merely asserting that products comply with an industry standard that runs more than 1000 pages is not proof that the products practice specific sections of the standard. Grouping does not work when the only evidence supporting such grouping is merely that 'in general, different versions of a product are part of the same family and have the same basic functionality.' Slight variations in product functionality may be the difference between infringement and non-infringement by that product . . . Saying that products have the same 'basic' functionality is not enough to justify grouping without evidence that the relevant features are identical."

Fujitsu Limited et al v. Netgear, Inc.,
3-07-cv-00710 (WIWD September 18, 2009, Order)
(Crabb, J.)

Report & Recommendation: Apple's iPhone Does Not Infringe Caller ID Patent

The magistrate judge recommended granting Apple's motion for summary judgment that the iPhone does not infringe a patent claiming a system for "displaying the incoming telephone number and the name of the party." With respect to function, "[w]hile the iPhone includes a mechanism for displaying the incoming telephone number alone, it lacks a mechanism for displaying the incoming telephone number along [with] the information contained in the name field of the Address Book." Further, "the telephone number that appears on the iPhone’s display device is not the 'incoming' telephone number . . . [but] the custom label that was created before any incoming call occurs." With respect to structure "while the microprocessor of the [patent-in-suit] is programmed to operate in two alternative modes and to always display the incoming telephone number, the algorithm of the iPhone’s display device operates in three alternative modes and only sometimes displays the incoming telephone number. Given these substantial differences, no reasonable jury could find literal infringement."

Figa v. Apple Inc., 1-08-cv-10304
(MAD September 21, 2009, Report & Recommendation)
(Dein, M.J.)

Research Funding Agreement Granting "Unrestricted Rights" to "Results of Research" Did Not Convey License to Resulting Patent

Research funding agreements granting Intel "unrestricted rights at no cost to the results of [the funded] research" was vague with respect to the patent rights conferred to Intel, requiring consideration of extrinsic evidence to interpret the agreement. Considering such evidence, the court granted plaintiff's motion for summary judgment on Intel's express license defense, concluding: "All the parties’ dealings both before and after the [research funding agreements] indicate that the parties never intended that the agreements provide defendant an express license in intellectual property developed during the research period funded. No reasonable jury could find otherwise."

Wisconsin Alumni Research Foundation v. Intel Corp.,
3-08-cv-00078 (WIWD September 17, 2009, Order) (Crabb, J.)

Use of Web Browser to Display Accused Thumbnail Images Did Not Implicate Divided Infringement

The court denied defendants' motion for summary judgment of noninfringement on a divided infringement theory. The court rejected defendants' argument that the accused software did not infringe a patent claiming a system and method for providing a preview thumbnail image of a web page because "[defendants] do not supply the web browser required to display the thumbnail visual images, nor do they direct the actions of the users." "The [accused] software's utilization of a (separately installed) web browser does not implicate action by an additional party within the meaning of [BMC resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1380-81 (Fed. Cir. 2007] or [Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008)]."

Girafa.com Inc. v. Amazon Web Services LLC et al.,
1-07-cv-00787 (DED September 15, 2009, Memorandum Opinion) (Robinson, J.)

Abandonment Does Not Invalidate Patent, But May Render It Unenforceable

The magistrate judge recommended granting plaintiff's motion for summary judgment as to defendant's invalidity defense to the extent it was based on a theory of abandonment, i.e., that plaintiff's predecessor intentionally abandoned the patent-in-suit to avoid paying maintenance fees and later obtained reinstatement from the PTO. Under Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657, 661 (Fed. Cir. 2008), revival of an abandoned patent is not a "condition for patentability" within the meaning of § 282, so such a theory could not render the patent invalid. However, defendant's abandonment theory could support an inequitable conduct defense if "the patentee falsely represented to the PTO that the failure to pay maintenance fees was unintentional and thereby wrongly induced the PTO to revive the [patent-in-suit]"

Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED September 15, 2009, Report & Recommendations) (Everingham, M.J.)

EDTX Addresses Transfer of Venue in Multi-Defendant Case -- Motion Granted as to California Defendants, Denied as to Texas Defendants

The court granted defendants' motion to transfer venue for convenience as to the moving defendants. "[Plaintiff's] website identifies its headquarters and only 'location' as San Francisco. . . . The NDCA is also where a majority of the original defendants’ operations are centered. . . . [Plaintiff] has failed to show a sufficient connection to this district to override the conveniences gained by transferring the case to the NDCA. . . . As to the Texas Defendants, added by [plaintiff] after the Federal Circuit’s TS Tech decision, the Court finds transfer would be extremely inconvenient and unfair. These Defendants were apparently added to the lawsuit for the purpose of maintaining venue in this district. . . . It is clear that these Defendants are not 'so involved in the controversy' as to require the same issues to be litigated in two places."

Balthaser Online, Inc. v. Network Solutions LLC et al.,
2-08-cv-00430 (TXED September 15, 2009, Order) (Folsom, J.)

Unitemized Invoice Sinks Claim for $419,000 in Costs

The court reduced the costs awarded to defendant by $419,105 for visual aids. "[B]ecause the invoices are not itemized, there is no record of which visual aids correspond to each invoice. . . . It is not possible for the Court to evaluate how much [defendant] spent on trial exhibits, how much it spent on other visual aids, and whether these amounts were reasonable. . . . The Court does not doubt that litigants may legitimately incur high costs producing necessary visual aids in a patent trial such as this, which required counsel to explain complex medical devices to the jury and the Court. The Court cannot award the requested costs here, however, because [defendant] has failed to provide the Court with sufficient information to evaluate the reasonableness of [defendant's] expenditures."

Boston Scientific Corporation et al. v. Johnson & Johnson et al.,
3-02-cv-00790 (CAND September 14, 2009, Order) (Illston, J.).

Obligation to Disclose Best Mode Does Not Include Superior Configuration for Particular Application

Defendant was entitled to summary judgment on plaintiff's best mode defense based on the testimony that, in one particular application of the patented invention, defendant "discovered a particular rail spacing superior to all others." "The prototype [plaintiff] refers to was developed to satisfy the customer’s unique needs. The customer needed to process a substantially larger volume of solids than [defendant] had heretofore encountered. [Defendant] was uncertain if its equipment would work under those conditions. This suggests, not that [defendant] discovered a single, optimal rail spacing, but that the optimal configuration may depend on several factors, including the type of equipment being washed and the quantity and nature of the soil on the equipment. . . . The evidence does not demonstrate that [defendant] knew of a particular best mode for practicing its invention in general."

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?

Party Producing Privilege Log Not Required to Translate Entries Written in Foreign Language

Defendants' motion for sanctions and to compel plaintiff to translate the contents of privilege log entries written in Japanese were denied. "Simply put, nothing in the rule’s plain language suggests, and no court has ever intimated, that Rule 26(b)(5) requires a party producing a privilege log to translate entries written in a foreign language. Consequently, [defendants'] motion must be denied."

Fujitsu Network Communications Inc. et al. v. Tellabs, Inc. et al., 1-09-cv-04530
(ILND September 10, 2009, Order) (Bucklo, J. )

Withholding Documents Concerning Plaintiff's Standing Warrants $335,000 Sanction

Following the court's dismissal of plaintiff's claims on the basis of lack of standing, the court awarded defendant $335,000 in fees and costs incurred litigating the standing issue as a sanction for withholding documents relevant to that issue. "Plaintiffs repeatedly withheld documents from Defendant and the Court without sufficient explanation, and all of the withheld documents were relevant to Plaintiffs’ standing in this case. . . . The repetitive nature of Plaintiffs’ conduct, combined with the documents’ direct relevance to the standing issue, warrants a finding of willfulness. Plaintiffs’ conduct also delayed Defendant’s investigation into Plaintiffs’ standing and the overall progress of this case, which warrants a finding of bad faith."

Carl Zeiss Vision International GmbH et al v. Signet Armorlite Inc., 3-07-cv-00894
(CASD September 9, 2009, Order) (Sabraw, J.)

Controlling Access to Online Service is not Control of End Users Sufficient to Support Joint Infringement

The court granted defendant's motion for summary judgment of noninfringement of its "health-care information software product," because neither defendant's customers (health care providers) nor the end users (patients) performed all steps of the asserted method claim and plaintiff's evidence of the following activities was insufficient to demonstrate the direction and control necessary to establish joint infringement: (i) "use [of] login information to restrict patients’ access," (ii) "requir[ing] that patients agree to certain terms and conditions in order to use the system," (iii) "determin[ing] the user’s level of access," (iv) "requir[ing] that the patient accept 'cookies' in order to use [the accused software]," and (v) limiting information "patients can . . . access [to] information provided by the provider or that the provider wants them to see." Such evidence "shows only that . . . providers control the users’ access" to the accused software, not control of the patients themselves.

McKesson Information Solutions LLC v. Epic Systems Corp.,
1-06-cv-02965 (GAND September 9, 2009, Order) (Camp, J.).

Delay Seeking Certificate of Correction May Support Laches Defense

The magistrate judge recommended denying plaintiff's motion for summary judgment as to defendant's laches defense, finding fact issues with respect to both the reasonableness of delay (both in filing the lawsuit and correcting the asserted patent) and prejudice to defendants. "From approximately October of 2006 until [January 2008], Defendants relied upon the fact that uncorrected Claim 26 of the [patent-in-suit] was ambiguous and indefinite. During this time period, viewing the facts in a light most favorable to Defendants, Defendants detrimentally relied upon this uncorrected Claim 26 by beginning sales in the United States of the accused . . . televisions."

Advanced Technology Incubator, Inc. v. Sharp Corporation et al., 2-07-cv-00468
(TXED September 4, 2009, Report & Recommendations) (Bryant, M.J.)

TiVo Awarded $200 Million in Additional Damages and Sanctions for Violation of Permanent Injunction

Following an earlier finding that defendant violated the court's injunction by selling products that were not colorably different from products found to infringe, the court awarded contempt sanctions. The court rejected (i) plaintiff's argument that disgorgement of profits or trebling the jury's royalty rate was an appropriate measure of sanctions, and (ii) defendant's arguments that no sanctions were warranted, that sanctions should be calculated using the royalty rate awarded by the jury, or that a 20% rate increase should apply. "The harm suffered by [plaintiff] . . . is slightly offset by patent policy, which favors and promotes attempts to design around valid patents. . . . [T]he Court finds that a $1 increase—in effect, an 80% increase of the jury award—would yield an effective sanction. A $2.25 rate per month would represent a nearly 40% royalty on the $5.98 per month fee that [defendant] currently charges its customers. Although [defendant's] financial resources are considerable, a 40% royalty is substantial and cannot be easily overlooked. It will be difficult for [defendant] to pass this $1 rate increase onto its consumers without charging more for DVR service than its main competitors." The court awarded plaintiffs approximately $110 million in damages for the additional infringement, $90 million in sanctions, plus an award of attorneys' fees.

TiVo Inc. v. Echostar Communications Corp., et al., 2-04-cv-00001
(TXED September 4, 2009, Order) (Folsom, J.)

For Manufacturing Process Claim, Calculating Reasonable Royalty Based on Price of Assembled Computers Was Not Improper

Defendant's motion to exclude expert testimony concerning damages was denied. Calculating "a reasonable royalty based upon the total sales prices of the computers and other configurable products manufactured by [defendant] by assembly processes allegedly embodying the patented method" did not implicate the entire market value rule. "[The expert's] calculation of a reasonable royalty does not consider a combination of patented and nonpatented methods or apparatuses in order to develop the royalty base—[the expert's] analysis considers solely the products produced by a patented method. . . . If [plaintiff] is able to show that the patented method is used by [defendant] to assemble its computers to the extent described in [plaintiff's] opposition brief, then a connection between the infringement and the claimed royalty base would be established. Moreover, it is noteworthy that the patentee licensed its technology using a similar methodology."

Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED September 2, 2009, Order) (Everingham, M.J.)

Claim Requiring "Codes" is not Entitled to a Scope of Equivalents Covering a Single "Code"

"[T]he term 'codes' is not entitled to a scope of equivalents covering 'code' . . . it would defy logic to make a distinction between 'code' and 'codes' during claim construction, then find 'codes' meant 'code' under the doctrine of equivalents."

Sony Electronics Inc, et al v. Guardian Media Tech, 3-05-cv-01777
(CASD August 31, 2009, Order) (Gonzalez, J.)

Inventor's Email to Google Co-Founder and President did not Warrant Deposition Prior to Completion of Other Discovery

Motion for protective order to preclude plaintiff's deposition of Google co-founder and president was granted, as modified. A single email from the inventor of the patent-in-suit to Google's president was not sufficient to warrant a deposition in light of (i) testimony that neither the inventor of the patent-in-suit nor Google's president had any recollection of the events, and (ii) the disruption such a deposition would cause to Google's operations. Plaintiff was permitted to depose a 30(b)(6) witness concerning the email and Google's procedures for handling emails of that sort and the court would resolve any irreconcilable discovery disputes at that time.

PA Advisors, LLC v. Google Inc. et al., 2-07-cv-00480
(TXED August 28, 2009, Order) (Folsom, J.)

Two Motions to Transfer Venue From EDTX -- 1 Granted, 1 Denied

Defendant's renewed motion to transfer venue for convenience was granted. "Much like in [In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009)], there are a substantial number of material witnesses who reside in the transferee venue and none who reside in the Eastern District of Texas."

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.)