Tuesday, October 17, 2017

Litigation Counsel's Involvement in Subpoena-Based Survey Renders Results Unreliable

The court granted defendant's motion to exclude the testimony of plaintiff's expert regarding his subpoena-based survey of 170 customers because counsel's involvement in the survey rendered the results unreliable. "Defendants argue that [plaintiff's counsel] essentially urged [survey] respondents to provide quick estimates rather than thoughtful investigations, thus rendering the survey inadmissible. . . . By emphasizing the quickly approaching litigation deadlines, the law firm implicitly encouraged at least [one customer] to produce any figure as a response, which seriously undermines the integrity of the received responses. . . . [T]he law firm’s correspondence with respondents regarding the scope of the question and the need for quick responses indicates the law firm’s ability to influence the survey results, which Plaintiff has admitted is improper. Because of the extensive attorney involvement here, the survey is unreliable and should thus be excluded."

Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al, 6-11-cv-00492 (TXED October 13, 2017, Order) (Mitchell, MJ)

Monday, October 16, 2017

Evidence That Patents Survived 20 Reexamination and IPR Proceedings Excluded Under FRE 403

The court granted defendant's motion in limine to exclude evidence under FRE 403 that the patents-in-suit survived 20 reexaminations and inter partes review proceedings. "Because of the effect of IPR estoppel, the IPRs necessarily covered different prior art than will be used at trial. Whether that prior art was sufficient to invalidate the patents, as a general proposition, is irrelevant to the specific prior art at issue here. For that reason, admitting evidence of the IPRs is likely to mislead the jury into believing that because the patents-in-suit have survived many attacks, they must be valid against the present attacks. . . . Moreover, to the extent that IPR estoppel does not apply, such as for references petitioned but not instituted, there is no reason to show the jury that IPR was not instituted because the Federal Circuit has instructed that it does not matter the reason for the decision not to institute IPR."

Milwaukee Electric Tool Corporation et al v. Snap-On Incorporated, 2-14-cv-01296 (WIED October 12, 2017, Order) (Stadtmueller, USDJ)

Friday, October 13, 2017

Plaintiff's Failure to Conduct Due Diligence as to Standing Justifies Award of Attorney Fees Under § 285

Following a dismissal for lack of standing, the court granted defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation tactics were unreasonable. "[Plaintiff] brought this lawsuit without performing sufficient due diligence as to whether it had standing. It is clear from the pleadings that, from the outset, [plaintiff] was aware of the root of its standing issues. . . . Despite naming [the patent owner] as a co-plaintiff in the Complaint -- in essence, an admission that [the owner] was a necessary party -- [the owner's] signature or any identification of its counsel are conspicuously absent from the Complaint. . . . [Plaintiff's] litigation conduct makes this case exceptional because it insisted on maintaining this lawsuit even when faced with mounting evidence that it lacked standing. . . . [A]lthough the Court is not convinced that it rises to the level of intentional misrepresentation, [plaintiff] at least obfuscated the fact that there were potential problems with its standing."

Max Sound Corporation et al v. Google Inc. et al, 5-14-cv-04412 (CAND October 11, 2017, Order) (Davila, USDJ)

Thursday, October 12, 2017

Colloquial Reference to Facility Location Does not Establish "Physical Presence by Estoppel"

The court granted defendant's alternative motion to transfer for improper venue and rejected plaintiff's request to transfer its action from the Middle District of Tennessee to the Western District of Tennessee because defendant did not have a physical presence in that forum. "Plaintiff does not allege any physical presence by the Defendant in the Western District, and concedes that Defendant’s 'Memphis' facility is located in Mississippi. . . . Plaintiff also alleges that Defendant has previously stated that they maintain a 'Memphis' facility and that Defendant cannot now deny those representations. The correspondence that Plaintiff relies on, however, uses 'Memphis' as a colloquial reference to the facility’s location, rather than a representation that the facility is located in Memphis. Accordingly, Plaintiff’s 'physical presence by estoppel' argument fails to compensate for the factual shortcomings reflected in the record."

JPW Industries, Inc. v. Olympia Tools International Inc., 3-16-cv-03153 (TNMD October 10, 2017, Order) (McCalla, USDJ)

Wednesday, October 11, 2017

Evidence of More Than 1,000 Pre-Litigation Licenses May Show Established Licensing Program, Obviating Need for Individualized Comparability Analysis and Apportionment

The court denied in part defendant's motion in limine to preclude plaintiffs from presenting evidence of more than 1,000 pre-litigation licenses under the MPEG standards because the number of third party licenses was relevant under FRE 401 to issues other than infringement. "[E]vidence of plaintiffs' licenses with third parties, including the number of licenses, is relevant to damages, validity, willfulness, and in responding to claims that plaintiffs are litigious. . . . [E]vidence of plaintiffs' third-party licenses, including the number of such licenses, is relevant to the issue of damages as it relates to the issue of general acquiescence and an established royalty. . . . [I]f plaintiffs can show an established licensing program, a separate comparability analysis for each license entered into pursuant to that program is not necessary and concerns regarding apportioning value to account only for the value of the patents-in-suit will be an issue for the jury. . . . [Defendant's] attacks on the comparability of the 1,000 plus third-party licenses, including that the licenses cover patents other than the patents-in-suit and that [defendant's] circumstances differ from the third-party licensees, go to the weight to be accorded the evidence, not its admissibility."

Audio MPEG, Inc. et al v. Dell, Inc., et al, 2-15-cv-00073 (VAED October 6, 2017, Order) (Krask, MJ)

Tuesday, October 10, 2017

Undeveloped Expert Report Calls For Deposition Before Production of Opposing Report

The court denied plaintiffs' motion to strike the report of defendants' expert for including a previously undisclosed obviousness theory because defendants' contentions sufficiently supported the expert report, but allowed plaintiffs to take the expert's deposition before producing their own expert's report. "[Defendants' invalidity contentions] disclose every item of prior art that renders the asserted claims obvious utilized by [the expert] in his report as well as the combinations of prior art used. They also provide an explanation of how a POSA would have been motivated to start with the exemplary compounds identified in [two sets of prior art references] to arrive at the linagliptin molecule at issue here. While Defendants could have included additional information in their invalidity contentions, the Court finds that said contentions provide a sufficient outline to support the more detailed narrative provided in [the expert's] report. . . . Nevertheless, the Court is sensitive to Plaintiffs’ apprehension that given the general nature of certain of [defendants' expert's] opinions, their expert would be hard-pressed to respond to same. Indeed . . . [the expert] does not identify what would be synthesized, what would be run through [a drug discovery process not disclosed in the invalidity contentions], what the hits would be, what the lead compound would be, how analogs would be created from the lead compound or how the analogs would be modified to reach linagliptin. Plaintiffs are concerned that given the lack of certain details not only would their expert have difficulty responding to same, but [the expert] may at some point in the future attempt to fill in the gaps. The Court finds that these are reasonable concerns. As such, while not usually the case, the Court shall permit Plaintiffs to depose [him] before producing their expert report."

Boehringer Ingelheim Pharmaceuticals, Inc. et al v. HEC Pharm Group et al, 3-15-cv-05982 (NJD October 5, 2017, Order) (Bongiovanni, MJ)

Friday, October 6, 2017

Failure to Correct Examiner’s Misunderstanding of Prior Art No Grounds for Inequitable Conduct Defense

The court granted plaintiff's motion to strike as insufficient defendant's inequitable conduct defense based on plaintiff's failure to correct an examiner's misunderstanding of a prior art reference. "[Defendant] argues that although disclosure of prior art is usually enough to avoid a charge of inequitable conduct, when the patent examiner made clear that he misunderstood the scope of [a reference's] disclosure, the prosecuting attorney had a duty to respond to the examiner's confusion by pointing out that [the reference] inherently disclosed the pulse width limitation. Although this argument is not unreasonable, it goes against the great weight of the case law. . . . [E]ven if there could be a factual scenario where an inventor commits inequitable conduct by failing to clear up a misunderstanding of prior art held by a patent examiner that the patent examiner could have recognized on his own, the specific facts alleged here by [defendant] would not rise to the level of inequitable conduct."

Nevro Corp. v. Boston Scientific Corporation et al, 3-16-cv-06830 (CAND October 4, 2017, Order) (Chhabria, USDJ)

Thursday, October 5, 2017

Preliminary Injunction Requires Connection Between Alleged Infringement and Alleged Harm

The court denied defendants' motion for a preliminary injunction to preclude the sales of plaintiffs' advanced energy vessel sealing instruments because defendants failed to establish irreparable harm. "Because . . . it is far from 'clear' on the present record that there is any connection between [plaintiffs'] alleged infringement and the harms [defendants] cite[] – the Court need not consider whether those harms are, in fact, irreparable. [Defendants'] nexus argument rests on two related assumptions: that the [plaintiffs' previous device] failed commercially because it did not provide reliable vessel sealing; and that [the accused device] remedied the supposed sealing problem by incorporating stop members disclosed in the [patent-in-suit]. Neither assumption is borne out by the record. . . . Moreover, the weight of evidence before the Court suggests various factors besides the patented stop members are responsible for the [accused device's] early success. Accordingly, [defendants have] not shown irreparable harm resulting from the alleged infringement."

Ethicon Endo-Surgery, Inc. et al v. Covidien LP et al, 1-16-cv-12556 (MAD October 2, 2017, Order) (Sorokin, MJ)

Wednesday, October 4, 2017

Patent Claims for Identifying a Caller With A Single Telephone Number Invalid Under 35 U.S.C. § 101

The court granted plaintiff's motion for judgment on the pleadings because the asserted claims of defendant's telephone system patents encompassed unpatentable subject matter and found that the claims for identifying a caller with a single telephone number were directed toward an abstract idea. "Essentially, the claim is directed to storing data in a database, looking up data from that database in response to the initiation of a phone call, and inserting at least a portion of that data in the already-existing caller ID field. . . . Although the solution employed by the asserted claims may utilize conventional telephony components, the problem of being unable to reach a particular individual is a practical, human unavailability problem, not a technological one."

BroadSoft, Inc. v. CallWave Communications, LLC, 1-13-cv-00711 (DED October 1, 2017, Order) (Andrews, USDJ)

Tuesday, October 3, 2017

Failure to Conduct Some Aspects of Presuit Investigation Alone Does Not Warrant Award of Attorney Fees under § 285

Following an inter partes review that found all asserted claims of the patents-in-suit unpatentable or invalid, the court denied defendant's motion for attorney fees under 35 U.S.C. § 285 on the ground that plaintiff failed to conduct an adequate pre-filing investigation. "[Plaintiff] fails to state that it investigated its claims in any fashion before filing suit. . . . [Plaintiff] also does not deny that it never attempted to contact [defendant] before filing suit to confirm whether [defendant] was using the accused devices or systems. These factors suggest that [plaintiff] failed in some aspects of its pre-filing investigation. However, even if the Court were to determine that there was not an adequate pre-suit investigation, [defendant] has not cited -- and the Court is not aware of -- any decision awarding attorney fees solely on the basis of a failure to conduct an adequate pre-filing investigation. . . . [T]he failure to conduct some aspects of a pre-suit investigation alone does not warrant an award of attorney fees under Section 285."

Intellectual Ventures II LLC v. Commerce Bancshares, Inc. et al, 2-13-cv-04160 (MOWD September 29, 2017, Order) (Laughrey, USDJ)

Monday, October 2, 2017

Application Preference Configuration Patent Invalid Under 35 U.S.C. § 101

The court granted defendants' motion to dismiss because the asserted claims of plaintiff’s application configuration patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The [patent-in-suit] is directed to obtaining user and administrator sets of configuration preferences for applications and then executing the applications using both sets of obtained preferences. . . . The [challenged] claims . . . involve computers but do nothing to improve their functionality. The claims employ off-the-shelf computer components without modification. The Court has already held that the kind of benefits they provide -- 'increased efficiency' or 'reduced costs' -- are not technological benefits. . . . [T]he claims of the [patent] are overly vague in that they recite 'executing the application program using the obtained user set and the obtained administrator set [of preferences],' without claiming any 'particular way of programming or designing the software' to facilitate execution of the program according to the claim. . . . [T]he claims of the [patent] are directed to the abstract idea of 'providing two-tiered customization' in a client-server environment."

Uniloc USA, Inc. et al v. ADP, LLC, 2-16-cv-00741 (TXED September 28, 2017, Order) (Schroeder, USDJ)