Reexamination Stayed Pending Outcome of Concurrent Inter Partes Review

The Board ordered the stay of a concurrent, ordered, ex parte reexamination proceeding of the same patent for which the petitioner filed a petition for inter partes review. "Conducting the reexamination concurrently with this proceeding would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings.... In addition, the Board is required to determine whether to institute an inter partes review within three months of receiving a preliminary response from the Patent Owner, or the date on which such a response is due (i.e. April 30, 2013).... The final determination of any review instituted will normally be issued no later than one year from institution.... Any Board decision on whether to institute a review or final written decision with respect to the patentability of the challenged claims will likely simplify the issues in the reexamination."

Petition for Inter Partes Review by InVue Security Products Inc., IPR2013-00122 (PTAB April 2, 2013, Order) (Bisk, APJ).

In-House Technology Acquisition and Litigation Counsel Precluded from Accessing Defendant’s Confidential Technology

The court denied plaintiff's request for its in-house attorney to have access to defendants' confidential information under the parties' proposed protective order. "Defendants . . . submit that while Plaintiff does not make any products, it is in the business of acquiring technology relating to heating, ventilation, and air conditioning; licensing products that compete with Defendants’ products; and litigating similar patents. . . . Defendants further argue that if Plaintiff’s in-house counsel is given access to Defendants’ confidential information such as existing or future technology, Plaintiff could target its technology searches in areas practiced by Defendants and actively seek technology rights to assert against Defendants’ products. . . . The Court finds all of Defendants’ arguments logical and persuasive and will adopt Defendants’ position."

HVAC Modulation Technologies, LLC v. Lennox Industries, Inc., 0-12-cv-02529 (MND April 25, 2013, Order) (Graham, M.J.).

Unreasonable Claim Construction Position Based on Extrinsic Evidence Warrants Award of Attorneys’ Fees

The court granted in part defendant's motion for attorneys' fees under 35 U.S.C. § 285 because plaintiff acted in bad faith in filing and pursuing its infringement action. "The ordinary meaning of 'paint roller' is readily apparent. . . . Ignoring this, [plaintiff] persisted in its argument that 'paint roller' would be understood by a person of ordinary skill in the art to mean bare paint-retaining materials — and not a standard, commercially available roller composed of paint-retaining material affixed to a rigid inner core. This proposed construction fell dismally below the reasonableness threshold. . . . [Plaintiff] argues that its proffered construction was reasonable because it relied on its experts, especially the [inventor], as a basis for its claim construction. . . . Reliance on expert testimony may be reasonable in proffering or supporting proposed claim construction. But [plaintiff] went well beyond this. What [plaintiff] really argues is that it was reasonable to rely on extrinsic evidence in an attempt to circumvent the otherwise clear language of the [patent-in-suit]. This contention is not supported by the law."

Lakim Industries, Inc. v. Linzer Products Corporation, 2-12-cv-04976 (CACD April 24, 2013, Order) (Wright, J.).

No Need to Strike “Patent Troll” From Declaratory Judgment Complaint

The court denied defendant's motion to strike the term "patent troll" in plaintiff's declaratory relief complaint. "[W]hile the term 'patent troll' describes entities that engage in negative, even aggressive, behavior, it is not so extreme or salacious that it warrants an exercise of the Court's discretion under [Rule 12(f)]. In fact . . . the term is readily applied in the public sphere. Moreover, the term, and the conduct to which it refers, describes behavior at the heart of plaintiff's claim that [defendant] is unlawfully attempting to interfere with its business. . . . While plaintiff's use of the term in the amended complaint plainly seeks to cast [defendant] in a negative light, [defendant] has not presented a sufficiently 'strong reason' to support granting a motion to strike."

Viber Media, Inc. v. Rates Technology Inc., 1-13-cv-00953 (NYSD April 23, 2013, Order) (Cote, J.).

Failure to Allocate Between Infringing and Noninfringing Sales of Accused Products Precludes Injunctive Relief

The court denied plaintiffs' motion to reconsider an earlier order denying as moot plaintiff's request for injunctive relief. Instead, the court granted defendants' motion for judgment as a matter of law that plaintiffs failed to establish liability under 35 U.S.C. § 271(f)(1) or § 271(a). "Although defendants did not deny that plaintiff had adduced evidence that some of the accused products included a substantial portion of components supplied from the United States . . . defendants argued that 'some' was not enough because plaintiff adduced evidence only as to defendants’ total worldwide sales, so defendants were entitled to judgment as a matter of law unless all of those sales fell under § 271(a) or (f)(1). . . . [P]laintiff argues that it is still entitled to one because it has proven that some of defendants’ sales of the accused products violated § 271(a) and § 271(f)(1). However, even if I agreed with plaintiff that some unspecified amount of defendants’ sales fall within § 271(a) or § 271(f)(1), plaintiff points to no findings by this court or the jury that would allow the court to determine what the proper scope of any injunction should be. . . . Plaintiff did not ask for a jury question on the extent to which defendants violated § 271(a) or § 271(f)(1) with respect to particular accused products. Plaintiff fails to explain in any of its briefs under what authority the court could issue an injunction in the absence of those findings."

Promega Corporation, et. al. v. Life Technologies Corporation, 3-10-cv-00281 (WIWD April 22, 2013, Order) (Crabb, J.).

Pro Hac Vice Counsel May Take Depositions in PTAB Proceedings

Following the initial conference, the Board clarified that lead counsel and back-up counsel may take and defend depositions in a PTAB proceeding. "It is requested clarification on who may attend depositions, such as the client or litigation counsel, including clarification as to whether counsel who have been admitted pro hac vice may take and defend a deposition. . . . absent a specific Board order to the contrary, the Board allows counsel who have been admitted pro hac vice to represent the client in all matters, including the taking and defending of depositions."

Petition for Inter Partes Review by Ariosa Diagnostics, IPR2012-00022 (PTAB April 19, 2013, Order) (Green, APJ).

Invalidity Counterclaims Not Barred by Prior (Non-Settlement) Agreement Not to Challenge Validity

The court denied plaintiff's motion for summary judgment that defendant was estopped from asserting its invalidity counterclaims by the parties' prior agreements. "[Plaintiff] contends that [defendant] is contractually estopped from asserting the invalidity claims because [it] explicitly promised not to challenge the validity of [plaintiff's] patents in both the Development Agreement and the License Agreement. . . . In Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969), the Supreme Court held that a licensee was not estopped, by virtue of the license, from challenging the validity of a related patent. . . . [B]ecause the concerns about enforcing settlement agreements are not present in this case, the Court finds that [defendant] is not contractually estopped from challenging the validity of the [plaintiff's] patents. Indeed, if avoiding the effect of Lear were so simple, all but an incompetent patent lawyer would draft a contractual waiver, thus eviscerating the policy considerations under Lear with a few key strokes."

Biocell Technology LLC v. Arthro-7 Inc., et. al., 8-12-cv-00516 (CACD April 18, 2013, Order) (Selna, J.).

Plaintiff’s Familiarity with Accused Products Warrants Reduction in Number of Asserted Claims

The magistrate judge granted in part defendant's motion to limit the number of asserted claims where plaintiff identified 247 claims across 10 patents. "[Defendant] points to the parties' prior litigation history [at the ITC]. According to [defendant], [plaintiff] accuses the same products here as in the ITC case. . . . As a result, [plaintiff] knows how these products work, what they do, and should have an adequate understanding of its case to narrow the 247 claims. . . . The fact that the parties have recently engaged in litigation over the products at issue here weighs in favor of limiting [plaintiff's] representative claims . . . and the court orders that [plaintiff] shall limit its asserted claims to no more than seventy."

Unwired Planet, LLC v. Apple Inc., 3-12-cv-00505 (NVD April 17, 2013, Order) (Cooke, M.J.).

Lack of Funds to Pursue Litigation does not Excuse Seven Year Delay Underlying Laches Defense

The court granted defendant's motion for summary judgment that plaintiff's infringement claims were barred by laches and rejected plaintiff's argument that its seven year delay was reasonable because it could not afford to sue defendant sooner. "Plaintiff argues that it could not afford to litigate against Defendant until 2011 when the lawsuit with a third party . . . was completed by settlement, so its delay was excusable. Plaintiff, however, has cited no authority holding that the inability to afford litigation excuses delay in filing, and the caselaw is to the contrary. Therefore, Plaintiff’s lack of funds does not excuse its delay."

Avocet Sports Technology, Inc. v. Polar Electro, Inc., 3-12-cv-02234 (CAND April 16, 2013, Order) (Laporte, M.J.).

Lack of Infringement at Importation does not Require ITC Finding of Noninfringement

The court denied respondents' motion for summary determination of noninfringement as to the method claims of complainant's asserted electronics patents. "[Respondent] seeks a summary determination finding that [the] accused products do not directly infringe [complainant's] asserted method claims. [Respondent] argues that such a finding is required because "[complainant] has wholly failed to demonstrate that the direct infringement of any of these method claims occurs . . . at the time of importation, as is required for a finding of a violation of Section 337." This is an incorrect tautology; [complainant's] failure to demonstrate direct infringement of the accused products at the time of importation does not prevent a finding of direct infringement of the method claims, it only prevents a finding that the direct infringement constitutes, in and of itself, a violation of Section 337."

Electronic Devices, Including Mobile Phones and Tablet Computers, and Components Thereof, 337-TA-847 (ITC April 14, 2013, Order) (Pender, ALJ).

Expert Damages Testimony Based on “Nash Bargaining Solution” Excluded

The court granted defendant's motion to exclude the testimony of plaintiff's damages expert which was based on the Nash Bargaining Solution. "[T]he hypothetical negotiation conducted by [plaintiff's expert], based on the Nash Bargaining Solution, does not appear to be tied to the facts of this case. . . . [His] opinion is, in essence, (i) the application of Georgia-Pacific factors, followed by (ii) the application of a 50/50 split, derived from the NBS. Put simply, [his] damages opinion is not meaningfully distinguishable from the [25% rule of thumb] damages opinion rejected in [Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011)]. . . . [He] does not explain why these parties would have accepted a 50/50 split. Thus, the '50/50 split' is plainly not tied to the facts of this case and is essentially no different from the 25% rule of thumb rejected in Uniloc."

Suffolk Technologies, LLC v. AOL, Inc., et. al., 1-12-cv-00625 (VAED April 12, 2013, Order) (Ellis, J.).

Apple and Motorola Admonished to Reduce Size and Complexity of Case Without Court Intervention

The court denied a joint motion by Apple and Motorola for a case management conference, but granted their request to extend Markman deadlines. "Both Apple and Motorola greatly expanded the scope of this patent litigation by, among other things, supplementing patent infringement and invalidity contentions. The litigation now includes over 180 claims asserted from the 12 patents, and the parties dispute the meaning of over 100 terms from those claims. . . . Although the parties agree that the case needs to be simplified . . . the parties unsurprisingly have been unable to agree on how to accomplish this goal. Without a hint of irony, the parties now ask the Court to mop up a mess they made by holding a hearing to reduce the size and complexity of the case. The Court declines this invitation. . . . [T]he parties’ obstreperous and cantankerous conduct — combined with the existence of similar cases by the same parties or their affiliates throughout the world — makes it plain that the parties have no interest in efficiently and expeditiously resolving this dispute; they instead are using this and similar litigation worldwide as a business strategy that appears to have no end. That is not a proper use of this Court. Perhaps because the parties correctly suspected that the Court would balk at their request to clean up their mess, the parties also suggest delaying the Markman process until they can narrow the case themselves. Since that puts the onus where it belongs, that is what the Court will do."

Motorola Mobility LLC v. Apple Inc., 1-12-cv-20271 (FLSD April 10, 2013, Order) (Scola, Jr., J.).

No Extension of Permanent Injunction Sunset Provision to Qualify Redesign

The court denied defendant's motion to extend the sunset provision of a permanent injunction from 18 to 26 months so that defendant's customers could qualify defendant's redesigned product. "[T]he Court never intended the sunset period as a guaranteed safe harbor for [defendant] and its customers, insulating them from the vicissitudes of product development. Having violated the patent laws, [defendant] has no entitlement to additional time to develop non-infringing products which it should have developed in the first instance had it honored [plaintiff's] patent rights."

Broadcom Corporation v. Emulex Corporation, 8-09-cv-01058 (CACD April 8, 2013, Order) (Selna, J.).

Proper Joinder as to a Single Claim Precludes Misjoinder as to Other Independent Claims

The court denied defendants' motion to sever retailer defendants from plaintiff's infringement action for misjoinder. "[Plaintiff] accuses each defendant of infringement by making, using, selling, or offering to sell [the manufacturer defendants' game] systems. Thus, there is at least one common claim of patent infringement against all defendants for the same accused product. . . . Both Rule 20 and the [America Invents Act] allow for the joinder of two parties accused of patent infringement if any right to relief is asserted against the parties jointly, severally, or in the alternative. The word 'any' indicates that so long as joinder is appropriate for one or more claims, misjoinder will not result from the presence of other independent infringement claims against a defendant." UltimatePointer, LLC v. Nintendo Co., Ltd., et. al., 6-11-cv-00496 (TXED March 27, 2013, Order) (Davis, J.).

Stay Pending Inter Partes Review May Apply Only to Parties Stipulating to Litigation Estoppel

The court ordered additional briefing following plaintiff's submission of its unopposed motion to stay pending inter partes review. "The PTO has not yet acted on the petitions [for inter partes review]. . . . Fact discovery is complete. . . . The parties appear to agree that the litigation estoppel provided by statute would only apply against [the defendant who submitted the petition for inter partes review], and that it may only be effective after all appeals of the PTO’s decision are exhausted. The Court indicated that it believes that granting a stay at this point in the proceedings may not save much effort unless all parties to the stay are bound by the outcome of the inter partes review. One defendant indicated that it was willing to stipulate to be so bound. The Court agreed to give the other defendants time to consider the issue before the Court rules on the instant motion, as the Court is considering a stay that applies only to the parties who would be bound by the outcome of the inter partes review."

Achates Reference Publishing, Inc. v. Symantec Corporation, et. al., 2-11-cv-00294 (TXED April 5, 2013, Order) (Payne, M.J.).

Seventeen Year Prosecution History Alone does not Result in Laches

The court denied plaintiff's motion for summary judgment that defendants' reissued DNA fingerprinting patent was unenforceable due to laches because of a 17 year prosecution history from the original application to issuance. "[Plaintiff] has not shown that the inventors deliberately delayed prosecution, either to enable [defendants] to capture later-developed technology or to extend the term of the patent. Nor has [plaintiff] shown that any of the delays were unreasonable. . . . [Plaintiff] cannot explain what it would have done differently if the patent had issued earlier, or how it relied on, or was harmed by, the delay. [It] raises the specter that long patent prosecutions will hide inventions from the public, slowing scientific progress. But that did not occur here. . . . No one disputes that the invention gained widespread use in the genetic analysis industry despite the delay."

Promega Corporation v. Applied Biosystems, LLC, 1-13-cv-02333 (ILND April 4, 2013, Order) (Posner, C.J.).

Section 337 Violation Based on Method Claim Requires Infringement at the Time of Importation

Following a hearing on remand, the ALJ found no violation of section 337 regarding complainants' data communication network patent. "In view of the Commission’s opinion in [Certain Electronic Devices with Image Processing Systems, Components Thereof and Associated Software, Inv. No. 337-TA-724], it is now apparent that [respondent] does not directly infringe the asserted claims 1 and 12 at the time of importation. . . . The Commission’s opinion in Electronic Devices holds that the practice of an asserted method claim within the United States after importation cannot serve as the basis for an exclusion order. . . . [I]n order to use an accused Xbox 360 system in an infringing manner, one must use the Xbox console in conjunction with a wireless accessory such as a Wireless controller. . . . [T]here is no evidence that Microsoft directly infringes asserted claims 1 or 12 at the time of importation."

Gaming and Entertainment Consoles, Related Software, and Components Thereof, 337-TA-752 (ITC April 1, 2013, Order) (Shaw, ALJ).

Plaintiff’s Location as “Artifact of Litigation” Given Little Weight in Venue Analysis

The court granted defendant's renewed motion to transfer venue from the Southern District of Florida to the Southern District of California and gave little weight to plaintiff's choice of forum. "[Plaintiff's] parent company . . . is based in Canada and [plaintiff's] 'presence in Florida appears to be simply an artifact of litigation.' [Plaintiff] admits that its decision-making to base itself in Florida took into account 'federal district courts that are knowledgeable concerning patent matters, participate in the patent pilot program, and maintain an expedited docket compared to other jurisdictions.' [Plaintiff's] only Florida employee is a patent attorney. . . . Given these circumstances, little weight should be given to the Plaintiff's choice of forum."

Wi-LAN USA, Inc., et. al. v. Apple Inc., 1-12-cv-24318 (FLSD April 2, 2013, Order) (Moore, J.).

Obvious Solution to Nonobvious Problem Does Not Render Patent Invalid

The court denied defendant's motion for summary judgment that two of plaintiff's medical imaging patents were invalid as obvious. "[Defendant] has, at its disposal, the use of common sense in this analysis. But mere recitation of the phrase 'common sense' will not do. . . . [Defendant] argues that '[i]f we look at the inventors’ options to accomplish each function, it is undeniable they were obvious' . . . The flaw with this argument is that it assumes that the PHOSITA would have an awareness of the problem solved by the invention. Often, the inventive contribution lies in defining the problem in a new revelatory way. Once the problem is defined, the solution might well be obvious; but the problem remains non-obvious. If courts invalidated patents simply because the problems described in the specifications bore obvious solutions, a significant percentage of existing patents would vanish. Such an analysis almost invites hindsight bias. . . . [Defendant] has not submitted evidence of the extent of the design need or market pressure which would have provided the [person having ordinary skill in the art] with a blueprint of the problem to be solved. The patent cannot provide this blueprint."

DatCard Systems Inc. v. PacsGear Inc., 8-10-cv-01288 (CACD April 1, 2013, Order) (Pfaelzer, J.).

Proceeding With Litigation Following Unfavorable Claim Construction Warrants Attorneys’ Fees

The court granted in part defendants' motion for attorneys' fees under 35 U.S.C. § 285 following summary judgment of noninfringement. "[D]efendants filed the instant motion for attorneys’ fees pursuant to 35 U.S.C. § 285 or, in the alternative, 28 U.S.C. § 1927. Defendants seek to recover fees and costs accrued between the time the Court issued its Order Regarding Claim Construction . . . and the Court’s grant of summary judgment . . . [Plaintiff] persisted in litigating this case even after its own expert conceded that the processors in defendants’ chips cannot access all of the condition code storage locations. [Plaintiff's] decision to proceed, not only in the face of the Court’s claim construction, but in light of its own expert’s testimony supporting a finding of non-infringement, 'prolonged the litigation in bad faith.' Thus, this case is exceptional under 35 U.S.C. § 285. . . . [D]efendants are entitled to recover fees and costs incurred between . . . the date of [plaintiff's expert's] deposition [and] when the Court granted defendants’ motion for summary judgment."

BIAX Corporation v. NVIDIA Corporation, et. al., 1-09-cv-01257 (COD March 30, 2013, Order) (Brimmer, J.).

No Permanent Injunction Where Plaintiff Emphasized Certainty of Damages Case and did not Seek Preliminary Injunction

Following a bench trial, the court denied plaintiffs' motion for a permanent injunction against defendant's surgical tools. "[T]he Court finds that Plaintiff did not prove the [irreparable injury] prong, as [its] first witness who testified at trial . . . was unable to articulate why if [plaintiff] has endured infringement and harm to its reputation since 2004, it never sought preliminary injunctive relief. Throughout trial, [plaintiff] has been emphatic as to its entitlement to lost profits and to a certain royalty rate, which further supports the position that 'remedies available at law, such a monetary damages,' are fully adequate to compensate for [its] injury." Tyco Healthcare Group LP, et. al. v. Ethicon Endo-Surgery Inc., 3-10-cv-00060 (CTD March 28, 2013, Order) (Arterton, J.).