Friday, January 30, 2009

Business Method for Creating an Investment Instrument out of Real Property Fails Bilski's "Machine or Transformation" Test

Patent claiming "a business method for creating an investment instrument out of real property" that "ensures that the invented investment instrument was eligible for tax-deferred treatment under Section 1031 of the Internal Revenue Code" did not "transform any article to a different state or thing" as required under In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). "Like the claims at issue in Bilski, the claims of the [patent-in-suit] involve only the transformation or manipulation of legal obligations and relationships. Specifically, the claims of the [patent-in-suit] only transform or manipulate legal ownership interests in real estate. Under Bilski, the Court cannot find that those claims transform an article or thing."

Fort Properties Inc v. American Master Lease LLC, 8-07-cv-00365 (CACD January 22, 2009, Order)

Thursday, January 29, 2009

Determining Specific Portions of a Claimed Compound is not Conceiving the Compound

Plaintiff's request under 35 USC §256 to add three scientists to the patent in suit was denied. The scientists "contributed the 'starting materials' for a chemical compound," but "having in mind specific portions of a claimed compound is not the same as conceiving the compound with all of its components." The court did not state that the scientists "did not make contributions to [the] inventive process; only that, under the applicable law, these contributions fall more into the category of 'prosaic' contributions because they did not conceive the invention as claimed."

Vanderbilt University v. ICOS Corp., 1-05-cv-00506 (DED January 27, 2009, Opinion)

Wednesday, January 28, 2009

Promotion of Accused Product on Home Shopping Network Insufficient to Exercise Personal Jurisdiction

Defendant did not purposefully direct its activities at the forum state for purposes of personal jurisdiction. "Although the availability of the [accused product] for purchase on the HSN [Home Shopping Network] website could be a basis for personal jurisdiction, here HSN ran the website and all sales through it and [defendant] had no control." "Courts have consistently held . . . that there must be a 'sustained promotion campaign directed at' the forum state when a plaintiff seeks to establish personal jurisdiction based on a national promotion."

Pearson v. Mangano, 2-08-cv-02504 (TNWD January 26, 2009, Order).

Tuesday, January 27, 2009

For Infringement Under 35 U.S.C. § 271(f)(2), Components Must Be Especially Designed For The Patented Invention, Not Just The Accused Product

The court denied plaintiff's motion to compel defendant's worldwide sales data and rejected plaintiff's argument that such information was relevant under 35 U.S.C. § 271(f)(2) because the accused product, although manufactured outside the United States, incorporates components that are especially designed for the accused products and supplied from the United States. "Section 271(f)(2) applies only to a 'component of a patented invention that is especially made or especially adapted for use in the invention.' Just because the [components] at issue are part of the accused control panel, or even interact with the accused instrumentality that is alleged to be covered by the claims of the [patent-in-suit], these electronics do not become 'components of the invention' covered by the patent claims."

Paradox Security Systems, Ltd. v. ADT Security Services, Inc., 2-06-cv-00462 (TXED January 23, 2009, Order)

Monday, January 26, 2009

Page Limits Cannot be Avoided by Filing Multiple Motions

The court struck defendant's seven motions for summary judgment. "The filing of multiple dispositive motions at the same time, in an obvious attempt to evade the page limitations set forth in the Local Rules, will not be allowed, unless the party seeking to file such motions obtains prior permission from the Court. Such permission will not be granted unless the party convinces the Court that multiple motions are necessary."

3M Company v. Moldex-Metric, Inc., 0-03-cv-05292 (MND January 22, 2009, Order)

Friday, January 23, 2009

"Willful" Avoidance of Discovery Obligations Results in Trial Handicap

For failing to produce documents, asserting "numerous improper objections," improperly relying on Rule 33(d), and failing to meet and confer in good faith, one group of defendants was sanctioned with "the loss of one peremptory challenge" and a reduction in "time for voir dire, opening statements, and closing argument by one-half of the amount allotted to the [other group of] defendants." "This conduct was committed willfully and in an effort to avoid discovery obligations. . . . As this is the first sanction imposed in this case, the undersigned warns the [sanctioned] defendants that future discovery abuses will result in more severe sanctions."

LaserDynamics, Inc. v. Asus Computer International, 2-06-cv-00348 (TXED January 21, 2009, Memorandum Opinion & Order).

Thursday, January 22, 2009

Process of Instructing Patients on Administration of Drug Unpatentable Under In re Bilski

Where an independent claim had been found invalid, a dependent claim which added the step of "informing the patient that administration of metaxalone with food results in an increase in Cmax and AUC(last) of metaxalone compared to administration without food" was unpatentable under In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), because "the act of informing another person of the food effect of metaxalone does not transform the metaxalone into a different state or thing."

King Pharmaceuticals, Inc. v. EON Labs, Inc., 1-04-cv-05540 (January 20, 2009, Memorandum & Order)

Wednesday, January 21, 2009

In Assessing Motion to Stay, Extensive Motion Practice does not Equal Progress

"The Court agrees with [plaintiff] that extensive motion practice . . . should be assessed in connection with the motion to stay. However, the Court concurs with the Accused Parties that same motion practice is not automatically equated with progress in the litigation, and in this case, does not negate the fact that there have been no depositions, no documents exchanged, and, according to the Accused Parties, 'virtually no discovery other than discovery that the accused parties had to engage in related to the prior art.' "

Yodlee, Inc. v. Ablaise Ltd., 4-06-cv-07222 (CAND January 16, 2009, Order)

Tuesday, January 20, 2009

Overreaching on Motion for Costs Yields a Goose Egg, with Prejudice

"Defendant’s pending motion for fees and expenses is so grossly overreaching that it will be denied in full and defendant will not be allowed a further opportunity to re-file a less greedy motion. Had defendant requested a number in the $30,000 to $40,000 range, it might have been allowed but defendant has gone beyond the pale and requested ten times that amount. The Court is thoroughly familiar with the case. It has a good sense of the actual degree of prejudice flowing from the short continuance and the actual degree of incremental burden reasonably incurred. The Court is most disappointed that defense counsel would overreach in this manner. . . . The motion is denied in full and with prejudice to re-filing."

Geo M. Martin Co. v. Alliance Machine Systems International, LLC, 3-07-cv-00692 (CAND January 15, 2009, Order)

Friday, January 16, 2009

"Squared corners" is not equivalent to "semi-circular"

Pillow with "squared corners at the top of the crown" did not infringe a claim requiring a "semi-circular crown" under the doctrine of equivalents. "[The patentee's] assertion that the top of the crown is functionally irrelevant implies that not only square corners, but any-shaped corner or top of the crown would be equivalent to the 'semi-circular crown' limitation. . . . As in Tronzo [v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998)], such a result would read the 'semi-circular crown' limitation out of the claim.", Inc. v. Leachco, Inc., 3-07-cv-01600 (PAMD January 12, 2009, Memorandum & Order).

Thursday, January 15, 2009

Court stays earlier injunction requiring destruction of microchips

The court granted a partial stay of an injunction regarding the destruction of defendant's product where "[o]n reflection, the Court questions the wisdom and legal authority for the destruction order" and "destruction may be punitive and beyond the scope of civil contempt."

Broadcom Corp. v. Qualcomm Inc., 8-05-cv-00467 (CACD January 9, 2009, Minutes).

Wednesday, January 14, 2009

No amendment of infringement contentions to add new products given proximity of Markman hearing and lack of diligence in discovery

Plaintiff was permitted to amend its contentions to include more specificity but not to include additional products because the claim construction hearing was only about two months away and "to the extent [plaintiff] has been hindered by a lack of discovery, it has failed to diligently raise these issues with the Court." "[T]he relative importance of including these products in [plaintiff's preliminary infringement contentions] should have generated a commensurate amount of diligence."

Davis-Lynch Inc v. Weatherford Int'l Inc., 6-07-cv-00559 (TXED January 12, 2009, Order).

Tuesday, January 13, 2009

New material in supplemental expert report stricken only if it supports "distinctly new opinions"

The court declined "to strike those parts of the [plaintiff's expert's] Supplemental Report that cite to documents not cited in the Opening Report, but instead provide further support for opinions in the Opening Report." "[A]ny parts of [the expert's] Supplemental Report that does not offer distinctly new opinions, but only further opine or provide new documentary evidence on opinions offered in the Opening Report, are allowed."

Versata Software, Inc. et al v. Sun Microsystems, Inc., 2-06-cv-00358 (TXED January 9, 2009, Order).

Monday, January 12, 2009

Rambus spoliation renders twelve patents unenforceable

"[Rambus'] spoliation conduct was extensive, including within its scope the destruction of innumerable documents relating to all aspects of Rambus' business; when considered in light of Rambus' litigation conduct, the very integrity of the litigation process has been impugned. Sanctions such as adverse jury instructions and preclusion of evidence are impractical, bordering on meaningless, under these circumstances and in the context of a typical jury trial. Therefore, the court concludes that the appropriate sanction for the conduct of record is to declare the patents in suit unenforceable against Micron."

Micron Technology v. Rambus Inc., 1-00-cv-00792 (DED January 9, 2009, Memorandum Opinion).

Monday, January 5, 2009

Unsuccessful meet & confer prompts court to order full-day meet & confer "under the Court’s auspices"

Where the court found that the parties had not made a sufficient good faith effort to resolve their discovery disputes, lead counsel were ordered to appear at the court in three weeks' time "for the purpose of meeting and conferring further under the Court’s auspices. Since the Court does not intend to excuse counsel until such time as the Court is satisfied that they indeed have made a good faith effort to eliminate the necessity for hearing the Motion or to eliminate as many of the disputes as possible, counsel would be well advised to clear their calendars for that entire day."

Datcard Systems, Inc v. Codonics, Inc., 8-08-cv-00063 (CACD December 31, 2008, Minutes)

Friday, January 2, 2009

Preamble reciting a "subscriber" did not create a subscriber limitation requiring proof of direction or control of such subscriber

Use of the term "subscriber" in the preamble of a method claim did not create a subscriber limitation requiring proof that defendant directed or controlled such subscriber to establish infringement under Muniauction, Inc. v. Thomson Corp., 532 F. 3d 1318 (Fed. Cir. 2008) or BMC Res., Inc. v. Paymentech, L.P., 498 F. 3d 1373 (Fed. Cir. 2007). "[S]ubscribers are undoubtedly contemplated by the [asserted patents'] claims as components of the system in which the methods of the patents are implemented, but they are not discussed by the specifications or the steps enumerated in the [asserted patents'] method claims in such a way that they can be read as requirements that somehow limit the scope of the claims."

Level 3 Communications, LLC v. Limelight Networks, Inc., 2-07-cv-00589 (VAED December 29, 2008, Opinion & Order)

Thursday, January 1, 2009

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