Litigation Over Ownership of Patent Bars Later Infringement Claims as to Related Patent

Defendant's motion to dismiss on the basis of claim preclusion was granted where, in an earlier litigation concerning ownership of a related patent and misappropriation of trade secrets, plaintiff was awarded damages and defendant was awarded the related patent. "[A]ll of the facts relevant to [plaintiff's] patent infringement claim were known [11 years ago] when [defendant] initiated the declaratory judgment action that ultimately led to [plaintiff's] recovery on its trade secret misappropriation and fraud claims. Prior to [that earlier] litigation, [plaintiff] obtained an [accused product] with which it could have done an infringement analysis against the [patent-in-suit]. Therefore, [plaintiff] could have brought its patent infringement claim then."

SLR Partners, LLC et al. v. B. Braun Medical Inc., 3-09-cv-01145
(CASD October 26, 2009, Order) (Miller, J.)

Counsel Asserting and Later Withdrawing Privilege Objections Ordered to Pay Costs of Additional Deposition

The court ordered plaintiff's counsel to pay defendant for all costs associated with taking another deposition of a witness. "[The witness'] deposition is ninety-seven pages long. [Plaintiff] asserted privilege and/or work product ninety-seven times. Ninety-five of these assertions have now been waived. [Plaintiff's] conduct is unacceptable."

Davis-Lynch Inc v. Weatherford Int'l Inc., 6-07-cv-00559
(TXED October 26, 2009, Order) (Love, M.J.)

Witness Excused for Medical Condition, Barred From Further Testimony

Defendant's motion to have its witness excused from deposition and trial because of a medical condition was granted. "However, because it is not clear from the [letter from the witness' physician] how the diagnosed condition is affecting [the witness'] daily life, sanctions will be imposed against [defendant] in this case if [the witness] provides any testimony (through a declaration, a deposition or at trial) in any other case involving the patents at bar." The court stated it would "consider sanctions ranging in severity from the imposition of an adverse inference to the imposition of the costs of a new trial to the imposition of an adverse judgment."

Genetics Institute LLC v. Novartis Vaccines and Diagnostics Inc., 1-08-cv-00290
(DED October 23, 2009, Order) (Robinson, J.)

EDTX Meet & Confer Rule for Discovery Motions Requires Participation by "Lead Counsel"

Defendants' motion to compel the production of patent prosecution files from plaintiff's outside attorneys was denied without prejudice because lead counsel did not participate in the "personal conference" required by the court's local rule. "Pursuant to Local Rule CV-7(h), prior to seeking court intervention, lead counsel for the movant must have a personal conference with the lead counsel for the non-movant. . . . [I]n the Certificate of Conference, Defendants identified [an attorney] as 'lead counsel for the Defendants,' when [a different attorney] is listed on the Court’s docket as Defendants’ lead attorney. [The third party] accurately points out that this is in violation of the certification components set forth in Rule CV-7(i) that requires all elements of Rule 7(h) to be met, as well as the stipulation that in discovery-related motions, the Certificate of Conference must be signed by lead counsel. The Court sees no reason that the 'lead counsel' signing a Certificate of Conference should not be the same attorney that is designated as lead counsel on the Court’s docket sheet. . . . [B]oth parties are reminded that 'unavailability' is no excuse for lead and local counsel’s failure to participate in discovery."

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.)

Expert's Failure to "Originate, Author or Understand" His Own Written Opinions Did Not Warrant Exclusion of Testimony

The court denied plaintiff's motion to exclude the reports and testimony of defendant's technical expert on the grounds that the expert "did not originate, author or understand several of his opinions." "[Plaintiff] cites excerpts from [the expert's] deposition to show that 1) he could not recall exactly how many reports he had signed, 2) did not know which opinions that he had expressed in each of his reports, 3) could not identify the differences between the various reports, 4) did not know that a legal section was added to his third invalidity report, 5) did not understand the difference between 'obviousness' and 'anticipation' with respect to invalidity, 6) was generally unfamiliar with the [patent-in-suit], 7) has a personal relationship with the owners of [defendant's] predecessor, 8) took no part in collecting scales allegedly exhibiting prior art or determining which of those scales should be relied upon in his supplemental report and 9) in at least one instance, examined photographs of a scale and not the scale itself. . . . [A]lthough [the expert's] nervousness, confusion and difficulty answering legal questions may provide grounds to impeach his credibility, they are not grounds to strike him as an expert witness. . . . [The expert] . . . averred that he reached all of the opinions stated in his reports and reviewed all of his reports before signing them. In light of this, it would be up to the jury to decide whether and how much to trust [the expert's] admissible opinions."

Sunbeam Products, Inc. v. HoMedics, Inc., 3-08-cv-00376
(WIWD October 15, 2009, Order) (Crocker, M.J.)

Judge Sleet Imposes "Limit of 10 Disputed Terms Per Patent" Rule

The court struck the parties' join claim construction chart and ordered them to file an amended version. "The parties have submitted for construction 19 terms from [the patent-in-suit]. Although disinclined to do so in the past, the court -- regrettably -- will impose a limit of 10 disputed terms per patent for claim construction in this and all future patent actions."

Grape Technology Group Inc. et al. v. Jingle Networks Inc.,
1-08-cv-00408 (DED October 20, 2009, Order) (Sleet, J.).

Reported In today's Docket Report:

14 new patent cases

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

Plaintiff's motion for leave to amend its complaint to include a claim for inequitable conduct was denied even though the request was made shortly after plaintiff learned that one inventor submitted a false affidavit to the PTO. "[T]here is no allegation that the affiant at bar did not contribute to the invention, or that the application that matured into the [patent-in-suit] contains otherwise false representations. I certainly recognize that candor is the hallmark of the patent system and that false statements, about even ministerial acts, can have significance as to the survival of a patent in the review process. Nevertheless, I decline to allow an inequitable conduct claim to be pursued after the close of discovery when there are insufficient allegations of underlying facts from which I may reasonably infer that the material misrepresentation was made with a specific intent to deceive the PTO."

Robert Bosch LLC v. Pylon Manufacturing Corp., 1-08-cv-00542
(DED October 19, 2009, Memorandum Order) (Robinson, J.)

Is previously undisclosed prior art admissible at trial to show the state of the art? It depends on the court.

Plaintiffs' motion in limine to exclude defenses and prior art disclosed 31 days before trial was granted in part. "[Defendant argued] that the evidence disclosed in its §282 Notice is intended to show only the 'state of the art' and not prior art, which would exempt it from disclosure under Local Patent Rules 3.1 and 3.4. . . . I do not find this argument persuasive. It is not up to a party to decide if and/or when it would like to comply with the Local Patent Rules. If [defendant] intended to use publications/documents to establish the state of the prior art, then it was required to disclose them over two years ago."

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.)

Court Approves Fee Award Based on Hourly Rate 3 Times Local Average for IP Practitioners Due to National Scope of Patent Litigation and Experience

In granting defendant's motion for attorneys' fees, the court found that defense counsel's hourly rates of $175 to $764.75 were reasonable. "[Defendant's] use of primary counsel . . . even at rates which well exceeded that of local counsel or [the average hourly rate of $245 for intellectual property practitioners in the Southeastern region according to the AIPLA bi-yearly Economic Survey from 2007] was justified. The attorneys were clearly specialists in the field of intellectual property – which is, by its very nature, national and not necessarily regional in scope – and, specifically, infringement suits, the art of litigating such a suit, and the background issues of patent prosecution. Further, [defense counsel] were clearly intimately aware of the [accused] product . . . as well as the history of these two parties. . . . Simply stated, it makes sense to proceed with such counsel, even at a higher rate than one might pay for local counsel, in a suit such as this."

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

The court granted plaintiff's motion to preclude defendants from relying on an anticipatory prior art reference that was not disclosed until the last day of fact discovery and was buried in 1,500 pages of documents. "To the extent Defendants disclosed the [prior art reference] in a supplemental interrogatory response in advance of the discovery deadline, the disclosure was buried within roughly 1,500 pages of documents that were otherwise identified only by Bates numbers. Defendants cannot reasonably expect Plaintiffs to be on notice of a three page reference -- buried within roughly 1,500 pages of numerically identified documents -- that was neither called out by specific Bates number nor by name. Such identification, or lack thereof, does not qualify as adequate notice of Defendants invalidity contentions."

Laboratory Skin Care Inc. et al. v. Limited Brands Inc. et al.,
1-06-cv-00601 (DED October 14, 2009, Memorandum Opinion) (Farnan, J.)

Delay in Asserting Affirmative Defense and "Piratical" Settlement Demand Bar Recovery of Attorneys' Fees by Successful Defendant

In denying defendant's motion for attorneys' fees following plaintiff's voluntary dismissal of its patent claims, the court concluded that defendant's fees and expenses were incurred due to its delay in asserting an affirmative defense and its "almost piratical" demand "that plaintiff 'dismis[s] with prejudice all pending litigation' (including other cases) and pay defendant $1,200,000, an amount that is more than double defendant’s estimate of its fees and non-taxable costs now. . . . To the extent that defendant incurred what it now deems unnecessary costs and fees in this case, the blame lies with defendant’s strategy and tactics." "Athough [35 U.S.C. § 285] indicates that an award of fees is a rare event, this has not stopped prevailing parties in this district from seeking fees as a matter of course. But as a point of logic, if every patent lawsuit is exceptional, then none of them is."

Spacesaver Corp. v. The Marvel Group, Inc. et al., 3-08-cv-00354
(WIWD October 13, 2009, Order) (Crocker, M.J.)

Dearth of Qualified Experts Does Not Warrant Disclosure of CAD Files to Competitors' Consultant

Plaintiff's motion to allow disclosure of defendant's highly confidential CAD files to its expert was denied. "The court recognizes that most of the potential experts [plaintiff] contacted were not only reluctant to take a position in opposition to [defendant], but actually hoped to get work from [defendant]. Nevertheless, the extreme sensitivity of the [CAD] files raises heightened concerns of inadvertent disclosure to competitors that may not be protected adequately by the [protective order]. . . . [T]he court finds that the risk of inadvertent disclosure outweighs [plaintiff's] need to show the [CAD] files to [its expert] at this time. [Plaintiff's expert] acknowledges that he currently does consulting work for two [of defendant's] competitors, and he is likely to consult with other competitors in the future. . . ."

Saso Golf, Inc. v. Nike, Inc., 1-08-cv-01110
(ILND October 5, 2009, Memorandum Opinion & Order) (Nolan, J.)

Lobbying Efforts Not Privileged With Respect to Specific Patent

Defendant's motion for a protective order quashing the deposition of its attorney who was defendant's policy counsel/legislative strategist was granted in part. "Defendant’s lobbying activities are generally protected by the First Amendment . . . [and] Plaintiff has not shown adequate relevance, to the present case, of Defendant’s efforts to affect the future development of the applicable law. . . . [However] [g]iven that Defendant is publicly engaged in lobbying activities on the issue of patent reform, the court will allow Plaintiff to inquire into whether and to what extent Defendant’s lobbying efforts have specifically addressed the patent in suit."

PA Advisors, LLC v. Google Inc. et al., 2-07-cv-00480
(TXED October 8, 2009, Order) (Folsom, J.)

"Catch-All" Description of "Authors and Inventors of Prior Art" Does Not Satisfy FRCP 26 Obligation

The court granted plaintiff's motion to exclude the testimony of authors/inventors of prior art where defendant's FRCP 26 disclosures failed to identify the witnesses by name and instead identified them by the description "Authors and inventors of prior art references identified and produced in this Action." "[Defendant] argues that [plaintiff] had notice but does not explain why it failed to supplement. Allowing [the witnesses] would prejudice [plaintiff] in that they have not had the opportunity to depose either witness to learn the scope of their testimony. On the other hand, striking [the witnesses] does not strike the prior art reference; [defendant's] invalidity expert can still speak to the [prior art]. . . . Moreover, to rule that a catch-all phrase equals compliance with Rule 26 would shift the burden of identifying relevant witnesses to the other party. This would require parties to search through invalidity contentions, prior art, and prior art cited by prior art for potential witnesses. Such a result flies in the face of the spirit and purpose of the discovery rules."

Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED October 7, 2009, Order) (Folsom, J.)

Plaintiff Not Required to Limit 178 Asserted Claims

Defendant's motion to limit the number of asserted claims was denied. "[Plaintiff] is not required to limit the number of asserted claims against [defendant] from 178 claims to 10 claims at this time. The limitation would prejudice [plaintiff] because the case is currently in its early stage. However, as [plaintiff] states, it will eventually be forced to streamline its Markman presentation and case so that the important issues are considered by the Court."

i2 Technologies, Inc. et al. v. Oracle Corporation et al.,
6-09-cv-00194 (TXED October 6, 2009, Order) (Davis, J.)

Device Capable Of Infringing Use Is Not Exempt From Liability Because Such Use Is "Improper, Unknown, And Dangerous"

Accused device could be found to infringe even though the infringing use would be "improper, unknown, and dangerous," provided such use did not require any physical alteration of the accused device. "[Defendant] argues that the [accused device] does not infringe because there is no evidence that (1) it 'intended or anticipated' physicians to use the [accused device in an infringing manner]; (2) physicians actually operate the [accused device] this way; (3) promotional materials or instructions teach or reference [using the accused device in an infringing manner]; or (4) this method serves a functional purpose not already accomplished. . . .The [infringing method] does not require physical alteration of the [accused device]; it is an alternative method of using the device. Therefore, whether physicians or users of the [accused device] actually employ the [infringing method] is irrelevant."

Baran v. Medical Device Technologies, Inc., 1-04-cv-01251
(OHND September 30, 2009, Memorandum & Order) (O'Malley, J.)

Anti-Trust and Misuse Defenses Severed and Stayed Pending Resolution of Infringement Issues

The court granted plaintiffs' motion to bifurcate the infringement claims from defendant's antitrust and patent misuse claims, and to stay discovery on the antitrust and misuse claims. "With respect to conserving judicial economy, defendants' antitrust and patent misuse claims may be rendered moot by resolution of the patent infringement issues. . . . Even if plaintiffs do not succeed in proving infringement, the court could still determine that plaintiffs 'realistically expect[ed] success on the merits,' thus obviating the need to adjudicate time consuming and complex antitrust and patent misuse issues. . . . Further militating toward bifurcation of these issues if the dictinct lack of evidentiary overlap between issues of patent validity and infringement and issues of patent misuse and antitrust."

Eurand Inc. et al. v. Mylan Pharmaceuticals Inc. et al., 1-08-cv-00889
(DED October 2, 2009, Memorandum Order) (Robinson, J.)

Judge Ward Overturns Jury Verdict of Willfulness Based In Part on Closeness of Claim Construction

Following a jury verdict of willful infringement, the court granted defendants' motion for judgment as a matter of law of no willful infringement based in part on the closeness of claim construction which was not presented to the jury. "[T]he fact that certain facts were not presented to a jury, such as the close issue of claim construction, does not preclude the court to consider them. . . . In this case, the issue of claim construction was close and [defendants'] proposed interpretation for the claims, although eventually not adopted, was reasonable and based upon the specification and prosecution history of the . . . patent. Thus, the Court takes the close issues of claim construction into consideration in its determination of whether [defendants'] actions were 'objectively reckless.'"

Centocor, Inc. et al v. Abbott Laboratories, 2-07-cv-00139
(TXED October 1, 2009, Order) (Ward, J.)

Successful Defendant Ordered to Pay Attorneys' Fees and Costs Associated With Unsuccessful Invalidity Defense

Although the jury found in favor of defendant, the court awarded plaintiff its attorneys' fees as to defendant's unsuccessful claim of invalidity. "[Defendant's] actions in pursuing the counterclaim of invalidity long after it was shown not to be meritorious amounts to vexatious conduct. Defending against [defendant's] claims of invalidity was a considerable financial burden to [plaintiff] in terms of attorney time, firm resources, and out-of-pocket expense. [Defendant's] adamant denial that there was any misconduct in this case displays the same arrogance that has colored this case almost from its inception."

Kellogg v. Nike et al., 8-07-cv-00070
(NED September 30, 2009, Memorandum & Order) (Bataillon, J.)

Five New Orders on Transfer of Venue From EDTX -- Two Denied Where All Public and Private Interest Factors Favored Transfer or Were Neutral

Defendant's motion to transfer venue was denied even though all of the private and public interest factors favored transfer or were neutral. "While this case was pending, [defendant] filed a separate action against [plaintiff] in the Eastern District of Virginia. . . . By filing suit in [Virginia], [defendant] has demonstrated that it is not inconvenient to litigate the dispute across the country, away from its party witnesses and its sources of its proof. . . . The court does not fault [defendant] for its decision to sue in [Virginia] – the venue statute gives [defendant] a range of options. But the court views with some caution [defendant's] convenience arguments when the court examines the totality of the circumstances existing between these two parties. Under these facts, and despite the court’s findings on the public and private interest factors, [defendant] has not demonstrated good cause for a transfer."

GraphOn Corp. v. Juniper Networks, Inc., 2-07-cv-00373
(TXED September 29, 2009, Order) (Everingham, M.J.)