Monday, March 19, 2018

Pre-Markman Attorney Fees Awarded Due to Unreasonable Manner of Litigation

The court awarded defendant its attorney fees under 35 U.S.C. § 285 and rejected plaintiff's argument that defendant was not entitled to attorney fees prior to claim construction. "The Federal Circuit stated that '⁠[plaintiff's] suit became baseless after the district court’s Markman order.'. . . However, as the Federal Circuit identified, this was not the extent of [plaintiff's] misconduct. [Plaintiff] also 'litigated the case in an "unreasonable manner."'. . . [T]his Court, in an exercise of its discretion and as guided by the Circuit’s opinion and directive, finds that it is appropriate in this exceptional case to award [defendant] the fees it incurred from the time of filing through dismissal."

Adjustacam LLC v., Inc., et al, 6-10-cv-00329 (TXED March 15, 2018, Order) (Gilstrap, USDJ)

Friday, March 16, 2018

Nonparty's Compilation of Prior Art Protected by Work Product Doctrine

The ALJ denied respondents' motion to certify for judicial enforcement its prior art subpoena to two nonparties whom complainants sued for infringement of the same patents in district court because the documents sought were protected attorney work product. "⁠[Nonparty] represents in its opposition that the prior art at issue 'was developed by [its] counsel because of' the district court litigation. [Respondent] speculates that [nonparty] may have also identified prior art 'outside the contours' of the district court case. [Respondent's] speculation, however, is groundless. . . . Such a compilation of prior art is protected under the work-product doctrine, even if the references themselves are publicly available. . . . [P]rotecting the mental impressions and thought processes of an attorney from disclosure is not the only interest protected by the work-product doctrine. The work-product doctrine also seeks to prevent attorneys from relying 'on wits borrowed from the adversary' instead of relying on their own efforts and professional judgment."

LED Lighting Devices, LED Power Supplies, and Components Thereof, 337-TA-1081 (ITC March 13, 2018, Order) (Lord, ALJ)

Thursday, March 15, 2018

Previously Undisclosed Market Share Apportionment Theory Stricken From Expert Report

The court overruled plaintiff's objections to the magistrate judge's order partially striking the report of plaintiff's damages expert. "⁠[Plaintiff] contends . . . all of the information [the expert] relied upon in forming his market share apportionment opinion was made known to [defendant] during fact discovery. To the extent [defendant] needed additional third-party discovery, [plaintiff] alleges it is [defendant's] fault for not seeking it earlier. The Court disagrees. Even if all the information [the expert] relied upon in forming his opinion was made known to [defendant], the market share apportionment theory itself was never disclosed prior to [his] report. Instead, [plaintiff] maintained only its two-player/product market theory, a theory that (at least in part) contradicts the newly-asserted market apportionment theory. That [defendant's] own discovery may have shown that the market was not a two-party/product market is not the issue."

Integra LifeSciences Corporation et al v. HyperBranch Medical Technology, Inc., 1-15-cv-00819 (DED March 13, 2018, Order) (Stark, USDJ)

Wednesday, March 14, 2018

Post-Trial Amendment of Pleadings Permitted to Assert Alter-Ego Claim Against Bankrupt Defendant’s Individual Owners

Following a $30 million jury verdict and defendant's filing for bankruptcy, the court granted plaintiff's motion to amend its complaint to add defendant's co-owners as defendants along with alter ego and veil-piercing claims. "⁠[Plaintiff] explains that it learned of [defendant's] and the [defendant's owners'] alleged efforts to avoid liability only when it reviewed the bankruptcy filings.⁠ . . . [Defendant] counters that [plaintiff] was 'on clear notice before trial of the substantial risk that [defendant] would be unable to pay the enormous sums [plaintiff] was seeking. Had it wanted to hedge its bets by asserting claims against other entities, it should have sought leave to do so long before now.' But that argument entirely misses the point. Veil-piercing and alter-ego claims are not mere contingency plans for uncollectable defendants. They are specific theories of liability which, absent plausible grounds, would be frivolous to plead. [Plaintiff] argues that the alleged abuse of the corporate form -- the necessary fact that underlies veil-piercing and alter-ego claims -- only came to light later on. The Court certainly will not punish [plaintiff] for failing to assert a claim prior to having the evidence to back it up."

FieldTurf USA, Inc. et al v. Astroturf, LLC, 2-10-cv-12492 (MIED March 12, 2018, Order) (Murphy, USDJ)

Tuesday, March 13, 2018

Apple Not Collaterally Estopped From Denying Infringement by Redesigned Version of FaceTime

The court denied plaintiff's motion for summary judgment that the redesigned version of defendant's adjudicated product infringed its network security patents because there were genuine disputes of material fact which precluded a finding of collateral estoppel. "⁠Apple argues that issue preclusion is inapplicable here, as the redesigned product differs in design and operation from the product at issue in the [earlier lawsuit]. . . . Particularly, Apple notes that the accept message from the FaceTime servers to the caller device was changed between the first version of FaceTime and the redesigned FaceTime. Apple suggests this change to FaceTime was so significant that the servers can no longer meet the 'indication' requirement of the claims. . . . [T]he accused devices in this case are not essentially the same as the devices at issue in the [prior] case. [Defendant] has raised a question of material fact as to whether the redesigned version of [the adjudicated product] infringes the claims of the asserted patents. The parties’ arguments stem from a fundamental factual dispute with respect to the design and operation of the redesigned product, which the Court declines to resolve at summary judgment. Whether, after the changes to the accept message, the [accused] servers fall within the scope of the court’s claim construction is a question of fact for the jury to resolve at trial."

VirnetX Inc. et al v. Apple Inc., 6-12-cv-00855 (TXED March 9, 2018, Order) (Schroeder, USDJ)

Monday, March 12, 2018

Office Closed a Few Weeks Before Lawsuit is a Regular and Established Place of Business for Venue

The court overruled defendant's objection to the magistrate judge's recommendation to deny its motion to transfer for improper venue because defendant had a regular and established place of business in the district through its office that closed a few weeks before plaintiff filed suit. "Abiding by the Federal Circuit's admonition that '⁠[i]n deciding whether a defendant has a regular and established place of business in a district, no precise rule has been laid down and each case depends on its own facts,' the undersigned finds that the fact that [plaintiff] filed suit in this District within weeks after [defendant] closed its doors is reasonable. Finding that [defendant's] established and regular business in the District weeks before suit was filed is sufficient for establishing venue pursuant to Section 1400(b) does not offend Section 1400(b)'s purpose 'to eliminate the "abuses engendered" by previous venue provisions allowing such suits to be brought in any district in which the defendant could be served.'"

ParkerVision, Inc. v. Apple Inc. et al, 3-15-cv-01477 (FLMD March 8, 2018, Order) (Davis, USDJ)

Friday, March 9, 2018

Clinical Activities Within § 271(e)(1) Safe Harbor Are Not “Acts of Infringement” For Determining Venue

The magistrate judge recommended granting defendants' motion for summary judgment of improper venue because there were no infringing acts in the district inasmuch as the accused activities fell under the safe harbor provision of 35 U.S.C. § 271(e)(1). "Plaintiff has not alleged any facts showing activities in this District other than those statutorily exempted from infringement by § 271(e)(1). . . . [T]he relevant question here is not whether Defendants engaged in uses outside the District that are not 'solely' or 'reasonably related' to seeking FDA approval, but rather, whether Defendants have engaged in any such uses in this District so that venue is proper. . . . [A]ll acts of infringement in the Eastern District of Texas are solely clinical, and therefore, the § 271(e)(1) safe harbor applies despite purported nonexempt activity in Minnesota."

Snyders Heart Valve LLC v. St. Jude Medical SC, Inc. et al, 4-16-cv-00812 (TXED March 7, 2018, Order) (Priest Johnson, MJ)

Thursday, March 8, 2018

Expert Testimony Based on Modified Claim Construction Precluded

The court granted in part plaintiff's motion in limine to preclude expert testimony premised on a revised construction of the claim term in question. "⁠[T]he court [previously] construed the claim term 'intumescent' to describe 'a substance that swells and chars upon exposure to heat or flame.' . . . [O]ver three years after the claim construction . . . [defendant] seeks to offer evidence from one of ordinary skill in the art that infringement of the claim term 'intumescent' requires proof that the coating 'swells to a sufficient degree to act as a thermal barrier to lessen the effects of heat or flame on the underlying fabric.' . . . [T]he court declines to further define the term 'swell.' . . . [Defendant] should be permitted to present evidence by an expert as to whether he observes any swelling . . . and criticisms of [plaintiff's] expert’s findings. . . . [H]e may not testify as to any opinion that the results reportedly observed by [plaintiff's expert] fail to indicate swelling 'to a sufficient degree to act as a thermal barrier to lessen the effects of heat or flame on the underlying fabric' because he has conducted no testing to support such a statement."

Precision Fabrics Group, Inc. v. Tietex International, Ltd., 7-17-cv-03037 (SCD March 5, 2018, Order) (Schroeder, USDJ)

Wednesday, March 7, 2018

Initiating Ex Parte Reexamination Instead of Inter Partes Review No Basis For Denying Stay

The court granted defendant's motion to stay pending its requests for ex parte reexamination and rejected plaintiff's argument that defendant was engaging in gamesmanship by not seeking inter partes review. "⁠[Plaintiff] argues that [defendant] only made this choice because it wanted to delay this litigation as much as possible, as evidenced by the longer timeline for completion of ex parte reexamination and the fact that reexamination does not have the same estoppel effect as IPR. . . . [I]t was reasonable for [defendant] to choose not to pursue IPR given that the constitutionality of the procedure is currently being considered by the United States Supreme Court. . . . Moreover . . . choosing ex parte reexamination makes economic sense because IPR filing fees alone would cost $50,000 more than reexamination."

Carlson Pet Products, Inc. v. North States Industries, Inc., 0-17-cv-02529 (MND March 5, 2018, Order) (Menendez, MJ)

Tuesday, March 6, 2018

CBM Estoppel Does Not Apply to Entire Statutory Provision, But to Discrete Prior Art References or Combinations

The court denied plaintiff's motion in limine to exclude evidence of obviousness because CBM estoppel did not apply to an entire statutory basis. "Plaintiff argues that, because [defendant's] CBM challenge was based on 35 U.S.C. § 103, Defendants are estopped from arguing invalidity under that statutory provision. Plaintiff thus asserts that 'ground' in the estoppel provision encompasses the statutory basis for an invalidity challenge to the patent. . . . The estoppel provision applying to CBM review is a fairly new legal rule, and case law does not clearly define its scope. But the Court can gain guidance from the Federal Circuit’s discussion of the term 'grounds' in the context of post-grant review before the PTAB. In [Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016)], the Federal Circuit described several different 'grounds' for obviousness that constituted varied combinations of prior art. . . . [T]he Court agrees with Defendants that the word 'ground' in the CBM estoppel provision refers to a discrete claim of invalidity based upon a prior art or a combination of prior art."

Solutran, Inc. v. US Bancorp et al, 0-13-cv-02637 (MND March 3, 2018, Order) (Nelson, USDJ)

Monday, March 5, 2018

Asserted Claims of Digital Advertising Distribution Patents Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s digital advertising distribution patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "⁠[Plaintiff] argues that its patents constitute a 'paradigm shift, causing ad systems to behave in an unconventional manner' by providing for real-time insertion of advertisements, selected on attributes or other criteria, instead of 'preinserted' ads that result in all consumers viewing the same advertising content. . . . [T]he claims of the three patents are directed to an ineligible abstract idea: specifically, custom advertising based upon consumer qualities or other data. . . . The different patents and claims envision different arrangements of generic computers to implement this concept in different ways. But, at bottom, they do not represent or describe improvements in computing systems, specific new software or hardware or technology, or some other type of computing method that improves the computer's functionality or makes it more efficient, such as an information 'structure designed to improve the way a computer stores and retrieves data in memory.'"

Quantum Stream Inc. v. Charter Communications, Inc. et al, 1-17-cv-01696 (NYSD March 1, 2018, Order) (Engelmayer, USDJ)

Friday, March 2, 2018

Expert’s Secondary Considerations Opinions Struck Due to Inadequate Discovery Response

The court granted defendant's motion to strike portions of the report of plaintiff's infringement expert regarding previously undisclosed secondary considerations of nonobviousness. "⁠[Plaintiff] argues that [defendant's] interrogatory was premature because it asked for expert opinion, but [plaintiff] was at least obligated to provide the factual basis for any secondary considerations, and include this factual basis in the interrogatory response itself. . . . The important point, in the Court’s view, is that [plaintiff] not only failed to disclose the factual basis for any secondary considerations, but failed to even disclose any reliance on secondary considerations at all. The prosecution history includes a discussion of secondary considerations . . . yet even this basis for secondary considerations was not included in [plaintiff's] interrogatory response. . . . Although secondary considerations may be important, the prejudice to [defendant] is significant, particularly because [plaintiff] did not disclose the facts it already had knowledge of upon which it would rely."

Semcon IP Inc. v. Huawei Device USA Inc. et al, 2-16-cv-00437 (TXED February 28, 2018, Order) (Payne, MJ)

Thursday, March 1, 2018

Vibration Attenuation Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion for summary judgment of invalidity because the asserted claims of plaintiff’s vibration attenuating patent encompassed unpatentable subject matter and found that the claims were directed to a law of nature. "There is no dispute that adjusting the mass and stiffness of the liner will change the amount of damping of a certain frequency. The claimed methods are applications of Hooke's law with the result of friction damping. . . . [T]he Asserted Claims do not disclose a method of manufacturing a propshaft; instead, considered as a whole, they are directed to the mere application of Hooke's law, and they fail to instruct how to design the tuned liners or manufacture the driveline system to attenuate vibrations."

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC et al, 1-15-cv-01168 (DED February 27, 2018, Order) (Stark, USDJ)

Wednesday, February 28, 2018

Special Liaison Appointed to Investigate Expert’s Availability to Testify Following Medical Event

The court deferred ruling on defendants' motion to substitute one of its experts and appointed a special liaison to help determine whether the expert would be able to proceed at trial. "Subsequent to his retention, [the expert] experienced a medical event, which occurred at or near the time of his deposition [last month]. . . . [T]he Court has concluded that an experienced non-physician liaison is appropriate to facilitate further informational development in this matter and that appointment of a non-physician liaison is preferable to appointing a different neurologist. . . . As special liaison in this regard, [the liaison] shall gather and report information from [the doctor who examined defendants' expert], and all other available, material sources, regarding [the expert's] ability to recover and testify [at trial in 3 months], or some other future date."

Intellectual Ventures II LLC v. FedEx Corporation et al, 2-16-cv-00980 (TXED February 26, 2018, Order) (Gilstrap, USDJ)

Tuesday, February 27, 2018

Venue Not Determined When Cause of Action Accrues

The court granted one defendant's motion to transfer for improper venue because defendant lacked a regular and established place of business in the district through its former office that closed shortly before plaintiff filed suit. "⁠[Plaintiff] argues . . . that the location in Plymouth Meeting is sufficient to defeat [movant's] motion to transfer because [it] had a regular and established place of business in this district when the cause of action accrued, and Plaintiff initiated the relevant action on June 30, 2010, a reasonable time after [movant's] office closed in 2009. . . . Some courts have held that venue is proper under § 1400(b) when a defendant had a regular and established place of business in a district, and the plaintiff initiated the action within a reasonable time after the place of business was closed. However, this rule has not been adopted by the Third Circuit Court of Appeals, and this Court declines the invitation to apply said ruling in this patent case."

Infinity Computer Products, Inc. v. OKI Data Americas, Inc., 2-12-cv-06797 (PAED February 23, 2018, Order) (Alejandro, USDJ)

Monday, February 26, 2018

Slot Machine Patent Claims Invalid Under 35 U.S.C. § 101

The court granted defendant's motion for summary judgment that the asserted claims of plaintiff’s gaming machine patents encompassed unpatentable subject matter and found that the claims lacked an inventive concept. "The Court rejects [plaintiff's] argument that the ordered combination of claims results in an inventive concept by virtue of the unique display or configuration of symbols on the simulated reels. While the claims at issue here may disclose a different configuration of the displayed symbols in a slot machine game, they do not disclose a new game or a new technology directed to the slot game. . . . Selecting an identical symbol for a consecutive run of symbols in one simulated digital reel, at least as disclosed in the asserted claims here, does not represent a new form of selection or derive from a new technology associated with slot games. . . . Changes to game rules of a generic slot machine using conventional technology are not patentable."

Konami Gaming, Inc. v. PTT, LLC d/b/a High 5 Games, 2-14-cv-01483 (NVD February 22, 2018, Order) (Boulware, II, USDJ)

Friday, February 23, 2018

Stipulation to Waive §§ 102 and 103 Defenses Weighs in Favor of Stay Pending IPR

The court granted defendant's motion to stay pending its petition for inter partes review because the potential simplification of issues and lack of undue prejudice favored a stay. "The Court agrees with [plaintiff] that at this point it is unknown whether the PTAB will institute IPRs of the asserted patents. . . . Yet the Court’s concerns are assuaged by [defendant's] proposed stipulation that if the Court grants the stay, [it] will waive any argument regarding prior art under 35 U.S.C. §§ 102 or 103 -- regardless of whether or not the IPR proceedings are instituted. The Court finds this proposition persuasive, particularly given [defendant's] representations regarding the heavy monetary burden that instituting the IPRs and defending a lawsuit in district court at the same time will impose on it as a small company. . . . [W]hile the Court agrees that [the parties] are direct competitors and that [defendant] could harm [plaintiff's] competitive standing, [plaintiff] is far too vague regarding this alleged harm."

Blacoh Fluid Controls, Inc. v. Syrinix, Inc., 5-17-cv-04007 (CAND February 21, 2018, Order) (Cousins, MJ)

Thursday, February 22, 2018

Aesthetic-Functionality Test Does Not Apply to Design Patents

The court denied plaintiff's motion for summary judgment that defendant's auto body part design patents were invalid and rejected plaintiff's argument that the aesthetic-functionality test should apply to design patents. "For at least three reasons the Court declines to import the aesthetic-functionality doctrine from trademark law to design-patent law. First, no court has done so. This despite that both trademarks and design patents have coexisted for well over a century. . . . Second, trademark law and patent law serve different purposes. . . . [T]rademark law 'seeks to promote competition' . . . patents inhibit competition. Yet the 'policy predicate for the entire [trademark] functionality doctrine stems from the public interest in enhancing competition.' . . . Third, there is greater reason for trademark law to be concerned with functionality (aesthetic or otherwise) than design-patent law. If a trademark could protect function, the mark holder would gain a perpetual monopoly over the product’s function without clearing the hurdles for obtaining any patent—utility or design. In contrast, those seeking a design patent must clear at least some hurdles related to novelty. And the term of monopoly is limited to 15 years. Thus, the inequity of a design patent protecting the aesthetically functional aspect of an article is simply not as great as a trademark doing so."

Automotive Body Parts Association v. Ford Global Technologies, LLC, 2-15-cv-10137 (MIED February 20, 2018, Order) (Michelson, USDJ)

Wednesday, February 21, 2018

Audio/Visual Playback Patent Invalid Under 35 USC § 101

The court granted defendant's motion for summary judgment because the asserted claims of plaintiffs’ audio/visual playback patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "I agree with Defendant that this claim is, at most, directed to the automation of a process that can be (and has been) performed by humans. . . . Claim 1 includes the additional element of reproducing the recorded signal with either the previously stored or default preferences, but that element is similarly abstract, as it, too, is at most directed to the automation of a process that can be performed by humans. Claim 1 is thus directed to the abstract idea of choosing to play back media with or without playback preferences. It is not directed to an invention that improves this process."

D&M Holdings, Inc., et al. v. Sonos, Inc., 1-16-cv-00141 (DED February 16, 2018, Order) (Andrews, USDJ)

Tuesday, February 20, 2018

Meritless Invalidity and Unenforceability Claim Justifies Award of Attorney Fees

Following dismissal of plaintiff's invalidity and unenforceability claims for lack of standing and failure to state a claim, the court granted defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics were unreasonable. "The plaintiff should have known from the inception of this litigation that its claim in Count X [seeking a declaration of patent invalidity and unenforceability] lacked substantive and legal merit, and even if it was unaware of such deficiencies at the time it filed its complaint, there is no question that the meet-and-confer communications from the defendants before the filing of their motion to dismiss directly pointed the plaintiff to such deficiencies. Even with such awareness, the plaintiff committed to seeing the claim through to the end, in defiance of the applicable law. Not only did the plaintiff persist in its frivolous claim, but they aggressively litigated the patent issues. This required the defendants themselves to develop their own expert testimony to address patent issues which should have never been present in this case. There is no doubt that the plaintiff’s steadfast commitment to this unfounded patent claim imposed additional expenses on the opposing parties which should never have been experienced."

Technology for Energy Corporation v. Hardy et al (JRG3), 3-16-cv-00091 (TNED February 15, 2018, Order) (Greer, USDJ)

Friday, February 16, 2018

Audio-Video Doorbell Patent Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s audio-video doorbell patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "⁠[T]he Court has rejected arguments that a patent claim is abstract because its only concrete, physical component not relying on a computer’s generalized computing capabilities was well-known or long-practiced. . . . Detecting the presence of a person at a door, sending a video of the person to be viewed, and speaking with the person at the door are all concrete steps requiring more than the abstract thinking capabilities of a person or a computer. Regardless of anticipation or nonobviousness under §§ 102 and 103 -- neither of which is at issue in the present motion, and upon which the Court states no opinion -- Claim 1 is patent-eligible under § 101."

Eyetalk365, LLC v. Zmodo Technology Corporation Limited, 2-17-cv-02714 (NVD February 14, 2018, Order) (Jones, USDJ)

Thursday, February 15, 2018

Successful Motion to Intervene Waives Venue Challenge

The court denied intervenors' motions to sever and transfer plaintiff's actions against them for improper venue because intervenors waived venue through their intervention. "By definition, an intervenor is '⁠[s]omeone who voluntarily enters a pending lawsuit because of a personal stake in it.' This choice to intervene (or consent to proceed in a particular jurisdiction and venue) has real and far-reaching consequences. . . . [T]he intervenors cannot now question the propriety or convenience of a venue they chose to enter. The intervenors voluntarily entered this proceeding and now must litigate in this, their chosen venue."

Team Worldwide Corporation v. Wal-Mart Stores, Inc. et al, 2-17-cv-00235 (TXED February 13, 2018, Order) (Gilstrap, USDJ)

Wednesday, February 14, 2018

Serving Responses to Contention Interrogatories Near Close of Fact Discovery Justifies Monetary Sanctions Against Defendant and Counsel

The court granted plaintiff's motion for monetary sanctions against defendant and its counsel following plaintiff's successful motion to compel further contention interrogatory responses because defendant's behavior was not substantially justified. "⁠[Defendant] now asserts that it was 'substantially justified in relying upon the existing, valid legal authority directly on point' to delay responses to the Contention Interrogatories. The authorities [defendant] cites, however, do not justify a refusal to respond to contention interrogatories until the last few days before the discovery cut-off. . . . [W]hile [defendant] cites cases for the proposition that responses may be delayed until discovery is 'almost complete,' none stand for the unreasonable conclusion that a responding party can wait until the discovery period is over before responding to demands."

Bal Seal Engineering, Inc. v. Nelson Products, Inc. et al, 8-13-cv-01880 (CACD February 12, 2018, Order) (Scott, MJ)

Tuesday, February 13, 2018

Contractual and Fiduciary Duty of Loyalty May Estop Defendant From Asserting Invalidity Defense

The court denied defendant's motion to dismiss on the ground that plaintiff’s synthetic gem investment product patent encompassed unpatentable subject matter because there were genuine disputes of fact whether an individual defendant was estopped from challenging the patent's validity. "⁠[T]he Court is unpersuaded by defendants' contention that [plaintiff] is legally precluded from asserting an estoppel or contractual bar to [the individual defendant's] invalidity argument arising from his fiduciary and contractual duties to [plaintiff]. Whether those duties actually bar [the individual defendant] (and [the LLC defendant] as his alleged alter ego) in the way asserted by [plaintiff] is another matter, and one the Court cannot adjudicate at this stage of the litigation -- as it may depend on factual disputes that cannot be adjudicated at this point. The upshot is that the Court does not believe that it can appropriately decide defendants' invalidity challenge in the context of their motion to dismiss for failure to state a claim."

Gemshares LLC v. Lipton et al, 1-17-cv-06221 (ILND February 11, 2018, Order) (Kennelly, USDJ)

Monday, February 12, 2018

Common Interest Doctrine Does Not Protect Communications With Litigation Funder Prior to Written Agreement

The court overruled plaintiff's objection to the special master's order granting in part defendants' motion to compel the production of documents plaintiff provided to a third party as part of a litigation financing agreement that plaintiff withheld under the common interest doctrine. "Plaintiff argues that '⁠[l]itigation funders provide funds 'for the sake of securing, advancing, or supplying legal representation,' and thus have a common legal interest with the plaintiffs they fund.'. . . However . . . 'it [does not] appear that there was any written agreement at [the time of the communications] to have a legally 'common interest' in whatever was provided by Plaintiff.' Furthermore, the Special Master explained that the 'documents were provided before any agreement was reached between Plaintiff and [the litigation funder], and before any litigation was filed.' Thus, Plaintiff has not shown that Plaintiff and [the litigation funder] possessed identical legal interests in the patents-in suit or were otherwise 'allied in a common legal cause' at the time of the communications."

Acceleration Bay LLC v. Activision Blizzard, Inc., 1-16-cv-00453 (DED February 9, 2018, Order) (Andrews, USDJ)

Friday, February 9, 2018

Breach of Duty to Disclose Patent to Standards Setting Organization Equitably Estops Enforcement

Following a jury verdict of infringement and invalidity, the court granted in part defendant's motion for judgment as a matter of law that plaintiff was equitably estopped from enforcing its anticoagulant patent. "⁠[Plaintiff] had a duty to disclose its patent to [a standards setting organization] and it breached that duty through silence. . . . This Court agrees that there was credible testimony supporting the inference that [defendant] relied on [an SSO provision] for its continued use of the 15-25% procedures. . . . [Defendant] has shown that it would be economically prejudiced if [plaintiff] were permitted to enforce the patent against it. . . . Because [one] procedure does not comply with [the SSO provision], [plaintiff] is only equitably estopped from enforcing its patent against the 15-25% procedures."

Momenta Pharmaceuticals, Inc., et al v. Amphastar Pharmaceuticals, Inc., et al, 1-11-cv-11681 (MAD February 7, 2018, Order) (Gorton, USDJ)

Thursday, February 8, 2018

Defendant’s Attendance at Plaintiff’s Board of Directors Meeting Discussing Patented Technology Supports Willfulness Claim

The court denied defendant's motion to dismiss plaintiff's willful patent infringement claims for failing to sufficiently allege egregious behavior. "⁠[A] complaint must contain some allegations which make it plausible that the accused infringer’s behavior was egregious and that allegations of knowledge of the patents-in-suit alone are insufficient. . . . [A]mong other things, the SAC alleges that in 1997 [defendant] publicly acknowledged the value of [plaintiff's] technology. [Defendant] allegedly began investing in [plaintiff] in 2004, sent a representative to [plaintiff's] board of director meetings where [plaintiff's] patents and technology were discussed, and learned about [plaintiff's] technology during a 2006 presentation. . . . According to [plaintiff], despite the knowledge and a high likelihood of infringement, [defendant] allegedly incorporated infringing technology into its products in an egregious manner. These allegations clearly contain factual allegations that are more than a formulaic recitation of the legal standard using the word 'egregious.'"

Finjan, Inc. v. Cisco Systems, Inc., 5-17-cv-00072 (CAND February 6, 2018, Order) (Freeman, USDJ)

Wednesday, February 7, 2018

Auto Dealership Facilities Do Not Qualify as Regular and Established Place of Business of Vehicle Manufacturer or Distributor

The court granted defendants' alternative motion to transfer plaintiff's patent infringement action for improper venue because defendants did not have a regular and established place of business through their dealerships in the district. "Defendants are two distinct corporate entities. . . . The dealerships are also separate corporate entities. . . . [T]here is no fact supporting that Defendants are the parent corporations of the dealerships owners or operators. . . . [T]here are no facts that Defendants even own any interest in the dealerships. Plaintiff’s theory is predicated on the Defendants’ operating agreement with the . . . dealerships exerting such control that the dealerships are essentially the same entity. This theory ignores the separate corporate forms of Defendants and the dealerships. The Court finds no facts to support collapsing the corporate forms; the dealerships’ physical locations are not places of Defendants."

West View Research, LLC v. BMW of North America, LLC et al, 3-16-cv-02590 (CASD February 5, 2018, Order) (Sammartino, USDJ)

Tuesday, February 6, 2018

Expert's Application of Rubinstein Bargaining Model Renders Reasonable Royalty Opinion Unreliable

The court granted defendant's motion to exclude the testimony of plaintiff's damages expert regarding reasonable royalties for three patents because his application of the Rubinstein bargaining model was unreliable. "⁠[The expert's] method is simply fancy guesswork. . . . Although [his] method is not . . . a rule of thumb or a 50-50 split, [he] does not tether the methodology to the facts of this case. . . . Using [the parties' weighted average cost of capital] as a proxy for patience in the Rubinstein model does not consider the actual stakes in the hypothetical negotiation or even the specific patents negotiated. As a result, [his] model would split the gains in the same way for a fundamental patent at the core of a company's technology and for a piece of technology that the company might consider not at all valuable. . . . It is not that [the expert] chose the wrong [weighted average cost of capital] as an input -- it is that using [weighted average costs of capital] the way he does has no relationship to the patents in this case and cannot reliably show how the parties would negotiate over these patents."

Limelight Networks, Inc. v. XO Communications, LLC et al, 3-15-cv-00720 (VAED February 2, 2018, Order) (Gibney, USDJ)

Monday, February 5, 2018

Denial of Summary Judgment No Basis for Attorney Fees Award Under 35 U.S.C. § 285

The court denied plaintiff's motion for attorney fees under 35 U.S.C. § 285 for defendant's unsuccessful motion for summary judgment under the on-sale bar. "Plaintiff requests attorney fees and costs, asserting that Defendants filed this motion in bad faith. Plaintiff cites 35 U.S.C. § 285, which authorizes a court to award reasonable attorney fees 'to the prevailing party' in 'exceptional cases.'. . . At this point in the litigation, Plaintiff is not a prevailing party. Even if, somehow, the statute could be interpreted as applying to motion practice alone, the denial of Defendants' motion for summary judgment does not alter the legal relationship between the parties."

Morren v. Morren Plastic Molding, Inc. et al, 1-17-cv-00685 (MIWD February 1, 2018, Order) (Maloney, USDJ)

Friday, February 2, 2018

Improper Emergency Motions May Push Case into Exceptional Posture

The court denied plaintiff's emergency motion to strike defendant's previously undisclosed claim construction proposal and warned the parties about improper emergency motions. "The Court reminds the Parties that filing an Emergency Motion before the Court is an extremely disruptive process that represents to the Court that immediate action must be taken in order to prevent material, avoidable harm. . . . The Court analogizes the current situation to [defendant] striking a match to light its cigar while sitting in the balcony of a crowded theater, with [plaintiff] in response jumping to its feet and screaming, 'Fire!' There is no emergency here. . . . Should these Parties ignore the guidance going forward, they may find themselves in a position where the Court feels compelled to issue sanctions and ultimately, they may push this case into a posture of being exceptional."

EnerPol, LLC v. Schlumberger Technology Corporation, 2-17-cv-00394 (TXED January 31, 2018, Order) (Gilstrap, USDJ)

Thursday, February 1, 2018

Willful Blindness Alone Does Not Show Egregious Behavior Necessary for Willful Infringement Claim

The court granted defendant's motion for summary judgment that it did not willfully infringe plaintiff's condom patents because plaintiff failed to establish egregious behavior pre- or post-suit. "⁠[A]t oral argument, [plaintiff] agreed that willful blindness at most establishes 'knowledge,' rather than egregious behavior. . . . [I]nsofar as willful blindness does apply in willful infringement cases, it only substitutes for actual knowledge, as opposed to egregious behavior. Because a party's pre-suit knowledge of a patent is not by itself sufficient to show egregious behavior, willful blindness is also not sufficient. . . . [Plaintiff] does not allege that [defendant] had knowledge of, or was willfully blind to, the patents-in-suit at the time [plaintiff] alleges [defendant] failed to comply with [its patent clearance] internal policy. This is the only conduct which could conceivably raise a disputed issue of material fact about [defendant's] willfulness. Therefore, [plaintiff's] allegations of willful infringement rely on actions taken when the prerequisite of knowledge is missing."

Ansell Healthcare Products LLC v. Reckitt Benckiser LLC, 1-15-cv-00915 (DED January 30, 2018, Order) (Andrews, USDJ)

Wednesday, January 31, 2018

Litigation Conduct Evincing Lack of Respect for Patent Rights and Litigation Process Supports Attorney Fees Award

Following a jury verdict of willful infringement, the court granted plaintiff's motion for attorney fees under 35 U.S.C. § 285 because defendant's litigation conduct and positions were exceptional. "Regarding attorneys fees . . . Defendant simply argues that, 'reasonable or not,' it didn’t have an 'intent to deceive.' But this is not the test for evaluating . . . Section 285. Whether or not Defendant had an intent to deceive is a separate question from whether Defendant acted recklessly -- or worse -- in disregarding another’s patent rights under Section 284. . . . Defendant almost would have been better served if it hadn’t filed an opposition. Like its failure to produce experts at trial, Defendant’s Opposition evinces a lack of respect for Plaintiff’s patent rights and the litigation process. . . . Defendant maintained invalidity defenses through the course of litigation, only to completely fail to present any evidence to support those defenses at trial. Indeed, despite failing to include proposed jury instructions on invalidity and providing no evidence of obviousness, Defendant opposed Plaintiff’s Rule 50 Motion on Defendant’s invalidity defense. Moreover, as stated, the jury found that Defendant’s infringement was willful. . . . Here, based both on Defendant’s conduct during litigation and the jury’s unchallenged finding of willful infringement, the Court finds fees are appropriate."

Genes Industry, Inc. v. Custom Blinds and Components, Inc., 8-15-cv-00476 (CACD January 29, 2018, Order) (Guilford, USDJ)

Tuesday, January 30, 2018

Description of Product Type May be Sufficient to Satisfy Section 287 Notice of Infringement

The court denied defendant's motion for summary judgment to preclude certain pre-suit damages for its anti-counterfeiting patents because there was a genuine dispute of fact whether plaintiff provided actual notice of infringement in a letter to defendant almost four years before it filed suit. "⁠[Defendant] principally contends that the letter failed to accuse specific products of infringement as required by Section 287(a). . . . Contrary to [defendant's] contention, [Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1993)] . . . did not hold that Section 287(a) is not satisfied when the patentee notifies an alleged infringer of a 'type of product' that the patentee believes to infringe its patent. Rather, the letter that the Federal Circuit found inadequate in Amsted failed to accuse even the offering by any recipient of an infringing product or type of product. . . . [Plaintiff's] letter identifies [defendant's] film products 'that produce three dimensional images that appear to exist on a plane other than the surface of the film' and that [defendant] offered 'for packing and security label applications.' A reasonable factfinder could conclude that these statements provided a charge of infringement and sufficiently specific product identification for purposes of actual notice."

Crane Security Technologies, Inc. et al v. Rolling Optics AB, 1-14-cv-12428 (MAD January 26, 2018, Order) (Sorokin, MJ)

Monday, January 29, 2018

In Determining Venue, Domestic Corporations Reside Only in Judicial District of Principal Place of Business

The court granted defendant's motion to transfer plaintiff's patent infringement action from the Central District to the Northern District of California for improper venue and rejected plaintiff's argument that 28 U.S.C. § 1400(b) permitted venue in any district of defendant's state of incorporation. "⁠[Plaintiff] argues that venue is proper because the patent venue statute, 28 U.S.C. § 1400(b), permits an action to be filed in any district within the state of incorporation. Because [defendant] is a California corporation, it claims, venue is proper in any of the four districts within the state. [Defendant] disagrees and argues that venue is proper only within the judicial district in which a defendant has its principal place of business. This motion therefore presents a single, discrete question: In which judicial districts do domestic corporations 'reside' in multi-district states under the patent venue statute? . . . [I]n the context of 28 U.S.C. § 1400(b), a corporate defendant 'resides' only in the state of its incorporation and, within that state, only in the judicial district in which it maintains its principal place of business. Applying that standard to the facts of the instant case, Defendant is a resident solely of the Northern District of California."

Realtime Data LLC v. Nexenta Systems, Inc., 2-17-cv-07690 (CACD January 23, 2018, Order) (Otero, USDJ)

Friday, January 26, 2018

Asserting ​Borderline Frivolous Infringement Claim Barred by Res Judicata Justifies Attorney Fees Award

Following dismissal for res judicata, the court granted defendant's motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions were exceptionally weak. "Plaintiff’s only argument that his infringement claim was not barred by res judicata was based on the theory that he could not have raised the claim in [its prior action] 'because Defendant was unaware of the patents-in-suit, and Defendant was incapable of knowingly inducing infringement without such knowledge.' This Court noted that because of the uncertain state of the law, Plaintiff had 'at least a colorable basis to allege the knowledge element of a claim for induced infringement based on the filing of the complaint.' Moreover, the record negated Plaintiff’s argument that Defendant was not aware of the patents-in-suit prior to [the prior action]. Therefore, the Court concludes that the weakness of Plaintiff’s litigation position, which borders on frivolous, demonstrates that this is an exceptional case."

Lyda v. CBS Interactive, Inc., 4-16-cv-06592 (CAND January 24, 2018, Order) (White, USDJ)

Thursday, January 25, 2018

Selective Reliance On Informal Opinion of Counsel Supports Attorney Fees Award

Following a stipulated judgment, the court granted plaintiff's motion for attorney fees under 35 U.S.C. § 285 because defendants' litigation tactics were exceptional. "Defendants’ reliance on [their counsel's] purported noninfringement opinion is particularly exceptional. . . . In a note specifically omitted from Defendants’ email to Plaintiff, [counsel] stated, '⁠[a] formal opinion is required, and that involves extensive study and other efforts to provide a reliable outcome. Please call me to discuss.' It would be one thing if Defendants simply received the email from [counsel] and purported to rely on it as an opinion of counsel. But the fact that Defendants removed [counsel's] disclaimer and copy-pasted the rest of [his] statements in an email to Plaintiff is more concerning. . . . The issue is not that Defendants failed to obtain a formal opinion of counsel, it is how Defendants conducted themselves in their interactions (or lack thereof) with Plaintiff regarding their alleged non-infringement positions. . . . With Defendants’ pre-litigation conduct and their conduct during litigation, particularly at the outset of litigation, there is strong reason to believe that this case could have been resolved amicably and early if not for Defendants’ actions."

Drop Stop LLC v. Jian Qing Zhu et al, 2-16-cv-07916 (CACD January 22, 2018, Order) (Guilford, USDJ)

Wednesday, January 24, 2018

Pre-Issuance Contacts Do Not Support Exercise of Personal Jurisdiction

The court granted a British defendant's motion to dismiss plaintiff's patent infringement claims for lack of personal jurisdiction under the state long-arm statute. "⁠[Defendant] maintains that it has had no contacts with any individuals or entities in Florida, except with [one company], and it maintains that any business dealings with [that company] ended [5 years ago]. . . . Pre-issuance activity is generally irrelevant for purposes of determining personal jurisdiction in a patent infringement case. Because [plaintiff] did not submit any evidence supporting sales in Florida after issuance of either patent, the Court has no basis to consider sales to Florida in the minimum contacts analysis."

Alpha Technology USA Corporation d/b/a FutureCow v. Northern Dairy Equipment, Ltd., 6-17-cv-01000 (FLMD January 22, 2018, Order) (Presnell, USDJ)

Tuesday, January 23, 2018

Night Vision Patents Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s night vision patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "At a high level, all four claims undoubtedly involve the idea of superimposition of images. But the Federal Circuit has admonished that just because the claims involve an abstract idea does not mean that they are directed to an abstract idea. . . . The patent claims minimize the manual recalibration by using the location comparison data to adjust how 'subsequent sensor-based locations are determined.'. . . Moreover, we are not persuaded by defendant’s argument that plaintiff’s claimed methods can be performed with just the human eye and a weapon scope. . . . Although the human brain is capable of matching images and evaluating differences, the . . . method claims recite a means of automatically and continuously performing the evaluation without the user needing to adjust the field of vision directly in front of her. . . . Because [plaintiff] did not stop at the concept of superimposition but instead provided a solution for achieving accuracy and consistency in image registration, plaintiff’s claims are not directed to an abstract idea."

Science Applications International Corporation v. USA, 1-17-cv-00825 (COFC January 19, 2018, Order) (Bruggink, CFCJ)

Monday, January 22, 2018

Pre-Litigation Communications With Litigation-Funding Organizations Protected by Work Product Doctrine

The court denied defendants' motion to compel the production of documents regarding plaintiff's communications with litigation-funding organizations that plaintiff withheld as privileged. "⁠[T]hese communications took place during a period when [plaintiff] actually and reasonably foresaw litigation. And, the evidence clearly establishes that these communications were primarily, perhaps exclusively, for the purpose of preparing for litigation. Defendants' arguments premised on the non-legal nature of Plaintiff's relationships with [redacted] are unavailing. Even if the Court were to fully credit this argument and consider the relationships to be commercial, the materials nonetheless fall within work-product immunity because they were communications with Plaintiff’s agents and in anticipation of litigation."

Lambeth Magnetic Structures, LLC v. Seagate Technology (US) Holdings, Inc. et al, 2-16-cv-00538 (PAWD January 18, 2018, Order) (Bissoon, USDJ)

Friday, January 19, 2018

Lack of Market Share Undermines Claim of Irreparable Harm for Preliminary Injunction

The court denied plaintiff's motion for a preliminary injunction to preclude the sales of the accused fracking system because plaintiff failed to establish irreparable harm through loss of market share or reputation. "⁠[Plaintiff] currently has no share of the market for 'profile selective frac sleeves' because it has not sold any devices covered by the [patent-in-suit] in that identified market. Although [plaintiff] claims that it is developing a new product for the 'profile selective frac sleeves' market, it is undisputed that the new product at the time of the hearing had not yet reached the field testing phase. . . . [Plaintiff] has not shown a likelihood that continued sales of the [accused] system will have a negative impact on its reputation in either of the identified markets."

Gryphon Oilfield Solutions, LLC v. Stage Completions Inc. et al, 4-17-cv-03220 (TXSD January 17, 2018, Order) (Atlas, USDJ)

Thursday, January 18, 2018

Soil Sample Tracking Patent Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion for summary judgment on the ground that plaintiff’s soil sample tracking patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The Court agrees with the Defendant that soil sampling for the purpose of evaluating the nutritional deficiencies in a field is an abstract idea. However, the Court does not agree that a method for performing soil sampling is necessarily abstract. . . . The [patent-in-suit] purports to solve issues associated with existing techniques by coming to the end result more efficiently and accurately. Therefore, the Court does not find that the [patent] is directed to an abstract idea that is ineligible for patent protection."

Agri-Labs Holdings LLC v. TapLogic, LLC, 1-15-cv-00026 (INND January 16, 2018, Order) (Springmann, USDJ)

Wednesday, January 17, 2018

Patent For Delivering Targeted Advertisements to Mobile Device Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s patent for delivering targeted advertisements to a mobile device encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The [patent-in-suit] is not directed at merely the abstract idea of targeting advertising. Rather, it describes systems and methods for addressing barriers to certain types of information exchange between various technological devices, e.g. a television and a smartphone or tablet being used in the same place at the same time. To be sure, the end goal of the invention is to improve the delivery of relevant information -- i.e., targeting advertising (or other content) -- but that does not mean that it does nothing more than direct a person of ordinary skill in the art to use a computer system to implement a conventional and known process. . . . To the extent [defendant] is arguing that the patent does not adequately explain how the barriers are overcome when the described system and methods are employed, such issues do not support a finding of patent ineligibility under Section 101."

Free Stream Media Corp. v. Alphonso Inc., 3-17-cv-02107 (CAND January 12, 2018, Order) (Seeborg, USDJ)

Supplying Equipment For Use at Customers’ Facilities Does Not Create Regular and Established Place of Business

The court granted defendant's alternative motion to transfer for improper venue because defendant did not have a regular and established place of business through its provision of equipment to customers in the district. "⁠[Plaintiff] also relied on [defendant's] 'business model' wherein [defendant], for the convenience of their customers, supplies its end use customers with [defendant's] equipment to be used at the customer’s facility. . . . This rather creative argument does not satisfy the test set forth in [In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017)] for the simple reason that the equipment in question is not a place. . . . The fact that the equipment is moved onto the customer’s property, and may be removed by [defendant] or relocated by the customer with [defendant's] permission, precludes any finding that this equipment could serve as a physical, geographical location for purposes of demonstrating that [defendant] has a regular and established place of business within the district. Moreover . . . servicing a customer at the customer’s facility cannot transform that facility into the patent defendant’s place if the defendant does not hold such place out as its own."

Automated Packaging Systems, Inc. v. Free Flow Packaging International, Inc. d/b/a FP International, 5-14-cv-02022 (OHND January 12, 2018, Order) (Lioi, USDJ)

Tuesday, January 16, 2018

Patent Claims Acquired After Filing Date of Earlier Lawsuit Subject to Claim Preclusion if Directed to the Same Product or Process

The court granted defendant's motion to dismiss all but three of plaintiff's patent infringement claims for claim preclusion, including claims for a patent that issued after the filing date of the parties' earlier lawsuit. "⁠[I]t appears that if a party acquires a patent infringement cause of action during the course of litigation, the party need not attempt to add that cause of action to the ongoing litigation or risk claim preclusion—even if the new infringement claim arises from the same transactional facts that prompted the ongoing litigation.⁠ . . . [T]he Court is confident that the Federal Circuit did not intend to draw a non-rebuttable line on the date that a party files its lawsuit, particularly where a later lawsuit attacks the same product or process at issue in an earlier lawsuit -- as is the case here. . . . [A] hard-and-fast rule that the filing of the original complaint ends the availability of claim preclusion could lead to significant, costly, and potentially unmanageable mischief. . . . [T]he Court holds that after-acquired claims, at least when they address the same, or substantially the same, subject matter as previously filed claims and when directed at a previously accused product or process, may be subject to claim preclusion under the Restatement’s pragmatic approach endorsed by the Federal Circuit. . . . [U]nder the circumstances [plaintiff] had a duty to move to amend (as it had already moved to amend to add an after-acquired claim) given that it would be accusing the same [defendant] products and processes, and that the [unasserted patent] was a continuation of a patent already in suit."

XY, LLC v. Trans Ova Genetics, LC, 1-17-cv-00944 (COD January 11, 2018, Order) (Martinez, USDJ)

Friday, January 12, 2018

Threat of Litigation Against Customers Does Not Create Actual Controversy With Supplier

The court granted defendant's motion to dismiss plaintiff's declaratory relief action for lack of an actual case or controversy stemming from defendant's proposed license agreement or litigation against plaintiff's customers. "Even if [defendant] did 'demand' that Plaintiff consider the license agreement it proposed 'to prevent [the initiation of] further patent infringement actions against [plaintiff's] customers,' as Plaintiff asserts, there is no indication of any discussion or threat of litigation against Plaintiff. Nor, drawing all reasonable inferences in favor of Plaintiff, do Defendant’s actions constitute an 'aggressive enforcement strategy' warranting a finding of subject matter jurisdiction here, as Defendant’s strategy 'appears to involve suing . . . users,' including [plaintiff's] customers, 'not . . . suppliers,' such as [plaintiff]."

Broadsign International, LLC v. T-Rex Property AB, 1-16-cv-04586 (NYSD January 10, 2018, Order) (Swain, USDJ)

Thursday, January 11, 2018

Venue Determined When Cause of Action Accrued, Not Complaint Filing Date

The magistrate judge recommended denying defendant's motion to transfer for improper venue because defendant had a regular and established place of business in the district through two offices that closed before plaintiff filed suit and one office acquired a year after plaintiff filed suit. "⁠[A]pplication of the rule proposed in [Personal Audio, LLC v. Google, Inc. (E.D. Tex. Dec. 1, 2017)] -- using the exact date of the filing of the Complaint -- is too rigid. No one disputes that the causes of action accrued while [defendant] had at least one office in this district, and the undersigned has already found that until [its] closure, such a presence was regular and established. . . . [S]ince [defendant] had a regular and established place of business in this district when the causes of action accrued, and [plaintiff] filed its Complaint within a reasonable time thereafter, the undersigned finds that this element is met as to [defendant]."

ParkerVision, Inc. v. Apple Inc. et al, 3-15-cv-01477 (FLMD January 9, 2018, Order) (Klindt, MJ)

Wednesday, January 10, 2018

Repeated Sloppiness With Privilege Designations Justifies Discovery Sanctions

The court granted in part plaintiffs' motion for monetary sanctions for their motions to compel discovery defendants withheld as privileged. "The Court has conducted three previous in camera reviews of documents that Defendants withheld, and each time, the Court has compelled Defendants to review their privilege logs and produce additional documents in accordance with the law. . . . As a result of Defendants' consistent sloppiness and noncompliance, the Court has expended a great deal of time reviewing exemplars, holding conferences, and preparing opinions and orders compelling Defendants to produce additional documents that were improperly withheld. Likewise, Plaintiffs have spent substantial resources seeking to obtain documents that should have been produced long ago."

Au New Haven, LLC f/k/a Uretek LLC et al v. YKK Corporation, 1-15-cv-03411 (NYSD January 5, 2018, Order) (Netburn, MJ)

Tuesday, January 9, 2018

Storing Products at Amazon Fulfilment Center Does Not Qualify as Place of Business for Venue

The court granted defendant's motion to dismiss for improper venue because defendant did not have a regular and established place of business in the district through its use of an online retailer's fulfillment centers. "Plaintiff does not present any evidence or legal authority to support its argument that the Amazon FCs are the physical, geographical location of [defendant]. . . . Plaintiff contends that [defendant] leases the place of business since it pays a storage fee to Amazon in exchange for storing the product. Plaintiff has not conducted a legal analysis demonstrating that a monthly subscription fee equates to leasing space in the FCs. On the other hand, Defendant has presented evidence that it has no control over which FCs its products will be sent, and once stored at one Amazon FC, Amazon has discretion to redistribute [defendant's] products to another Amazon FC. Since [defendant] has no control over its products once they are sent to Amazon FCs, these storage centers cannot be said to be the 'place of Defendant.'"

Reeflection, LLC v. Spire Collective LLC d/b/a StoreYourBoard et al, 3-17-cv-01603 (CASD January 5, 2018, Order) (Curiel, USDJ)

Monday, January 8, 2018

Fact Dispute as to Scope of Assignment Precludes Summary Judgment on Assignor Estoppel

The court denied plaintiff's motion for summary judgment that defendant's invalidity counterclaim was barred by assignor estoppel because defendant's founders were named inventors of the patent-in-suit and assigned plaintiff the right to the patent's application. "It is undisputed that [defendant] is in privity with [the inventors]. But the question remains, and the parties greatly dispute, whether [the inventors] assigned to [plaintiff] an invention that is claimed in the [patent]. The issue turns on whether the invention assigned by [the inventors] to [plaintiff] is different from or merely a narrower version of the invention claimed in the [patent]. Although assignor estoppel is an equitable doctrine for the Court to ultimately decide, these subsidiary factual disputes make summary judgment on the issue inappropriate at this time."

Verinata Health, Inc., et. al. v. Ariosa Diagnostics, Inc., et al, 3-12-cv-05501 (CAND January 4, 2018, Order) (Illston, USDJ)

Friday, January 5, 2018

IPR Estoppel Does Not Apply to Invalidity Grounds Omitted From Petition

The court denied plaintiff's motion for summary judgment that its lighting patents were not invalid for lack of novelty or obviousness due to IPR estoppel. "⁠[Plaintiff] contends that, any invalidity contention that [defendant] did disclose in its preliminary and supplemental invalidity disclosures must fail because [defendant] is estopped from asserting such contention in federal court under 35 U.S.C. § 315(e)(2), since [defendant] 'raised or reasonably could have raised' any such contentions in its IPR petition. . . . Some courts . . . reason[] that [Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016)] only requires excluding from the scope of Section 315(e)(2) those invalidity grounds for which the PTAB did not institute review, but not invalidity grounds that the petitioner failed to raise in its petition because the narrower estoppel suggested by Shaw would encourage petitioners to hold back 'a second-string invalidity case in reserve in case the IPR does not go the defendant’s way.'. . . . There is much appeal in a broader reading of the estoppel provision. . . . [But that] reading of the estoppel provision is foreclosed by Shaw. The Federal Circuit in Shaw held that the phrase 'during inter partes review' applies only to the period of time after the PTAB has instituted review, and notwithstanding [plaintiff's] claims to the contrary, that holding was not limited to Section 315(e)(1) nor was it mere dicta."

Koninklijke Philips NV et al v. Wangs Alliance Corporation d/b/a WAC Lighting Co., 1-14-cv-12298 (MAD January 2, 2018, Order) (Casper, USDJ)

Thursday, January 4, 2018

Preliminary Relief Barring Plaintiff’s Enforcement Activity and Takedown Notices Denied

The court denied defendant's motion for a temporary restraining order and preliminary injunction to prohibit plaintiff's enforcement actions, including posting takedown notices with online retailers, because defendant failed to establish a likelihood of success on the merits of its noninfringement and invalidity counterclaims. "⁠[Defendant] provides no evidentiary support of its proposed claim construction to support such a narrow claim construction that would exclude several preferred embodiments. . . . [Defendant] has not provided the Court with any evidence of how a person of ordinary skill in the art would apply the references to the asserted claims to render the claims obvious. . . . [With respect to its invalidity counterclaim based on lack of enablement and written description, Defendant] fails to provide the Court with any indication of how those skilled in the art would read the patent at issue. . . . [With respect to its invalidity counterclaim based on anticipation, Defendant] has provided no evidence regarding when [plaintiff's] first public disclosure or sale of the invention occurred. Instead, [defendant] appears to be relying on an assumption that it will ask for and receive a spoliation instruction from the Court because of alleged destruction of evidence. But [defendant] cannot use this form of speculation to show a reasonable likelihood of success on the merits that the patent is invalid for prior public disclosure."

Blazer v. Chrisman Mill Farms LLC, 5-17-cv-00430 (KYED January 2, 2018, Order) (Reeves, USDJ)

Wednesday, January 3, 2018

Court's Questioning of Damages Expert No Basis for New Trial

The court denied defendant's motion for a new trial because defendant was not prejudiced by the court questioning defendant's damages witnesses at trial. "⁠[Defendant] believes that the Court expressed disdain for its positions in front of the jury, coloring their evaluation of the evidence despite an instruction not to take anything from the Court’s comments during trial. . . . [Defendant's expert] reiterated that the 20 Amp Limitation is 'just a test specification. No tool actually does that.' The Court responded, 'Understood, but that’s what patents are all about.' This lone comment, even if it could be seen as disparaging [the expert's] opinion, was not prejudicial. The Court’s one-liner did not unravel the prior thirty minutes of questioning. . . . The Court did accuse [defendant] of 'flailing in the wind,' but this was no more than the Court’s suggestion that the point had been made and it was time to move forward. . . . The trial record was replete with evidence supporting the jury’s damages determination, and the Court’s few comments and questions had little, if any, effect in the grand scheme."

Milwaukee Electric Tool Corporation et al v. Snap-On Incorporated, 2-14-cv-01296 (WIED December 29, 2017, Order) (Stadtmueller, USDJ)

Tuesday, January 2, 2018

District Court Split Excuses Pre- In re Micron Delay Asserting Venue Challenge

The court transferred plaintiff's patent infringement action in response to defendant's motion to dismiss and rejected plaintiff's argument that defendant's venue challenge was untimely. "⁠[Defendant] concedes that its motion came six months after [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct 1514 (2017)], but the delay was due to the fact that other courts interpreted TC Heartland differently. There was a district court split over whether a challenge to venue was waived if the moving party delayed in raising this issue. . . . Once the Federal Circuit issued its opinion in [In re Micron Technology, Inc., 875 F.3d 1091 (Fed. Cir. 2017)] holding that 'TC Heartland changed the controlling law,' [defendant] filed the instant motion within a week. . . . To hold that [defendant] was required to immediately file its change of venue motion after TC Heartland was issued, but prior to the definitive guidance in Micron Technology, when the only law in this circuit at the time held that TC Heartland did not change the law, would be patently unfair to [defendant]."

SCVNGR, Inc. d/b/a LevelUp v. DailyGobble, Inc. d/b/a Relevant, 1-16-cv-00134 (RID December 27, 2017, Order) (McConnell, Jr., USDJ)