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.)