Jury Finds Claims Drafted To Cover Infringing Product Not Infringed And Lacking Written Description

At trial, the jury heard argument that plaintiff specifically drafted three claims of the patent-in-suit to cover defendant's artificial lumbar disc devices. At plaintiff’s request, the court instructed the jury that "there is nothing improper in filing a patent application for the purpose of obtaining a right to exclude a known competitor's product from the market." Nevertheless, the jury found (i) that plaintiff failed to prove that the accused devices "include all requirements of each [asserted] claim of the [patent-in-suit]," and (ii) that defendants proved "by clear and convincing evidence that the specification of the [patent-in-suit] does not contain an adequate written description supporting [the independent claim on which the other two asserted claims depend]."

Synthes (USA) v. Spinal Kinetics Inc., 5-09-cv-01201 (CAND December 13, 2011)

Failure to Allege Specific Facts or Statutory Provision Supporting Invalidity Renders Pleading Insufficient

Plaintiff's motion to dismiss defendant's invalidity counterclaims for failure to state a claim was granted. "[T]he plaintiff in [McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir. 2007)] described how the defendant infringed the patent, whereas [defendant] does not state any facts supporting why [plaintiff's] Asserted Patents are invalid. Second, unlike the plaintiff’s reliance on a specific statute in McZeal, [defendant] relies on all of the United States patent laws, 'including one or more of 35 U.S.C. §§ 101-103 and/or 112.' Taken together, unlike in McZeal, [defendant] does not allege that [plaintiff's] Asserted Patents are invalid for any specific reason or under any certain statutory provision."

Cleversafe, Inc. v. Amplidata, Inc., 1-11-cv-04890 (ILND December 20, 2011, Order) (Kocoras, J.)

No Direct Infringement Where Steps of Method Claim Are Performed Outside the United States

Defendants' motion for summary judgment of noninfringement of plaintiff's wireless device management patent was granted as to direct infringement. "Plaintiff must show that Defendants actually used the BES software within the United States in a way that directly infringes the patent-in-suit, i.e., in a way that practiced each step of the patented method within the United States. The Court finds that, based on the undisputed facts, Plaintiff cannot establish that Defendants performed either the 'establishing a mailbox' or 'placing a command for the wireless device in the mailbox at the server' within the United States. . . . [B]ecause the only alleged 'mailbox' resides outside the United States, Defendants do not practice the 'establishing a mailbox' or 'placing a command for the wireless device in the mailbox at the server' steps of Claim 1 within the United States."

Mformation Technologies, Inc. v. Research in Motion Limited, et. al., 5-08-cv-04990 (CAND December 19, 2011, Order) (Ware, J.)

Inventor/Attorney’s Law Firm Disqualified to Serve as Plaintiff’s Counsel

The court granted defendant's motion to disqualify plaintiff's counsel because an attorney at plaintiff's firm was an inventor of the patents-in-suit and would be a key trial witness. "[The inventor/attorney] does not fit the role of 'lawyer-litigant-witness' as contemplated by [Bottaro v. Hatton Associates, 680 F.2d 895 (2d Cir. 1982)] because [the inventor/attorney] is not a litigant. As a result, [his] personal interest in choosing [his firm] as counsel is lessened. . . . In this case, while [the inventor/attorney] is the managing member of [plaintiff], he is not a party litigant. The court concludes that [his] interest will not be clear to the jury, and he will more likely be viewed by the jury as an attorney in plaintiff counsel’s firm, not as the plaintiff in the case."

WhitServe LLC v. GoDaddy.com, Inc., et. al., 3-11-cv-00948 (CTD December 15, 2011, Order) (Hall, J.)

Multiple Withdrawals of Plaintiff’s Counsel Warrants Dismissal for Failure to Prosecute or $100K Sanction

Where a corporate plaintiff was without counsel after withdrawal of three sets of attorneys, the court ordered that it would dismiss plaintiff's cases for failure to prosecute unless plaintiff retained new counsel within a month and paid $100,000 as a financial sanction to compensate defendants for expenses incurred during the delay. "The record is clear that the Plaintiff is personally responsible for its lack of counsel. Plaintiff may or may not be able to pay counsel. Plaintiff claims to have funds but to not be able to get to them. It's clear that Plaintiffs principal is a difficult personality who has clashed with multiple well-respected attorneys and law firms, and is not good about following the directions of the Court. When the various law firms and lawyers have all moved to withdraw for irreconcilable differences, it is the responsibility of the Plaintiff. The only reasonable interpretation of the cryptic withdrawal motion of the last set of attorneys is that the Plaintiff reneged on some financial arrangement. The prejudice to the defendants arises from the delay. . . . It does not make sense to me that if new counsel do enter an appearance [by the deadline next month], the case should just go on as if the last six-to-eleven months had not happened. An intermediate sanction that would allow the case to continue is a financial one. . . . Thus, the Court is conditioning continuance of this litigation on the payment of sanctions, and will require the deposit of $100,000 into the Clerk's Office by [the deadline]. . . . If [defendants'] expenses are less than $50,000 for either or both of the two defendants, any excess funds will be returned."

WebXchange Inc. v. Dell Inc., 1-08-cv-00132 (DED December 15, 2011, Order) (Andrews, J.)

Public Interests Weigh Against Issuance of Preliminary Injunction Impacting Defendants' Participation in Economic Development Project

The court denied plaintiffs' motion for a preliminary injunction in part because the public interest weighed against injunctive relief. A defendants' participation in a major public works project would be affected. According to [the] State Senate President . . . the Paulsboro Project will be 'the largest economic development project that Gloucester County has ever undertaken . . . . [and] is a great opportunity to create jobs, and economic vitality in Paulsboro and all of the towns surrounding this region.'. . . Specifically, the Port is projected to create 2,000 jobs and about $12 million per year in tax revenues. Therefore, the public interest weighs in favor of denying the preliminary injunction."

Weeks Marine, Inc. v. TDM America, LLC, 2-11-cv-03850 (NJD December 14, 2011, Order) (Salas, M.J.)

Pleading Of Inequitable Conduct Intent To Deceive Requires Only Facts From Which It Is Plausible -- Not The Single Most Reasonable Inference --

That The Applicant Had An Intent To Deceive

The court granted defendants' motion to dismiss plaintiff's inequitable conduct claims even though the court disagreed with the pleading standard for intent to deceive argued by defendants. "[Defendant] argues that in order to survive a motion to dismiss, [plaintiff] must plead facts from which 'the specific intent to deceive must be the ‘single most reasonable inference able to be drawn from the evidence.''. . . While the Federal Circuit obviously intended to curb the number of inequitable conduct defenses asserted by accused infringers when it tightened the inequitable conduct standard, the Federal Circuit did not express the desire to adjust the standard for pleading that defense so severely. . . . In order to survive dismissal, the accused infringer must allege facts from which it is plausible that the applicant had an intent to deceive. The inference need not be the most reasonable inference, but merely a reasonable inference beyond the mere possibility that the applicant had an intent to deceive."

Human Genome Sciences Inc., et. al. v. Genentech Inc., et. al., 2-11-cv-06519 (CACD December 9, 2011, Order) (Pfaelzer, J.).

The magistrate judge recommended denying plaintiff's motion to dismiss defendant's inequitable conduct claims and rejected plaintiff's argument that Therasense, Inc. v. Becton, Dickinson, and Co., 649 F.3d 1276 (Fed. Cir. 2011), changed the pleading standard for inequitable conduct. "[Plaintiff] posits that inequitable conduct pleadings must, when taken as true, be 'sufficient to require a finding of deceitful intent in light of all the circumstances.' The Federal Circuit recently reiterated that, even after Therasense, all that is required at the pleading stage is a plausible inference of deceptive intent. . . . [A] pleading that does not show but-for materiality or that bases intent solely on the materiality of the withheld reference would be not survive the pleading stage. However, it does not follow that the pleadings must show by clear and convincing evidence that the patentee had the specific intent to deceive the PTO, i.e., that the specific intent to deceive is the single most reasonable inference able to be drawn."

EON Corp. IP Holdings, LLC v. T-Mobile USA, Inc., et. al., 6-10-cv-00379 (TXED December 13, 2011, Order) (Love, M.J.)

Willful Infringement Without Litigation Misconduct Warrants Doubling, Instead of Tripling, of Damages Award

While the court granted plaintiff's motion to enhance the jury's award of nearly $16 million, the court doubled rather than trebled the damages award. "[T]he Court finds that there was no egregious litigation misconduct; the Defendants presented legitimate defenses; the motivation for harm was not sinister; and the Defendants made no attempts to conceal their misconduct. . . . [A] full enhancement of treble damages is not appropriate in light of the mitigating factors, especially the lack of litigation misconduct."

Metso Minerals, Inc. v. Powerscreen International Distribution Limited, et. al., 2-06-cv-01446 (NYED December 8, 2011, Order) (Spatt, J.)

Six Year Delay And Intervening Destruction of Prosecution Counsel's Files Do Not Justify Application of Laches

Following a jury trial and advisory jury verdict, the court found that laches did not apply even though plaintiff's patent counsel destroyed his prosecution files during plaintiff's delay of six years plus a few weeks. "[Prosecution counsel] never communicated directly with [the inventor], so that the file would not contain this type of communication. . . . [A]s to the destruction of drawings and logbooks, the Court finds that the lack of this type of evidence did not prejudice the Defendants. Second, the Court finds that destruction of invoices was similarly not prejudicial because the Defendants acknowledge that such invoices were independently procured by the Defendants from public litigation records."

Metso Minerals, Inc. v. Powerscreen International Distribution Limited, et. al., 2-06-cv-01446 (NYED December 8, 2011, Order) (Spatt, J.)

Court Ordered Deadlines Are Final -- Not Preliminary -- Unless Otherwise Noted

The court granted defendant's motion to strike plaintiff's supplemental infringement contentions and rejected plaintiff's argument that the court's "Scheduling Order never describes the deadline as a 'final' deadline." "Here, [plaintiff] rested on a false presumption – namely that court-issued deadlines are 'preliminary' unless otherwise indicated. The opposite is the case. . . . The Court does not find reason to recast discovery as a period when the parties are free to locate new infringement contentions, potentially delaying for an untold duration the ultimate trial. Furthermore, if [plaintiff] believed that there was 'good cause' to modify the Schedule Order, it could have moved the Court to do so – a road that [plaintiff] did not take."

Motorola Mobility, Inc. v. Apple, Inc., 1-10-cv-23580 (FLSD December 6, 2011, Order) (Ungaro, J.)

Damages Expert's Apportionment of Damages on Patent-by-Patent Basis Precludes Later Apportionment on Claim-by-Claim Basis

The court tentatively granted defendant's motion to preclude plaintiff's damages expert from apportioning a patent-in-suit’s value on a claim-by-claim basis where the expert conducted a patent-by-patent analysis. "The prior order made clear that a claim-by-claim analysis of damages was preferable: 'determining the date of first infringement requires a claim-by-claim analysis'. . . . [T]his is necessary to get the correct timeline to calculate past damages. Second, some of the asserted claims might be less valuable, or easier to design around. . . . Third, this is necessary to calculate future damages if [defendant] designs around some claims but not others. . . . Fourth, the jury may find liability on some claims but not others. . . . And fifth, some claims may be rejected by the USPTO on reexamination. . . . [Plaintiff] does not deny that [it's damages expert] treats each patent as an indivisible whole. Therefore, [the expert] is tentatively precluded from apportioning an asserted patent’s value among its claims at trial. Furthermore, this tentative order holds that the jury will be instructed that if they find any asserted claim not infringed, they may assume that the noninfringed claim represented the full value of that patent."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND December 6, 2011, Order) (Alsup, J.)

Participation in Patent Pilot Program and Adoption of Local Patent Rules Are Irrelevant to Venue Analysis

The court granted defendant's motion to transfer venue despite plaintiff's argument that the current forum had local patent rules and was participating in the Patent Pilot Program. "This district’s participation in the Patent Pilot Program is not relevant here. This case was randomly assigned to us, and we did not decline to accept it. Similarly, the existence of our local patent rules does not affect our analysis because there is no indication that they would reduce the length of time it would take to resolve this particular case."

Pinpoint Incorporated v. Groupon, Inc., et al., 1-11-cv-05597 (ILND December 5, 2011, Order) (Grady, J.)

"Facts Outside the Pleadings" May be Used to Show Sufficiency of Patent Infringement Claim Even After Iqbal and Twombly

Defendant's motion to dismiss for failure to state a claim was denied even though the court found that the complaint itself failed to state a claim for infringement. "[Plaintiff] asserts that during a course of correspondence both before and after the complaint was filed, [it] gave [defendant] a claim chart detailing how a specific . . . latch infringed the [patent-in-suit]. Because [defendant] is on notice of [plaintiff's] more detailed allegations regarding [its] alleged infringement, [plaintiff] asserts that its bare-bones complaint is sufficient to state a claim. . . . [T]he Seventh Circuit has recently made clear that, even after Iqbal and Twombly, plaintiffs may still suggest facts outside of the pleadings to show that their complaints should not be dismissed, so long as those facts are consistent with the complaint. Accordingly . . . the court finds that [plaintiff] has pled sufficient factual material to state a plausible claim – that is, sufficient to put the defendant on notice of a plausible claim against it – and, therefore, the complaint should not be dismissed for failure to state a claim."

Illinois Tool Works Inc v. Elektromanufaktur Zangenstein Hanauer GmbH & Co. KGaA, 2-11-cv-00262 (WIED November 30, 2011, Order) (Stadtmueller, J.)

Former Magistrate Judge Everingham's Consulting With Plaintiff Does Not Require Recusal If Such Consulting is Unknown to the Presiding Judge

The court denied defendants' motion to recuse under a local rule requiring recusal when a former judge of the district appears as counsel, but only because plaintiff withdrew its "notice of affiliation" (announcing that a former magistrate judge would be consulting with plaintiff on the case) and agreed to screen the former magistrate judge from the case. "While consulting with a client does not constitute an actual appearance on behalf of that client, the filing of a Notice of Affiliation with the Court has the same effect of advising the Court that the former colleague is involved in the case and raises the same concerns that a formal appearance would. Put simply, by filing the notice and informing the Court of [the former magistrate's] potential involvement in the case, such notice has the same potential for creating an appearance of impropriety as an actual appearance. Again, it is the filing of the Notice that creates the potential appearance of impropriety which would trigger recusal in this case, not the actual consulting. . . . [Plaintiff] has continually screened [the former magistrate judge] from this case, has agreed to withdraw the Notice of Affiliation and to continue screening him from the case. Accordingly, there is no basis for recusal and the motion is denied."

JuxtaComm-Texas Software, LLC v. Axway, Inc., et. al., 6-10-cv-00011 (TXED December 1, 2011, Order) (Davis, J.)

Willful Infringement Warrants Only $500,000 Enhancement Over $22.35 Million Verdict

On remand, the court reconsidered its earlier denial of plaintiff's motion for enhanced damages and instead awarded plaintiff $500,000 on the jury's award of $22.35 million. "On appeal in this case, the Federal Circuit held, in light of its intervening opinion in i4i Limited Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010), that this Court had misapplied [In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007)] Specifically, the Federal Circuit said that 'Seagate did not change the application of the Read factors with respect to enhancement of damages' for willful infringement. . . . Only two factors — the infringer’s investigation into the infringement allegations (factor 2) and the infringer’s size and financial condition (factor 4) — weigh in favor of awarding enhanced damages. On balance, the Court finds that [defendant] should be penalized by an award of $500,000 in enhanced damages. . . . [T]he Court notes that the disparity between this award and the jury’s compensatory-damages award reflects not just that the Court’s enhanced-damages award is relatively small, but also that the compensatory-damages award was extremely generous."

Spectralytics, Inc. v. Cordis Corporation, 0-05-cv-01464 (MND November 30, 2011, Order) (Schiltz, J.)

No Infringement Where Purchase Orders Were Received in the U.S. but "Performance and the Passing of Legal Title Occurred Internationally"

The court denied plaintiff's motion to compel defendant to produce sales information regarding products that were not shipped to the U.S. "'[T]he reach of section 271(a) is limited to infringing activities that occur within the United States.' [Plaintiff's] position that [defendant's] receipt of its purchase orders in California should control contradicts Federal Circuit precedent. . . . Here, the allegedly infringing products that are ordered by foreign customers were manufactured outside the United States, and distributed to customers outside of the United States. Both performance and the passing of legal title occurred internationally. Accordingly, the sales of the allegedly infringing products to foreign customers fall outside the scope of U.S. patent laws."

Internet Machines LLC v. Alienware Corporation, et. al., 6-10-cv-00023 (TXED November 29, 2011, Order) (Schneider, J.)

Direct Competition Not Required For Permanent Injunction

The court granted plaintiff's motion for a permanent injunction even though the parties were not direct competitors. "The Court is not aware of any precedent which requires direct competition in any form before an injunction may be granted. [Plaintiff] can still prove irreparable harm in the absence of direct competition. . . . Though [defendant] sells the technology to customers and [plaintiff] licenses its services to companies. . . who then sell the technology to customers, there is still indirect competition. . . . [Defendant's] unlawful infringement unquestionably impedes upon the portion of the market share which [plaintiff's licensee] could have, and thus it impedes on [plaintiff's] ability to introduce its patented technology to the portion of the market that [defendant] controls."

ActiveVideo Networks, Inc. v. Verizon Communications, Inc., et. al., 2-10-cv-00248 (VAED November 23, 2011, Order) (Jackson, J.)

Uniloc Warrants New Damages Trial Despite Lack of Objection

The court granted defendants' motion for a new damages trial following remand even though defendants had not objected to the use of the 25% rule at trial. "Given the widespread acceptance of the 25 percent rule, it would not have been unreasonable for [defendant] to have failed to raise the issue before the Court. . . . [T]he Federal Circuit had implicitly upheld the use of the 25 percent rule prior to [Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011)], and Defendant had no notice that an objection to its use would have been fruitful in light of the Federal Circuit’s previous treatment of the rule. The law does not speak in absolutes and recognizes that a litigant might not be aware of the necessity of making an objection at trial where the great weight of the case law suggests that an objection is not worth making."

Spine Solutions, Inc. v. Medtronic Sofamor Danek, Inc., et. al., 2-07-cv-02175 (TNWD November 23, 2011, Order) (McCalla, J.)

Disclosure of Communications With Prosecution Counsel During Sale of Patent Waives Privilege

Plaintiffs' motion to compel defendant to produce documents from the original patent owner's prosecution counsel was granted based on the patent purchase agreement between the original owner and defendant. "[The original owner] turned over ownership and control of all of those documents it transferred to [defendant]. . ., thereby waiving any attorney-client privilege as to those documents. Because [defendant] 'controls' the [patent] prosecution documents that [prosecution counsel] has in its possession, the documents must be produced under the existing protective order."

HTC Corp., et. al. v. IPCOM GmbH & Co. KG, 1-08-cv-01897 (DCD November 21, 2011, Order) (Collyer, J.)

General Warning to Industry Did Not Create Substantial Controversy Sufficient to Support Declaratory Judgment Claim

The court granted defendants' motion to dismiss plaintiffs' declaratory relief claim for lack of an actual controversy. "[P]laintiffs allege that [defendant] has 'declined to license' to third parties, and that [it] has generally 'warned' the industry that it would not tolerate infringement of the [patent-in-suit]. Unfortunately for plaintiffs, these facts are insufficient to establish an actual controversy under the central lesson of [Innovative Therapies Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377 (Fed. Cir. 2010)]: that a patentee’s actions toward third parties are generally not sufficient to establish declaratory judgment jurisdiction."

Mama Cares Foundation, et. al. v. Nutriset Societe Anonym France, et. al., 1-09-cv-02395 (DCD November 18, 2011, Order) (Lamberth, J.)

"Motion to Behave" Denied Where Counsel Failed to Meet & Confer

The court denied plaintiff's motion for a protective order prohibiting a defense lawyer from participating in future depositions because of abusive behavior. "Both sides encourage the review of deposition DVD after deposition DVD. And yet, remarkably, neither side confronts or even truly acknowledges evidence undermining its preferred conclusion, in textbook examples of what psychologists refer to as 'confirmation bias.' Nor does either side point to even one instance in which it followed [the district judge's] explicit instructions for lead trial counsel to meet in person before imposing on the court what is essentially a motion to behave. . . . These instructions were not optional, and at no point have the parties sought relief from these instructions even after the undersigned reminded them of that opportunity. The court must therefore decline to share the conclusions it has reached about what is depicted in the transcripts and DVDs stacked on the court's desk."

Apple Inc. v. Samsung Electronics Co. Ltd., et. al., 5-11-cv-01846 (CAND November 16, 2011, Order) (Grewal, M.J.)

Undisclosed Trojan Horse Rebuttal Experts Prohibited

The court granted defendant's motion to strike a rebuttal expert report written by a new expert. "The issue presented is whether a new expert who did not serve any opening report may nonetheless make a reply submission attacking the opposition reports served by the other side. Neither party has identified any controlling authority on this point. . . . True, reply reports were not explicitly limited to the authors of the opening reports. The Court thought this was already clear and in twelve years of using this form of case management scheduling order, this is the first time anyone has suggested to the contrary. . . . A party with the burden of proof on an issue should not be allowed to secretly prepare an army of 'rebuttal' experts to attack the opposition reports like Odysseus and the Greeks springing forth from their wooden hideout in Troy."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND November 15, 2011, Order) (Alsup, J.)

Failure to Pay $275,000 in Accrued Attorneys' Fees Does Not Justify Counsel's Withdrawal

Defense counsel's motion to withdraw was denied without prejudice, even though defendant owed counsel more than $275,000, where the only event remaining in the case was a contempt hearing regarding plaintiff's motion to enforce judgment. "The Court is sympathetic to [counsel's] position and acknowledges that $277,749.29 is a significant amount of money. Indeed, that may be even truer for a law firm of only seven attorneys, such as [defense counsel]. The case is so near completion, however, that the Court finds that continued representation by [defense counsel] does not constitute not an 'unreasonable burden.'"

The Walman Optical Company v. Quest Optical Inc., 0-11-cv-00096 (MND November 15, 2011, Order) (Graham, M.J.)

License Extending to End Users of Microsoft Windows Does Not Authorize End Users' Use of Infringing Software Running on Microsoft Windows

In denying defendant's motion for summary judgment of noninfringement, the court rejected defendant's argument that its end users were licensed because the accused software ran only on Microsoft Windows and plaintiff previously granted a license of the patents-in-suit to a "defensive patent aggregator," who in turn granted Microsoft a sub-license extending to end users. "The Court [rejects] [defendant's] argument that because Microsoft is member of RPX, and because [defendant's] software only runs on Microsoft Windows, all uses of [defendant's] software are licensed."

Information Protection and Authentication of Texas, LLC v. Symantec Corp., et. al., 2-08-cv-00484 (TXED November 14, 2011, Order) (Folsom, J.)

What Effects Are Patent Reform Measures Having on the Number of Parties and Patent Cases Being Filed?

There has been much speculation on how patent reform will affect the number of patent cases filed in the courts, with particular interest focusing on how many parties will be involved in those suits.

Here is what we found using Docket Navigator. In the 45 day period (8/2/11 - 9/15/11) prior to the America Invents Act (AIA), 265 complaints were filed in the top six district courts (courts with the greatest number of patent cases filed), involving 2,272 unique parties. In those same courts during the 45 day period following the AIA (9/16/11 - 10/31/11) 248 complaints were filed, but they involved only 848 parties.

We also looked at that same time period exactly one year prior for comparison. In the 45 day period before 9/15/2010 (twelve months prior to the AIA) 147 complaints were filed, involving 940 unique parties. During the 45 day period after 9/15/2010, 169 complaints were filed, involving 940 parties. (Click on the charts below to zoom in)

Excessive Jury Award Reduced From $70 Million to $26.3 Million

The court granted in part defendant's motion for judgment as a matter of law and reduced the jury's lump-sum royalty award of $70 million to $26.3 million where plaintiff's patent covered a small component within defendant's program that did not have a stand-alone market. "Although a reasonable royalty analysis 'necessarily involves an element of approximation and uncertainty,' it is the court’s duty 'to ensure that estimates are tied to . . . proper economic methodologies, not just numbers in an accounting format.' The Court concludes that no reasonable jury could conclude that Outlook within Office is worth $67, leaving the value of Word, Excel, and PowerPoint combined to be only $31. As a result, the Court concludes that the jury’s verdict is not supported by substantial evidence, and therefore, damages are excessive."

Lucent Technologies, Inc., et. al. v. Gateway, Inc., et. al., 3-07-cv-02000 (CASD November 10, 2011, Order) (Huff, J.)

Parties' "Vastly Divergent Views on Damages" Warrant Court-Appointed Damages Expert

The court appointed an independent damages expert. "In this patent and copyright infringement action, an independent damages expert was appointed pursuant to FRE 706 in accordance with the relevant case law, and this memorandum opinion explains why one was needed. . . . [Plaintiff] intends to try 26 claims from six patents and several copyright-infringement theories to the jury. . . . Predictably, the parties and their retained economists have advanced extremely divergent views on the question of damages. . . . [Plaintiff's] economic expert opined that the fair market value of a hypothetical license for the alleged infringement would have been 'at least $1.4 billion' and 'could be as much as $6.1 billion'. In response, [defendant] argued for zero or in the alternative stated that the total value of a real-life licensing offer it rejected -- 'at most, a figure around $100 million' -- should serve as a damages ceiling. The gap between these contentions was enormous. In light of the parties’ extremely divergent views on damages and the unusual complexity of the damages aspect of this case, an independent economic expert was needed to aid the jury."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND November 9, 2011, Order) (Alsup, J.)

Joinder of Affiliated Defendants Does Not Justify Late Identification of Prior Art

The special master recommended that defendants be precluded from asserting twenty new prior art references in their invalidity contentions without showing "extraordinarily good cause." "Counsel for the [foreign defendants] argues that they are entitled to bring this new prior art now because they are new to this lawsuit and this is their first opportunity to file Invalidity Contentions. However, this argument only goes so far; the [foreign] defendants have extended it beyond its logical bounds. Corporate separateness has been carefully guarded in this case, but to permit a restart when the parties are related and share a common counsel ignores logic. [Defendants] do not dispute that throughout the litigation, all of the [defendants], whether officially brought into the litigation or not, have been represented by common counsel. . . . They had more than one vehicle for supplying prior art references to the party [defendants], and it was in their interest to do so. Defendants should not, under the guise of the Foreign [defendants], be allowed to avoid the [case management schedule] by providing out of time a multitude of new art that should have been presented at the appropriate time."

Nuance Communications, Inc. v. Abbyy Software House, et. al., 3-08-cv-02912 (CAND November 7, 2011, Order) (Addy, Special Master)

Infringement Contentions Lacking Allegations Against Certain Products Warrants Estoppel, Not Summary Judgment of Noninfringement

The court denied defendants' motion for summary judgment of noninfringement as to products omitted from plaintiff's final infringement contentions, but ruled that plaintiff was estopped from asserting infringement as to such products. "[Plaintiff] argues that as the case progressed, [its] identification of accused products was narrowed to account for developments in the case, including the acceptance of certain of the Patents-in-Suit into the MPEG LA MPEG-2 patent pool. . . . [Plaintiff] voluntarily relinquished its allegations against these omitted products. Therefore, [plaintiff] is estopped from later re-raising these contentions, but the Court declines to grant summary judgment to [defendants] for non-infringement on these omitted products."

Multimedia Patent Trust v. DirecTV, Inc., et al., 3-09-cv-00278 (CASD November 7, 2011, Order) (Huff, J.)

Focused Early Disclosures of Contentions, Source Code and Sales Data Facilitates Resolution of Infringement Claims in Multi-Defendant Case

Following claim construction, the court evaluated its modified docket control order requiring early disclosure of infringement contentions, plaintiff's licenses, and defendant's sales data to accommodate plaintiff's infringement suit against more than 124 defendants. "Defendants also had the option to disclose source code related to the accused instrumentalities identified in [plaintiff's] P.R. 3-1(c) chart(s). If a Defendant chose to disclose its source code, [plaintiff] was obligated to amend its P.R. 3-1(c) chart(s), incorporating the source code, within 30 days. The parties would then mediate the case, and only after the mediation were Defendants required to comply with P.R. 3-3 and 3-4 and the exchange of disclosures. . . . The parties reported that of the 124 Defendants initially named and the 95 remaining Defendants that appeared at the April status conference, only 20 parties remained in the case. . . . The parties agreed that the early disclosure of source code and sales data facilitated substantive discussions regarding noninfringement and allowed the parties to evaluate their relative positions at an early stage without the need for voluminous and expensive discovery. The parties also stated that the Court’s approach to this type of case, i.e. multiple defendant software patent case, allowed the parties to narrow the number of asserted claims and accused products significantly, in turn, reducing the cost of discovery for the remaining parties."

Uniloc USA, Inc., et. al. v. Sony Corporation of America, et. al., 6-10-cv-00373 (TXED November 3, 2011, Order) (Davis, J.)

Failure to Show Underlying Direct Infringement Sinks Indirect Infringement Claim

The court granted defendant's motion for summary judgment of no indirect infringement of plaintiffs' seed germination patent because plaintiffs failed to establish underlying direct infringement. "Plaintiffs have not pointed to any instance of a specific customer using [the accused] products to perform all of the steps of the claimed methods. In fact, plaintiffs did not take discovery from any actual [accused] seed distributors or customers to determine whether they perform the claimed methods. . . . Defendant’s advertising materials do not teach all of the claimed steps in combination and they do not claim that the specific limitations of the claims are met by [the accused product]. . . . "[P]laintiffs must show that customers using [the accused product] according to defendant’s instructions will necessarily perform the claimed methods. [Plaintiffs' expert's] tests do not satisfy this standard; rather, they show only 'hypothetical' instances of infringement. . . . Although this may seem like a high burden to meet at the summary judgment stage, this standard applies only because plaintiffs failed to adduce evidence of at least one example of a specific customer who had performed all of the claimed methods."

EMD Crop Bioscience Inc., et. al. v. Becker Underwood, Inc., 3-10-cv-00283 (WIWD November 3, 2011, Order) (Crabb, J.)

Model Order on E-Discovery Adopted in Case Involving Competitors

In response to the parties' submission of a Joint Case Management Statement in accordance with FRCP 26(f), the court entered an Order Re Parties' Production of Electronic Documents "adopting a version of the Model Order on E-Discovery in Patent Cases ('Model Order') recently promulgated by a subcommittee of the Advisory Council of the Federal Circuit." In doing so, the court rejected plaintiff's argument that the Model Order was not designed for cases involving competitors. "The court is not persuaded by [plaintiff's] argument for at least two reasons. First, although the undersigned will not presume to know whether Chief Judge Rader or any of the esteemed members of the subcommittee were focused exclusively on reducing discovery costs in so-called 'NPE' cases, there is nothing in the language of the Chief Judge's speech or the text of the model order so limiting its application. Second, and more fundamentally, there is no reason to believe that competitor cases present less compelling circumstances in which to impose reasonable restrictions on the timing and scope of email discovery. To the extent [plaintiff] faces unique or particularly undue constraints as a result of the limitations, it remains free, under the Model Order, to seek relief from the court. . . . And if competitor cases such as this lack the asymmetrical production burden often found in NPE cases, so that two parties might benefit from production restrictions, the Model Order would seem more appropriate, not less."

DCG Systems, Inc v. Checkpoint Technologies, LLC, 5-11-cv-03792 (CAND November 2, 2011, Order) (Grewal, M.J.)

Three-Year Lie Justifies Partially Terminating Sanction: Entry of Default as to Liability

The court granted plaintiff's motion to strike defendants' answer and enter default as to liability as a sanction for defendants' three-year long lie about sending an infringement letter to one of plaintiff's suppliers. "The Court can think of few types of conduct that would be more egregious and harmful to the judicial process than knowingly lying in response to a Court order. . . . The publication of the letter is at the heart of this litigation. . . . The failure to disclose the information undoubtedly altered the discovery process and likely has expanded this litigation. . . . [Defendants' president thought he] could lie when it suited his financial interests to do so. . . . The minimum sanction necessary to redress this flagrant and dishonest disregard for the Court’s order is the ultimate sanction."

Iguana, LLC v. Lanham, et. al., 7-08-cv-00009 (GAMD October 28, 2011, Order) (Land, J.)

Expert Testimony Concerning Speculative "Design Arounds" Excluded From Trial

The court granted in part plaintiff's motion to preclude improper damages testimony. "[Defendant's expert's] proffered testimony regarding possible 'design arounds' as alternatives to the patented technology is wholly speculative and, consequently, not helpful to the trier of fact. There is no indication that any of the technical alternatives proposed by [him] would work. [He] admitted as much at his deposition. ('I have no idea whether or not they would be commercially viable.')"

SRI International v. Internet Security, et. al., 1-04-cv-01199 (DED October 31, 2011, Order) (Robinson, J.)

Award of Attorneys' Fees Inappropriate Where Infringement Was Determined by Claim Construction

Defendant's motion for attorneys' fees under 35 U.S.C. § 285 following summary judgment was denied. "[Plaintiff] could not have determined noninfringement from examination of the samples, even aided by demonstrations and discussions with [defendant]. . . . [W]hether [defendant's] products infringed [plaintiff's] patent was a 'question of claim construction.'. . . Because infringement was determined, in this case, by claim construction -- rather than by questions of mechanical structure, functioning, and operations -- [plaintiff] could not have known, based on technical examinations alone, that its claims would not succeed."

Karl Storz Imaging, Inc. v. Pointe Conception Medical, Inc., 2-09-cv-08070 (CACD October 21, 2011, Order) (Feess, J.)

Expert Testimony That Plaintiff's Worldwide Licenses Are "AntiCompetitive" Not Excluded From Trial

The court denied plaintiff's motion to exclude the testimony of defendant's damages expert that plaintiff's worldwide licenses were anticompetitive. "[P]laintiff argues that [the expert's] opinions that plaintiff’s worldwide royalties and its fields of use are anticompetitive should be excluded because they are conclusory and lacking in economic analysis. Plaintiff argues that [defendant's expert's] analysis of worldwide licenses disregards their various economic benefits. This may be persuasive on cross-examination but it is not a basis on which to exclude his testimony. [He] does reach a legal conclusion when he says that plaintiff’s fields of use impose a 'double-royalty' but he also says that the licenses charge twice their value. He bases the latter conclusion on the relative cost of the technology and on the form of plaintiff’s past licenses. I will disregard any legal conclusions, such as that the licenses charge a 'double-royalty,' but [defendant's expert] may testify about his economic analysis."

SanDisk Corp. v. Kingston Technology Co., Inc., et. al., 3-10-cv-00243 (WIWD October 27, 2011, Order) (Crabb, J.)

District Court Declines to "Expand" on Federal Circuit's Claim Construction

Plaintiff's motion for a claim construction that differed from the construction by the court of appeals was denied. "Plaintiff is correct that the court of appeals did not address in its opinion the particular question plaintiff is raising now. However, the court did not suggest that its construction was incomplete and needed further clarification on remand. . . . [I]f plaintiff believed that the construction provided by the court of appeals was incomplete, it could have filed a motion for clarification with that court. I decline to expand on the construction the court of appeals provided."

Extreme Networks, Inc. v. Enterasys Networks, Inc., 3-07-cv-00229 (WIWD October 26, 2011, Order) (Crabb, J.)

No Apportionment of Lost Profits Where the Entire Value of Infringing Sales Derives From the Patented Invention

The court granted plaintiffs' motion in limine to preclude defendant's argument that lost profits should be apportioned to account for defendant's contribution to development of the claimed invention. "Defendants contend that the work their scientists did on identifying the alphaamylase variant at position 239 added value to the [patent-in-suit] and should be taken into consideration by the jury in determining plaintiffs’ lost profits. In other words, the damages should be apportioned to reflect the added value they provided. . . . This is not a case in which an extra feature adds value to a larger component; the [patent-in-suit] incorporates the entire invention, which is the GC358 starch hydrolyzing alpha-amylase variant. . . . [A] patent holder is entitled to all of the infringer’s profits unless his patent created only a part of those profits. Those are not the facts in this case, in which the [patent-in-suit] claims the entirety of the invention. The entire value of defendants’ infringing sales of [the accused product] derives from this invention; therefore plaintiffs are entitled to the full amount of whatever lost profits they are able to prove."

Novozymes A/S, et. al. v. Danisco A/S, et. al., 3-10-cv-00251 (WIWD October 25, 2011, Order) (Crabb, J.)

Rule 11 Pre-Filing Investigation Need Not Be Conducted by Registered Patent Attorney

In denying defendant's motion for Rule 11 sanctions, the court rejected defendant's argument that plaintiff could not support the adequacy of its pre-filing investigation because its attorney-declarants were not registered to practice before the PTO. "[N]o authority is cited for the contention that credibility is reliant on such factors. Further, in the exhibits provided by [defendant], it is indicated that both attorneys practice in intellectual property matters and [one] specifically works with internet matters, including internet advertising. Limiting the skill required to make a credible declaration to so specific a skill set without authority so saying is unreasonable."

Essociate, Inc. v. Blue Whaler Investments, LLC, et. al., 2-10-cv-02107 (CACD October 24, 2011, Order) (Selna, J.)

Location of Documents and Convenience of Witnesses and Parties Given Little Weight in Venue Analysis

In denying defendants' motion to transfer venue of plaintiff's declaratory relief action, the court gave little weight to the location of documents and convenience of witnesses and parties. "[T]echnological advances have rendered certain . . . factors less relevant. . . . [R]egarding factors two [the location of relevant documents] and four [the locus of the operative facts], the Court notes that [defendant] designed and developed the allegedly infringing product in Japan. [Defendant] almost certainly will not physically ship documents that relate to the design process from Japan to the trial court. Instead, it will scan those documents onto a computer, producing them with the click of a mouse in either New York or Washington. Similarly, with respect to factors one [the convenience of witnesses] and three [the convenience of the parties], travel has become cheaper and easier. Where multinational corporations compete over venue in cases that transcend borders, consideration of convenience to witnesses often devolves into an absurd comparison of the costs and durations of a few flights."

Tomita Technologies USA, LLC, et. al. v. Nintendo Co., Ltd., et. al., 1-11-cv-04256 (NYSD October 14, 2011, Order) (Rakoff, J.)

Leahy-Smith AIA's Retroactive Abrogation of False Marking Claims Lacking Competitive Injury Is Not Unconstitutional

In granting plaintiff's motion for summary judgment on defendant's false marking counterclaim, the court rejected defendant's constitutional challenges to the America Invents Act. "Congress’ intent that the AIA apply retroactively is clear on the face of the amendment and Congress enacted the AIA for a legitimate purpose. Therefore, [defendant's] due process challenge to the AIA fails. . . . There is no showing of a public use associated with [defendant's] assertion that AIA destroyed its false marking claim, or that [defendant] would prevail on its false marking claim. Accordingly, the Court denies [defendant's] Takings Clause challenge to AIA."

Seirus Innovative Accessories, Inc. v. Cabela's, Inc., 3-09-cv-00102 (CASD October 19, 2011, Order) (Huff, J.)

Lack of Factual Basis for Counsel's Representations to the Court Warrants Sanctions Under 28 U.S.C. § 1927

Plaintiffs' motion for sanctions under 28 U.S.C. § 1927 was granted based on statements made by defendant's president and counsel during a TRO hearing. "Counsel for [defendant] represented to the Court that nothing meaningful would occur prior to the time the Court could hold a hearing on the request for a preliminary injunction. . . . [T]he Court is convinced that counsel did not make any knowing misrepresentations to the Court. Such conduct would stand in stark contrast to the manner in which counsel has conducted themselves in this litigation. The lack of intentional misstatements, however, does not remedy the fact that counsel made statements with no factual basis. . . . [I]t is no defense that even [defendant's] own representatives did not know the impact of the shipments that were going to occur in the very near future. It is precisely this lack of knowledge that should have compelled counsel to make no statements about the need or lack thereof for an immediate hearing."

Velocys, Inc. v. Catacel Corp., 5-10-cv-00747 (OHND October 18, 2011, Order) (Adams, J.)

Defendants' Persistence in Pursuing "Baseless Inequitable Conduct Claim" Justified Award of Attorneys' Fees to Plaintiff

The court granted plaintiffs' motion for attorneys' fees under 35 U.S.C. § 285, finding the case to be exceptional based on defendants' continued pursuit of an inequitable conduct defense even after Federal Circuit jurisprudence rendered such claim objectively baseless. "[Defendants'] inequitable conduct claim was objectively baseless after the Federal Circuit's ruling in [Therasense Inc. v. Becton, Dickinson and Co. (Fed. Cir. May 25, 2011)], and [they] could not have reasonably believed that its claim would succeed. . . . [Prosecution counsel's] actions here are most akin to acts of nondisclosure, and [defendant] has made absolutely no showing of 'but-for' materiality. While [defendant] attempts to recharacterize [counsel's] inaction with foreign litigation material as a scheme of affirmative action, the court does not find such an interpretation reasonable. . . . The record in this case, in addition to being devoid of evidence of inequitable conduct . . . is also filled with examples of related wasted resources. [Defendant] not only persisted in its baseless inequitable conduct claim through trial, but it also attempted to amend the claim three days into trial. . . . Most incredibly, [defendant] attempted to include new allegations against one of Pfizer's trial counsel for the duration of this suit . . . a concern expressed specifically by the Federal Circuit in Therasense. This conduct demonstrates that the interests of justice necessitate an award of attorney fees to [plaintiffs]."

Pfizer Inc., et. al. v. Teva Pharmaceuticals USA, Inc., et. al., 2-10-cv-00128 (VAED October 17, 2011, Order) (Smith, J.)

Jury Awards Conceptus $18 Million Based on 20% Royalty Rate

Following a jury trial the jury returned a verdict finding that defendant contributed to and induced doctors to infringe defendant's contraceptive surgical procedure patent and that the patent was not invalid by reason of anticipation, obviousness, lack of written description, or lack of enablement. The jury awarded $18,807,241 based on a royalty rate of 20%.

Conceptus, Inc. v. Hologic, Inc., 3-09-cv-02280 (CAND October 17, 2011, Verdict).

Patent Pilot Program

Fourteen federal district courts have been selected to participate in a 10-year pilot project designed to enhance expertise in patent cases among U.S. district judges...

Central District of California
District Judge S. James Otero
District Judge Andrew J. Guilford
District Judge Otis D. Wright II
District Judge George Wu

Northern District of California
Senior District Judge Ronald Whyte
District Judge Edward Davila
District Judge Jeffrey S. White
District Judge Lucy Koh
Chief District Judge James Ware
Magistrate Judge Elizabeth Laporte
Magistrate Judge Paul Grewal
Magistrate Judge Joseph C. Spero
Magistrate Judge Laurel Beeler
Magistrate Judge Donna M. Ryu
Magistrate Judge Jacqueline Scott Corley
Magistrate Judge Nathanael Cousins

Southern District of California
District Judge Marilyn L. Huff
District Judge Janis L. Sammartino

Southern District of Florida
The Honorable K. Michael Moore
The Honorable Donald M. Middlebrooks
The Honorable Patricia A. Seitz

Northern District of Illinois
Chief Judge James F. Holderman
District Judge Ruben Castillo
District Judge John W. Darrah
District Judge Gary S. Feinerman
District Judge Virginia Kendall
District Judge Matthew F. Kennelly
District Judge Joan Humphrey Lefkow
District Judge Rebecca R. Pallmeyer
District Judge Amy J. St. Eve
District Judge James B. Zagel

District of Nevada
Chief Judge Robert C Jones
District Judge Philip M Pro
District Judge Gloria M Navarro

District of New Jersey
Hon. Garrett E. Brown, Jr.(Trenton)
Hon. Renee M. Bumb (Camden)
Hon. Claire C. Cecchi (Newark)
Hon. Mary L. Cooper (Trenton)
Hon. Stanley R. Chesler (Newark)
Hon. Noel Hillman (Camden)
Hon. Faith S. Hochberg (Newark)
Hon. Joseph E. Irenas (Camden)
Hon. Joel A. Pisano (Trenton)
Hon. Peter G. Sheridan (Trenton)
Hon. Jerome B. Simandle (Camden)
Hon. Susan D. Wigenton (Newark)

New York
District Judge Thomas Griesa
District Judge Kevin Castel
District Judge Denise Cote
District Judge John Koeltl
District Judge Colleen McMahon
District Judge Jed Rakoff
District Judge Shira Scheindlin
District Judge Laura Taylor Swain
District Judge Robert Sweet

Western District of Pennsylvania
District Judge Gary L Lancaster
District Judge Joy Flowers Conti
District Judge Arthur J Schwab
District Judge Nora Barry Fischer

Western District of Tennessee
Chief Judge Jon P. McCalla
Honorable S. Hardy Mays

Eastern District of Texas
District Judge Folsom
District Judge Schell
District Judge Davis
District Judge Clark
District Judge Schneider

Northern District of Texas
District Judge Barbara M.G. Lynn
District Judge David C. Godbey
District Judge Ed Kinkeade

Please send corrections or suggestions to trial@docketnavigator.com.

Damages Expert May Not Rely on Unproduced License Within Expert's Personal Knowledge

Plaintiff's motion to exclude portions of defendant's damages expert's opinion was granted as to a license relied upon by the expert that was never produced. "Defendant contends that [the expert] is able to rely on this data because it falls within his personal knowledge. Because [defendant's expert] relied on the license, did not produce the license, and was unable at deposition to elaborate on the details of the license, he may not make reference to this license or its contents."

Alexsam, Inc. v. Shell Oil Company, et. al., 2-08-cv-00015 (TXED October 14, 2011, Order) (Schneider, J.)

EDTX Jury Exonerates Newegg and Overstock; Invalidates Alcatel Patent

Last Friday a jury in the Eastern District of Texas returned a verdict in favor of defendants Newegg and Overstock and against plaintiff Alcatel Lucent. Alcatel originally sued several ecommerce retailers on three patents. However, eight of the ten defendants eventually settled, leaving only Newegg and Overstock. The jury concluded that Newegg and Overstock do not infringe any of the three asserted patents and that U.S. Patent No. 5,649,131 is invalid. Newegg and Overstock prevailed on every question submitted to the jury.

Alcatel-Lucent USA Inc. v. Amazon.com, Inc., et. al., 6-09-cv-00422 (TXED October 14, 2011, Verdict)(Davis, J.)

Failure to File Motion Requesting Testimony at Markman Hearing Bars Submission of Expert Declaration in Support of Markman Briefing

The court granted defendants' motion to strike an expert declaration submitted in connection with plaintiff's claim construction briefing. "[T]he Court stated that the parties would not be permitted to call witnesses or present extrinsic evidence at the Markman hearing, because no party had timely noticed a motion seeking to present testimony at that hearing. To date, Plaintiff has not tendered such a motion before the Court. Because Plaintiff will not be permitted to present [its expert] or his testimony at the Markman hearing, it necessarily follows that Plaintiff cannot rely on [his] testimony to support its proposed definitions for the disputed terms."

U.S. Ethernet Innovations, LLC v. Acer, Inc., et. al., 5-10-cv-03724 (CAND October 12, 2011, Order) (Ware, J.)

Expert Testimony on Anticipation Barred for Failure to Conduct Limitation-by-Limitation Comparison in Report

The court granted defendant's motion to clarify the court's prior ruling that defendant's invalidity expert's report was not helpful because it did not perform a limitation-by-limitation comparison. "[Defendant's expert's] opinions on anticipation are excluded in their entirety. Defendant may not attempt to prove anticipation in this case absent an expert's testimony."

Asahi Glass Co Ltd., et. al. v. Guardian Industries Corp., 1-09-cv-00515 (DED October 11, 2011, Order) (Robinson, J.)

Stay Pending Reexam Denied Where Parties Were Direct Competitors in Developing Market

The court denied defendants' motion to stay pending inter partes reexamination because the parties were direct competitors in a developing market and a stay would result in significant prejudice to plaintiff. "[E]ven a conservative estimate of a delay of several years is 'long enough to work considerable prejudice upon the non-moving party.' By contrast, if this case is tried in this Court . . . as scheduled, the entire dispute may be resolved within two years, probably before the reexamination process is concluded at the PTO. Compounding the prejudice that a stay would work on [plaintiff] is the fact that the parties are direct competitors in a relatively narrow sector of the ADA-compliance industry [sidewalk tactile warning systems designed to warn disabled pedestrians of dangers]. Although money damages could remedy some of [plaintiff's] infringement losses during the stay period, the risk of loss of market share is particularly high in this growing market where contractors and government agencies develop lists of preferred vendors to be used for projects."

ADA Solutions, Inc. v. Engineered Plastics Inc. d/b/a Armor-Tile, et. al., 1-10-cv-11512 (MAD October 7, 2011, Order) (Gorton, J.)

Failure to Identify Noninfringing Substitute During Summary Judgment Precludes Such Evidence at Trial

The court granted in part plaintiff's motion in limine to preclude evidence of a noninfringing alternative that was not addressed in summary judgment. "The summary judgment ruling that there were no acceptable and available non-infringing alternatives will stand. [Defendant] had the burden of identifying any such alternatives at the summary judgment stage, and it failed to do so. [Defendant] may not now introduce the new theory that tubal ligation was an acceptable alternative. . . . The summary judgment ruling does not imply that [plaintiff] would have sold its product to every user of [defendant's] method if [defendant] had not been in the market. Rather, the absence of any acceptable non-infringing alternative is only one step along the way to proving lost profits."

Conceptus, Inc. v. Hologic, Inc., 3-09-cv-02280 (CAND October 6, 2011, Order) (Alsup, J.)

Damages Methodology Using "New User Engagement Statistics" to Calculate "Incremental Revenue" Attributable to Infringement Not Inherently Unreliable

The court denied defendant's motion to strike plaintiff's damages expert's report as "lacking in sound economic and factual predicates." "[Defendant] asserts that [the expert] 'adopts his own interpretation of [defendant's] "new user engagement" statistics—which have nothing to do with [defendant's] revenues—and uses these percentages to calculate the purported "incremental revenue" of $73,187,900 to $102,463,060 that [defendant] supposedly will garner from its alleged infringement of the [patent-in-suit]. . . . While it is certainly the case that 'a court should disregard expert opinion if it is mere speculation, not supported by facts' . . . [the expert's] testimony rests upon a sufficient factual basis to support his conclusion. As [plaintiff] asserts, [the expert] bases his opinion upon his experience as applied to the facts of the case. [The expert] has over forty (40) years of experience in the area of the licensing of patents, trademarks and technologies. In those forty (40) years, [the expert] estimates that he has 'has been involved in the negotiation of more than 400 licenses, as licensor or as licensee.' Accordingly, [Plaintiff's expert] possesses the requisite knowledge, skill, experience, training and education to determine the relevant range for likely revenue sharing between a willing licensor and licensee and apply it to the facts of this case. . . . [He] does not rely upon general market studies, but rather his forty years of experience in dealing with the negotiation of more than four hundred licenses."

VS Technologies v. Twitter, Inc., 2-11-cv-00043 (VAED October 5, 2011, Order) (Morgan, J.)

Complaint Accusing "Object Oriented Software Applications and Systems That Access a Relational Database" Was Sufficiently Specific to State a Claim

The court denied defendant's motion to dismiss plaintiff's direct infringement claim for failing to identify an accused product or system, as well as failing to identify which of 40 method claims were infringed. "Although it is a close call, the Court finds that in the context of the entire Amended Complaint, the phrase 'object oriented software applications and systems that access a relational database' identifies a general category of accused products and services with sufficient specificity to enable Defendant to answer. . . . Further particulars of the allegations may be obtained through discovery."

Datatern, Inc. v. Eli Lilly and Company, et. al., 2-10-cv-00413 (TXED September 30, 2011, Order) (Ward, J.)

Has any court determined that the term “circuit board” needs no construction?

When it comes to claim construction, knowing how terms have been construed is helpful, but knowing when a judge has chosen not to construe a term further can be just as helpful. In Docket Navigator, we not only record all constructions of claim terms, but also instances in which the court found further construction unneccessary. Check out this video to see how we answered this question.

Public Statements by Foreign Defendant's CEO Reflecting "Affront to the United States Patent System" Warrant Strong Enhancement of Ongoing Royalty

The court granted plaintiff's motion for an ongoing royalty, found that defendant's ongoing infringement was willful, and based on that finding, doubled the royalty rate for one product category. "[B]ecause the paramount determination is the egregiousness of [defendant's] conduct, the Court considers [defendant's] corporate attitude, which is reflected by its CEO's statement to a Chinese newspaper after the verdict in this case, which reads in part: 'The issue of patent infringement is being taken too seriously sometimes.' The Court finds that this statement by [defendant's] CEO shows [its] lack of respect for this Court and the jury's verdict. It is also an affront to the United States patent system -- a system of Constitutional origin. The Court, therefore, finds that this also warrants a strong enhancement because it further reflects the egregiousness of [defendant's] conduct. In accordance, the Court holds that the earlier calculated reasonable royalty rate of 0.75% should be doubled to account for enhancement due to willfulness."

Mondis Technology Ltd. v. Chimei InnoLux Corporation, et. al., 2-11-cv-00378 (TXED September 30, 2011, Order) (Ward, J.)

Means Plus Function Claim Reciting "Receiving . . . Caller Cues" Not Indefinite For Failure to Disclose Corresponding Algorithm

The court denied defendant's motion for summary judgment that plaintiff's call processing patent was indefinite because it failed to disclose an algorithm. "[T]he Federal Circuit clarified when an algorithm is required for a means plus function limitation (whose corresponding structure is a general purpose processor). The Court said that algorithms are not required when the recited function does not require a special purpose computer. Thus, for simple functions like 'processing,' 'receiving,' and 'storing,' the specification did not need to disclose an algorithm. . . . Here, the recited function is simply receiving a form of data, namely cues."

Ronald A. Katz Technology Licensing L.P. v. Comcast Corporation, et. al., 2-07-cv-06996 (CACD September 29, 2011, Order) (Klausner, J.)

Preliminary Injunction Based On Divided Infringement Theory Denied For Failure to Show Likelihood of Success

Plaintiff's motion for a preliminary injunction for infringement of its piston patents was denied because plaintiff did not establish a likelihood of success on the merits and there was uncertainty following the Federal Circuit's recent vacating of Akamai. "It is true that under current principles, [defendant] cannot escape liability simply by outsourcing the infringing steps, but [plaintiff] still needs to show that [defendant] controls or directs the actions of [a third party manufacturer] in friction welding its pistons. And given the first opinion, now vacated, in [Akamai Technologies, Inc. v. MIT, Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417 (Fed. Cir. Apr. 20, 2011)], its burden may even turn out to be heavier, requiring a showing of an agency relationship. . . . [T]he evidence in the record to date, if believed by a jury, could allow [defendant] to establish by clear and convincing evidence at trial that it cannot be held liable for infringement of the [patent] because of its lack of dominion and control over every step of the patented method (and/or because it does not maintain a relationship with [the third party] wherein [defendant] acts as the Company’s principal)."

Federal-Mogul World Wide, Inc., et. al. v. Mahle GmbH, et. al., 2-11-cv-10675 (MIED September 27, 2011, Order) (Cook, J.)

How We Do It

Since we began publishing the Docket Report in 2008, many of our customers (and a few competitors) have asked how we create the Docket Report and populate the Docket Navigator research database. The answer involves the same formula many of our customers employ to win cases: a bit of ingenuity, a lot of hard work, and a propensity to sweat the details. Today's short video provides a behind-the-scenes look at how the Docket Navigator team processes patent litigation information one day at a time.

As you watch the video, keep in mind that our team of patent attorneys and paralegals collectively spend between 20 and 26 hours curating patent litigation data for a single day. Not only does this ensure the integrity of our data, but it also means that you're only looking at the things a patent litigator would want to see, labeled with terms that you'll find valuable. Yes, that is a lot of work and much of it is tedious. But the result is a rich dataset that allows you to pinpoint exactly the information you need quickly and without the guesswork inherent in other research tools.

Video (00:03:19): How We Do It

Jeff Andrews of Locke Lord wins Scavenger Hunt #3

Thanks to everyone who submitted a correct answer for our Scavenger Hunt this week. More than 70 attorneys found the correct answer with the powerful Docket Navigator patent litigation research database.

Congratulations to Jeff Andrews of Locke Lord for winning the iPad2®.

We will be hosting another Scavenger Hunt next month so be sure to ask for a free password to Docket Navigator so you'll be ready to search!

Another False Marking Case Dismissed Sua Sponte in Light of Leahy-Smith

The court sua sponte dismissed plaintiff's qui tam false marking action for failure to state a claim following the enactment of the Leahy-Smith America Invents Act. "This dismissal is without prejudice for Plaintiff to re-file its complaint in the event Plaintiff can prove it has suffered a 'competitive injury' and it can satisfy the other requirements under the statute."

GHJ Holdings, LLC v. WMS Gaming, Inc., 2-11-cv-02761 (CACD September 27, 2011, Order) (Wright, J.)

Docket Navigator Scavenger Hunt – Round 3!

This week’s Scavenger Hunt is a bit more involved than previous weeks’ questions. It contains two parts and two chances to win. You will receive one chance to win for each portion of the question you answer correctly. Correct answers can be submitted to win a guaranteed prize (2GB USB thumb drive) and a chance to win an even bigger prize (an iPad2®)!

First chance to win:
In 2003, IP Innovation, LLC initiated a patent case that was assigned to Hon. Charles Kocoras. In that case, Judge Kocoras construed the terms of two patents. The patent with the higher number contained a term consisting of a single word. What construction did the court give that term?

Second chance to win:
That same patent was declared unenforceable a few years later. What is the name of the judge who declared the patent unenforceable?

Play now!

Ask for a free password to Docket Navigator.

* iPad is a trademark of Apple, Inc., registered in the U.S. and other countries. Apple, Inc. does not endorse or sponsor Docket Navigator or its products or services.

Chief Judge Rader Delivers State of Patent Litigation & E-Discovery Model Order

On September 27, 2011, Chief Judge Rader addressed the Eastern District of Texas Judicial Conference and introduced a major new initiative to improve e-discovery. It is a Model E-Discovery Order and a Committee Report created by the E-Discovery Committee of the Federal Circuit Advisory Council and unanimously approved by the Advisory Council. According to Judge Rader, “the Model Order of the Advisory Council of the Federal Circuit promises to bring some discipline to e-discovery expenses. . . . I would respectfully ask our bar to work with the bench to implement this first improving vision.”

E-Discovery Committee

Chief Judge James Ware (ND Cal)
Judge Virginia Kendall (ND Ill)
Magistrate Judge Chad Everingham (ED Tex)
Chief Judge Randall Rader (Fed. Cir.)
Tina Chappell
Richard “Chip” Lutton
Joe Re
Edward Reines
Steve Susman
John Whealan

The text of Judge Rader's speech, the Committee's Report and E-Discovery Model Order are distributed with authorization of Edward Reines, Chair of the Federal Circuit Advisory Council.

Royalty Range Based on "Medical Field in General" Not Admissible in Case Involving Trocars

The court granted defendant's motion in limine to exclude the testimony of plaintiff's damages expert concerning a royalty range. "[The expert's] testimony on a royalty range was not limited to trocars, but appears to be based on his experience on the medical field as a whole. Prior license agreements must be 'sufficiently comparable to the hypothetical license at issue in suit.' . . . The court understands Plaintiffs’ argument about relevance under Georgia-Pacific factor 12, but both factor 12 and [Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011)] discuss royalty rates for use of the invention and similar inventions. [Plaintiff's expert's] testimony involved the medical field in general, and devices not comparable to the trocars at issue in this case."

Tyco Healthcare Group LP, et. al. v. Applied Medical Resources Corp., 9-09-cv-00176 (TXED September 23, 2011, Order) (Giblin, M.J.)

How many motions for enhanced damages or attorneys' fees have been filed in the California federal district courts?

An award of enhanced damages or attorneys’ fees can significantly increase the stakes of a patent case. Like many other aspects of patent litigation, the questions of whether an award is appropriate and if so the amount are both entrusted to the discretion of the district court. Here again, knowing how a particular judge has ruled on the issue in past cases can help tailor a request for enhanced damages or opposition thereto.

Docket Navigator was designed to track awards of enhanced damages and attorneys’ fees in several different ways. First, when a court rules on a motion for enhanced damages or attorneys’ fees, we flag that order by type of motion (e.g., order on “motion for enhanced damages/attorneys’ fees”). Second, we record the legal concepts addressed in the order. For example, in a motion for enhanced damages or attorneys’ fees, the court might address the issues of willfulness, trial misconduct, vexatious litigation, copying, etc. Once the court has determined that an award is appropriate, it sometimes requests a second round of briefing on the amount of fees or enhanced damages to award. Because this second round of briefing involves different legal concepts (e.g., reasonableness of hourly rate and hours billed), we record a different set of legal issues for this second step (e.g., “calculating attorneys’ fees”). Finally, we separately record any remedy including the type, the amount, the party against whom the remedy was awarded, and the recipient.

Today’s Question of the Day asks for a simple count of motions and a break-down of those that were granted versus those that were denied. Watch the short video to see how we answered the question using Docket Navigator.

Email Processing Patent Claims Patentable Subject Matter Under Bilski

The magistrate judge recommended denying defendants' motion to dismiss plaintiff's infringement claims on the ground that the asserted email processing patent was not drawn to eligible subject matter. "Here, the claims recite a method performed using a mail processing program. It is therefore a process within the definition of the Patent Act, and the question is whether it is so abstract to be ineligible. . . . [T]he use of the mail processing program to scan incoming messages, determine whether the messages are context-aware, and, if so, to retrieve the context information from one or more external locations will require programming. . . . [T]he software would not be so simple as to involve purely mental steps in which the computer’s use was merely incidental. . . . Bearing in mind that the Federal Circuit has narrowly construed the exclusion for purely mental steps, it is the undersigned’s view that the [patent-in-suit] claims eligible subject matter under 35 U.S.C. § 101."

InNova v. 3Com Corporation, et. al., 2-10-cv-00251 (TXED September 22, 2011, Order) (Everingham, M.J.)

Has the admissibility of Brian Napper’s expert testimony been challenged? If so, has any challenge been successful?

Patent litigation has often been referred to as a “battle of the experts,” meaning experts often play a central role in the outcome of the case. For this reason, it’s important to select experts whose qualifications and opinions will survive scrutiny by the opposition. At the same time, it’s equally important to evaluate your opponents’ experts’ qualifications and opinions to ensure they comply with the applicable rules of civil procedure and evidence as well as local rules.

Docket Navigator can help in several ways. As we’ve seen from past Questions of the Day, Docket Navigator allows you to search for court orders involving specific legal issues (e.g., challenging the qualification of an expert, challenging the expert’s methodology, or challenging the data on which an expert’s testimony is based) by a specific judge. Conducting such a search provides insight on how your judge may rule on the admissibility of expert testimony in the future.

Today’s Question of the Day addresses the question from a slightly different perspective — that of the individual expert witness. So instead of asking how a particular judge rules on expert witness issues, it asks whether the testimony of a particular expert has been challenged in past litigation and whether any such challenges have been successful. Watch this short video to see how we answered the question using Docket Navigator.

Misrepresenting Necessity of Obtaining Patent Quickly is not Material Misrepresentation Sufficient to Support Inequitable Conduct Claim

The court granted plaintiff's motion to dismiss defendant's inequitable conduct counterclaim for failure to state a claim. "[Defendant] alleges that [plaintiff] misrepresented the necessity of obtaining the [patent-in-suit] as quickly as possible to terminate ongoing infringement at the time of application. [Defendant] then points to the time gap of roughly 18 months between receiving the patent and commencing litigation against [an alleged infringer] in a previous lawsuit, as evidence of [plaintiff's] lack of good faith. Using history as a guide, [defendant] infers that [plaintiff] is repeating its strategy of maximizing infringement damages by waiting five years before bringing the present suit. . . . The one alleged misrepresentation, that [plaintiff] asked the PTO to expedite its patent so it could sue, as plead, is not material to the claim of inequitable conduct as it relates to this case. This case arose well after that statement and the filing of the patent. The court does not find that statement material to this litigation. . . . Further, even when taken as true, there is no showing in the pleadings that there is any intent to deceive on the part of [plaintiff]."

Exmark Manufacturing Company Inc. v. Briggs & Stratton Power Products Group, LLC, et. al., 8-10-cv-00187 (NED September 20, 2011, Order) (Bataillon, J.)

Which firms have been disqualified from representing a party in patent litigation?

In addition to tracking the litigation history of a patent or party, Docket Navigator also allows you to gather information about law firms and attorneys. Today’s Question of the Day asks about law firms that have been disqualified from representing a party in a patent case. We’ve answered that question below. (Please note: Disqualification may be based on a variety of facts and circumstances and does not necessarily reflect any failing or wrong-doing by the disqualified firm or attorney.)

Haynes & Boone
Highbury Chapman
Steptoe & Johnson
Howrey (2)
Diehl Servilla
Wilson Sonsini Goodrich & Rosati
DLA Piper (2)
Baker Botts
McKee, Voorhees & Sease
Barnes & Thornberg
Novak Druce & Quigg
Fish & Richardson
McDonnell Boehnen Hulbert & Berghoff
McKenna Long & Aldridge
Baker & McKenzie
Carlson Caspers Vandenburgh & Christiansen
Buchanan Ingersoll & Rooney (2)
Paul Hastings
Morrison & Foerster

While it is interesting to compile a list of disqualified law firms, it is probably even more interesting to compile a list of disqualification orders reflecting judges’ varied approaches to disqualification. Disqualification is one of those issues that is uniquely in the discretion of the district court and effectively unreviewable on appeal. So knowing how a particular judge approaches the question of disqualification, and how that judge has ruled on the issue in the past, could be critical to success on a motion to disqualify. To see how we compiled a comprehensive list of disqualification orders and derived the list of disqualified firms, watch this short video.

Allegation that Defendants Infringe the Same Patents in "Exactly the Same Fashion" Does Not Justify Joinder

The court granted defendants' motion to dismiss for misjoinder and dismissed four of five defendants. "[P]laintiff asserts that each of the accused instrumentalities is comprised of, among other things, a processor and its associated cache memory, a PWM rate controller, and portions of the BIOS software. Plaintiff has grouped defendants’ products into “uniform, homogenous groupings” based upon the processor family utilized in the accused instrumentalities, and plaintiff asserts each of the processors in the same group performs its portion of the power management accused of infringement in exactly the same fashion. Thus, plaintiff asserts, there are multiple common legal and factual questions presented by plaintiff’s infringement claims against defendants . . . Although plaintiff accuses defendants of infringing the [same] Patent in five similar ways, plaintiff does not allege that defendants’ infringement involved the 'same transaction, occurrence or series of transactions or occurrences.' Plaintiff has not alleged that defendants acted in concert or otherwise controlled or directed each others’ conduct – and indeed defendants appear to be ardent competitors of one another in the marketplace for their products; nor has plaintiff alleged any connection between defendants except for the fact that each defendant is alleged to have infringed plaintiff’s patent."

Optimum Power Solutions LLC v. Apple Inc., et. al., 3-11-cv-01509 (CAND September 20, 2011, Order) (Illston, J.)

Jim Lester of MacCord Mason wins Scavenger Hunt #2

Thanks to everyone who submitted a correct answer for our Scavenger Hunt this week. More than 60 attorneys found the correct answer with the powerful Docket Navigator patent litigation research database.

Congratulations to Jim Lester of MacCord Mason for winning the iPad2®.

We will be hosting another Scavenger Hunt next Wednesday, September 28, 2011 so be sure to ask for a free password to Docket Navigator so you'll be ready to search!

Docket Navigator Scavenger Hunt – Round 2!

Round 2 of the Docket Navigator scavenger hunt begins today! If you didn’t play last week, here’s how it works. We ask a Question of the Day, but instead of us giving you the answer, you get to FIND the answer using the Docket Navigator database. Correct answers can be submitted to win a guaranteed prize (2gb USB flash drive) and a chance to win an even bigger prize (an iPad2®)!

Last week, we received only 38 correct entries. That means the people who submitted correct answers had a 1 in 38 chance of winning an iPad2. Not bad odds for a prize worth more than $500! So if you didn’t play last week, take a few minutes to submit an answer. You’ll learn how to use an amazing resource, win a guaranteed prize, and be entered for a chance to win an iPad2. Plus, you’ll have some fun along the way.

Here's the catch: if you are going to participate in the scavenger hunt you have to play quickly. The deadline for submitting correct answers ends tonight at midnight. The drawing will be held tomorrow. It's a quick contest.

Here is today's question:

On two occasions, Judge Claudia Wilken of the Northern District of California has granted motions to dismiss for lack of subject matter jurisdiction because the declaratory judgment plaintiffs failed to assert facts sufficient to establish a “substantial controversy” under MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). In both cases, the declaratory judgment plaintiffs claimed that the defendants’ lawsuits against certain third parties created a substantial controversy. What relationship did those third parties have with the declaratory judgment plaintiffs?

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* iPad is a trademark of Apple, Inc., registered in the U.S. and other countries. Apple, Inc. does not endorse or sponsor Docket Navigator or its products or services.

Similarity Among Different Accused Software Applications Does Not Justify Joinder of Defendants

The court granted defendants' motion to sever plaintiff's infringement claims despite plaintiff's argument that "[e]ach Defendant has a mapping software application that uses [plaintiff's] patented data compression format. . . . Each Defendant operates its infringing mapping application via smartphones. Each Defendant . . . obtains the same mapping data from the same geocoding source." "Other courts have found . . . that these kinds of allegations do not satisfy the 'same transaction' requirement. This Court finds the reasoning of those cases persuasive and on that basis, grants Defendants’ motions to sever."

Tierravision, Inc. v. Research in Motion Ltd., et. al., 3-11-cv-00639 (CASD September 16, 2011, Order) (Sabraw, J.)

What is the shortest period of delay that a district has deemed sufficient to support a laches defense in recent decisions?

In the past twelve months, district courts have addressed the issue of litigation laches fifteen times. Two of those instances did not rule on the merits of a laches defense, but addressed evidentiary and procedural issues — whether a motion in limine to exclude discussion of laches at trial, and whether a party could amend its pleading to include a laches defense.

Of the thirteen orders that addressed the merits of a laches defense, seven found the defense did not apply either because the plaintiff’s reasons for delaying were adequate, or the defendant did not persuasively argue its case. The remaining six that upheld a laches defense involved delays of the following lengths:

■ 13 years (Collins, et al. v. Western Digital Technologies, Inc., et al)
■ 9 years (Lautzenhiser Technologies, LLC v. Sunrise Medical HHG, Inc., et al.)
■ 6 1/2 years (Bristol Company LP v. Bosch Rexroth Inc., et. al.)
■ > 6 years (Personal Audio LLC v. Apple, Inc., et al.)
■ 5 1/2 years (Ronald A Katz Technology Licensing LP v. Ameren Corp. et al.)
■ 5 1/2 years (IMX, Inc. v. E-Loan, Inc., et al)

See how we identified these cases using Docket Navigator.

Use of the Terms "Charger" "Recharger" and "Connector" Do Not Render Claim Indefinite

The court granted defendant's motion for summary judgment that its portable computer patent was not invalid as indefinite. "[Plaintiff] argues '[c]laim 3 fails for indefiniteness and for lack of enablement and written description,' and that claim 9 fails similarly. [Plaintiff], however, has no apparent difficulty in understanding the term 'recharger' as used in its invalidity argument . . . Chargers/rechargers were as ubiquitous at the time of the [patent-in-suit] application as they are now, and the dictionary defines both as devices for charging storage batteries. Claim 3 is not indefinite merely because the recharger is only shown in a single figure, sans the recharger connector. '[A]n applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.'"

Intermec Technologies Corp. v. Palm Inc., 1-07-cv-00272 (DED September 15, 2011, Order) (Robinson, J.)

How have district courts applied the prosecution laches defense in recent cases?

Nine years ago the Federal Circuit breathed new life into the defense of prosecution laches in Symbol Technologies, Inc. v. Lemelson Medical, Education & Research Foundation, 277 F.3d 1361, 1363 (Fed. Cir. 2002). The defense requires a showing of “unreasonable and unexplained delay” in prosecution and prejudice to the accused infringer. As applied to individual cases, much of the burden of interpreting whether a delay is “unreasonable and unexplained,” or the extent to which a defendant is harmed by such a delay, is left to the discretion of the court. Because of this, tracking recent court decisions on prosecution laches could provide unique insight when asserting or opposing a prosecution laches defense.

Docket Navigator not only keeps track of who is issuing orders regarding significant legal issues, but also summarizes each order on those legal issues, making it easy for you to both find the documents pertinent to your situation, and sift through them for valuable information.

To view the latest district court rulings on prosecution laches check out this video.

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Under what circumstances have district courts granted permanent injunctions in the past year?

There are several ways to search for orders in Docket Navigator's database, but the most commonly used method is by a type of motion. However, in addition to searching by type of motion, Docket Navigator allows you to search by the legal concepts addressed in court orders. This allows you to customize your search to find exactly what you are looking for.

For example, if you are looking for the total number of motions granted versus motions denied, you might search for a type of motion, i.e. “type of motion: motion for permanent injunction.” This search would yield all orders on motions for a permanent injunction, even orders where the court provided no explanation for its ruling.

On the other hand, if you were more interested in courts’ rationale — i.e., how they have applied Supreme Court or appellate decisions – you would want to search by legal issue, i.e., “legal issue: permanent injunction.” This search would yield all orders addressing the legal concept, regardless of whether that concept was addressed in an order on a motion for permanent injunction or some other type of motion (e.g., a motion to stay injunction pending appeal, etc.). This type of search is particularly useful when a legal concept can be addressed in many different types of motions. For example, substantive infringement, validity and enforceability issues can be raised in motions for judgment on the pleadings, summary judgment motions, motions for judgment as a matter of law, motions for new trial, etc. Likewise, challenges to the pleadings may be raised in motions to dismiss, motions to strike, motions for more definite statement, etc.

By selectively applying type of motion filters and legal issue filters you can ensure that your search results deliver exactly the information you need. See what filters we applied to answer today’s Question of the Day.

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Late Change of Position on Claim Construction Barred by Judicial Estoppel

The court granted defendant's motion for summary judgment of noninfringement of plaintiff's cell separation patent and rejected plaintiff's newly-adopted claim construction. "[T]hroughout this protracted litigation, both parties have consistently identified the 'plurality of tubes' as the umbilicus. . . . [T]he doctrine of judicial estoppel prevents [plaintiff] from now asserting a different construction of 'plurality of tubes.'"

Haemonetics Corp. v. Baxter Healthcare Corp., et. al., 1-05-cv-12572 (MAD September 13, 2011, Order) (Gorton, J.)

We Have A Winner!

Thanks to everyone who submitted a correct answer for our Scavenger Hunt this week. More than 30 attorneys found the correct answer with the powerful Docket Navigator patent litigation research database.

Congratulations to Wallace Lee of Latham & Watkins for winning the iPad2®.

We will be hosting another Scavenger Hunt next Wednesday, September 21, 2011 so be sure to ask for a free password to Docket Navigator so you'll be ready to search!

Plaintiff Ordered to Reduce Asserted Claims From "Between 88 to 121 Claims" to "31 Claims Across the Four Patents-in-suit"

Defendants' motion to limit the number of claims was granted and plaintiff was ordered to reduce its claims from 88-121 against each defendant to 31 claims across the four patents-in-suit. "The Court finds that limiting the amount of claims asserted by Plaintiff is appropriate at this time to aid in efficiency and narrowing the claims prior to claim construction. . . . Plaintiff may move the Court to add additional claims that present a distinct issue of infringement or invalidity, upon a showing of good cause."

Oasis Research, LLC v. Adrive, LLC, et. al., 4-10-cv-00435 (TXED September 13, 2011, Order) (Mazzant, M.J.)

Announcing the Docket Navigator Scavenger Hunt!

For the past few weeks we’ve been publishing a “Question of the Day” -- a question that is likely to arise in patent litigation, along with instructions on how to answer the question using the Docket Navigator database.

Starting today, and continuing each Wednesday in September, we’re hosting a scavenger hunt. Here’s how it works. We’ll ask a Question of the Day, but instead of providing an answer, you get to find the answer using the Docket Navigator database. Correct answers can be submitted to win a guaranteed prize (2GB USB flash drive) and a chance to win an even bigger prize (an iPad2®)!

Here's the catch: if you are going to participate in the scavenger hunt you have to play quickly. The deadline for submitting correct answers ends tonight at midnight central time. The iPad2® drawing* will be held tomorrow. It's a quick contest.

So take the challenge and see if you can answer the Question of the Day. It only takes a few minutes. You’ll learn how to use a terrific resource and win some great prizes along the way!


Here is today's question:

How many motions to bifurcate has Judge Sue Robinson of the District of Delaware granted since January 1, 2008? (Do not count motions that were granted in part.)

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* iPad is a trademark of Apple, Inc., registered in the U.S. and other countries. Apple, Inc. does not endorse or sponsor Docket Navigator or its products or services.

Permanent Injunction Against "Deriving Future Revenue" For Maintenance Services for Infringing Products is "Entirely Proper"

In granting plaintiffs' motion for a permanent injunction, the court found that defendants would have to remove or disable software sold pre-verdict when defendants collected a maintenance fee. "[Plaintiff] contends that [defendants'] ongoing revenue stream from maintenance associated with the infringing products constitutes products. That is, [plaintiff] argues that until [defendant] removes the infringing capabilities from a given customer's software, such revenue is associated with future infringing activity that should be enjoined. The Court agrees and finds that enjoining [defendants] from deriving future revenue from unmodified, infringing products is entirely proper."

Versata Software, Inc., et. al. v. SAP America, Inc., et. al., 2-07-cv-00153 (TXED September 9, 2011, Order) (Everingham, M.J.)

What is Judge Crabb’s track record in patent litigation?

District courts have a great deal of discretion in patent cases. Procedural rules, scheduling issues, fact and expert discovery, disclosure requirements, evidentiary matters, and many substantive rulings are all determined by a judge. And many of those rulings are effectively unreviewable. Obviously, the more you know about your judge the better you can advise and advocate for your client.

To help, we created the Judge Summary Page — a single location where you can access a judge’s track record of past rulings in patent cases. In this case, our question is regarding the Honorable Barbara Crabb of the Western District of Wisconsin. A review of her Judge Summary Page reveals that Judge Crabb has, among other things:

- Presided over more than 190 patent cases
- Deemed 25 patent claims infringed and 55 not infringed
- Deemed 8 patent claims invalid and 15 not invalid
- Issued 14 permanent and 2 preliminary injunctions
- Granted 23 motions for summary judgment of noninfringement and denied only 8
- Denied 5 motions for enhanced damages or attorneys’ fees and granted only 1.

To see how we located the Judge Summary Page for Judge Crabb, watch today’s video.

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Damages Expert Opinion Based on "50% Profit Sharing Rule" Was Not Unreliable

The court denied in part plaintiff's motion to strike the second supplemental report of defendant's damages expert even though the expert relied on "a 50% profit sharing rule" that plaintiff argued was "not based on an authoritative source." "[T]he record demonstrates that [defendant's expert] based her opinion regarding the general expectation for a company during a negotiation upon her 'review of thousands of agreements over the 33 years of [her] career.' The court concludes that [the expert's] experience in reviewing comparable agreements is sufficient to establish the reliability of her methodology."

Solvay S.A. v. Honeywell Specialty Materials LLC, et. al., 1-06-cv-00557 (DED September 8, 2011, Order) (Robinson, J.)

"We Had to Look Hard" Not Adequate Justification For Untimely Expert Report Addressing New Prior Art

The court granted defendant's motion to strike the supplemental report of plaintiff's invalidity expert which included a new prior art reference. "[P]laintiff says that the reference was 'not readily available,' but it does not suggest that its failure to discover the reference earlier is defendant’s fault. In any event, plaintiff does not identify any particular reason why it could not have found the reference in time to include in its main report. 'We had to look hard' is not an adequate justification for advancing an untimely new opinion."

Extreme Networks, Inc. v. Enterasys Networks, Inc., 3-07-cv-00229 (WIWD September 7, 2011, Order) (Crabb, J.).

What is the litigation history of U.S. Patent No. X?

Like its prosecution history, a patent’s litigation history can have significant impact on current enforcement efforts. But quickly and accurately gathering litigation history about a patent (or more so for a group of patents) can be a nearly impossible task.

That’s why Docket Navigator created Patent Summary Pages. A Patent Summary Page is where all of the pertinent information about a patent’s litigation history — past cases, past claims constructions, past determinations about infringement, validity or enforceability, past remedies, etc.– appears in a single location that can be accessed in just a few seconds.

For example, by accessing the Patent Summary Page for U.S. Patent No. 7,558,083, we quickly discovered the following:

- In the past two years the patent has been asserted in four cases, two alleging infringement and two seeking declaratory relief.
- Fourteen separate claims terms have been construed in past litigation.
- A fifteenth claim term – ”filter inductor directly connected to plural of the windings of the at least one transformer” — has been deemed indefinite rendering all claims containing that element invalid.
- A jury has determined that the patent was infringed and that the patent was not invalid.
- A court has entered multi-million dollar damages awards and over a dozen injunctions due to infringement of the patent.

Today’s short video shows you how to access the Patent Summary Page for any litigated patent.

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Failure to Timely Produce Source Code and Violation of Protective Order Warrant Attorneys' Fee Sanction at $630 Blended Rate

Plaintiff's motion for sanctions against defendant for failing to timely produce all of its source code and for violating a protective order was granted in part. "Instead of complying with the Court’s order, [defendant] decided to pick and choose which versions of its code to produce, and to make an arbitrary cut-off as to which of its code it deemed relevant for [plaintiff's] case. [Defendant] did so at its peril because it was specifically warned not to do so." In granting in part plaintiff's motion for sanctions, the court found that the proposed "blended billing rate of $630 -- the average billing rate of the . . . time keepers on this matter" was reasonable.

Brocade Communications Systems, Inc., et. al. v. A10 Networks, Inc., et. al., 5-10-cv-03428 (CAND September 6, 2011, Order) (Koh, J.)

Will the term “patent troll” really be allowed in court?

Probably not. In yesterday’s edition of the Docket Report, the lead story focused on a motion to strike the phrase “patent troll” from plaintiff’s complaint in Highland Plastics, Inc. v. Sorensen Research & Development Trust, 2-11-cv-02246 (CACD August 17, 2011, Order) (Otero, J.). In denying the motion, the court explained that the ”term [is] commonly used and understood in patent litigation and is not so pejorative as to make its use improper.”

That may be true in the context of striking a pleading, but is it true overall? How about at trial?

These are the types of questions Docket Navigator was designed to answer. How have judges ruled on specific types of motions, based on specific types of arguments and evidence? Are certain arguments or positions more likely to succeed at one point in the litigation than another? Making the right call can save your client’s resources and result in success on the merits. The wrong call can lead to the opposite consequences. Here’s how Docket Navigator can help. Check out this video to see how we did the search.

First, we searched Docket Navigator for (i) orders on motions to strike pleadings (or portions thereof) where (ii) the basis for the motion was FRCP 12(f). (Rule 12(f) empowers a court to strike “redundant, immaterial, impertinent, or scandalous matter.”) Not counting the Highland Plastics case discussed above, our search returned seven results. Six of the seven were denied. The seventh was a sua sponte order prompted by a pleading that was “extraordinarily turgid (almost as though its counsel was seeking to make the pleading itself the subject of a patent application).” In addition to the statements in the Highland Plastics case (use of the term “patent troll” and allegations that defendant “ranks sixth as the most patent litigious entity”), courts have declined to strike pleadings that contain:

- “Confidential communications” allegedly covered by FRE 408;
- “[C]haracterizations of [plaintiff's] subsidiaries as patent litigation vehicles”;
- “[P]re-filing communications” between the parties;
- Allegations that “plaintiff’s founder/president had founded defendant’s predecessor, invented defendant’s patents-at-issue, and signed a non-disclosure agreement when he resigned from that company”;
- Allegations of “alter ego liability, the Defendants’ learning of [plaintiff] and its patented technology, as well as [plaintiff's] allegations of Defendants’ attempt to ‘kill’ [it]“; and
- References to “three undisclosed items” that had previously been deemed insufficient to support an inequitable conduct claim.

From these rulings we can conclude that FRCP 12(f) sets a very high bar for striking pleadings or portions of pleadings. In fact, one might conclude that the only material egregious enough to clear the bar would also prompt a sua sponte order. At least that has been the track record so far.

Second, we changed our search criteria to focus on motions in limine instead of motions to strike. Specifically, we searched Docket Navigator for (i) orders on motions in limine directed to statements by counsel, where (ii) the order contains the term “troll.” Once again, we received seven results. But this time, the motions were uniformly granted. Indeed, in six of the seven motions, the parties stipulated that the term could not be used at trial. We did not discover a single case where a court deemed it proper to use the term “patent troll” at trial.

The message here seems clear: context is everything. Challenging the use of “patent troll” and other potentially derogatory terms at the pleading stage has nearly always failed. But challenging those same statements in a motion in limine has uniformly succeeded. So, while the term might stay part of the pleadings it is unlikely to be used at trial.