Thursday, December 29, 2011

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)

Wednesday, December 28, 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.)

Wednesday, December 21, 2011

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.)

Tuesday, December 20, 2011

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., Inc.
, et. al., 3-11-cv-00948 (CTD December 15, 2011, Order) (Hall, J.)

Monday, December 19, 2011

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.)

Friday, December 16, 2011

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.)

Thursday, December 15, 2011

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.)

Wednesday, December 14, 2011

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.)

Monday, December 12, 2011

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.)

Thursday, December 8, 2011

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.)

Wednesday, December 7, 2011

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.)

Tuesday, December 6, 2011

"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.)

Monday, December 5, 2011

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.)

Friday, December 2, 2011

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.)

Thursday, December 1, 2011

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.)