YouTube Video Qualifies as Printed Publication

The court denied plaintiff's motion in limine to exclude a YouTube video as a prior art reference on the ground that it was not sufficiently accessible. "Although the Federal Circuit has not explicitly ruled that YouTube videos qualify, 'the statutory phrase "printed publication" has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.'. . . Plaintiff then notes that the [video] reference was uploaded on a channel which 'was not associated with a trade group or website well-known to the relevant community' and which no person would have a reason to search for. . . . A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. . . . . Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the 'reasonable diligence' that the law expects of a hypothetical prior art subject."

HVLPO2, LLC v. Oxygen Frog, LLC et al, 4-16-cv-00336 (FLND May 28, 2018, Order) (Walker, USDJ)

Bad Faith Patent Prosecution Supports Award of Attorney Fees Even Without Inequitable Conduct

Following summary judgment of invalidity and an appeal, the court granted defendant's motion for attorney fees under 35 U.S.C. § 285 and found that plaintiff's conduct during prosecution supported a finding that the case was exceptional. "Defendant has not proved that the patents would not have issued but for the withheld data. . . . However, the Court does take note of the withheld data for purposes of the totality-of-the-circumstances inquiry. . . . There is also evidence of intent to deceive the PTO. . . . Even if this did not constitute inequitable conduct, the Court finds that the selective disclosure of data and evasive responses provided to the Examiner are evidence of bad faith leading to a finding that this is an exceptional case. . . . Plaintiff's failure to notify the Examiner that [its expert] was an employee, rather than an independent expert, is an indication that this is an exceptional case, litigated in an unreasonable manner. . . . Presenting the declaration from [its expert] which explicitly contradicted his publications, and the failure to present the [expert's] papers themselves, are evidence of subjective bad faith leading to the conclusion that this is an exceptional case."

Howmedica Osteonics Corp. v. Zimmer, Inc. et al, 2-05-cv-00897 (NJD May 23, 2018, Order) (Walls, USDJ)

Storage Units Do Not Qualify as Regular and Established Place of Business

The court granted defendant's motion to dismiss plaintiffs' patent infringement action for improper venue because defendant did not have a regular and established place of business in the district through its storage units. "⁠[T]he storage units identified by Plaintiffs are likely 'physical places in the district' prong, insofar as they are 'building[s] or []part[s] of a building set apart for any purpose.' Plaintiffs also demonstrated that Defendant pays for these storage units, leading to a conclusion that the storage units are 'of the defendant'. . . . The question is whether the storage units are 'location[s] at which one carries on a business.' They are not. While Defendant’s customer service reps may 'typically' retrieve materials from the storage units to visit customers within this District, no 'employee or agent of [Defendant actually] conduct[s] business at' the storage units, whatsoever."

CDX Diagnostics, Inc. et al v. United States Endoscopy Group, Inc. et al, 7-13-cv-05669 (NYSD May 24, 2018, Order) (Roman, USDJ)

Defense Counsel’s Twenty-Year Representation of Plaintiff, Spanning Seven Months of the Instant Case, Does Not Justify Disqualification

The court denied plaintiff's motion to disqualify defense counsel who had previously represented plaintiff for 20 years on intellectual property matters and concurrently represented plaintiff in patent prosecution matters during seven months of the instant case because counsel's misconduct did not taint the underlying trial. "⁠[Counsel] has violated the Connecticut Rules of Professional Conduct. . . . However, not every violation of the Rules of Professional Conduct warrants disqualification. . . . [Plaintiff] has not . . . made any effort to identify any way in which it has been prejudiced or negatively affected by [counsel's] actions, let alone in a way significant enough to taint the integrity of the trial. . . . [T]here is no evidence that [counsel] obtained any confidential information from [plaintiff] in the course of its representation regarding the patent prosecutions. . . . [T]he subject matter of the current litigation is a different patent than those [counsel] prosecuted on behalf of [plaintiff], which representation originated from a joint venture with [defendant]. . . . Any substantive activity in [plaintiff's] patent prosecutions was completed with the issuance of the patents, the last of which occurred . . . over a year before [plaintiff] filed this case. . . . The parties agree that the extent of [counsel's] representation of [plaintiff] during the period of concurrent representation was limited to [plaintiff's] payment of an invoice and [counsel's] payment of a maintenance fee on the patent on [plaintiff's] behalf."

Rio Brands, LLC v. GCI Outdoor, Inc., 3-17-cv-00786 (CTD May 22, 2018, Order) (Hall, USDJ)

Expert’s Reliance on Unaccepted License Proposal Does Not Render Opinion Unreliable

The court denied defendant's motion to exclude the testimony of plaintiff's damages expert regarding a reasonable royalty rate because his reliance on an unaccepted proposal was sufficiently reliable. "⁠[The expert] discussed several additional distinguishing characteristics between the contemplated cross-license and the hypothetical license, including that the cross-license was never executed, the negotiation was for a worldwide license, design-around costs, and the possible collaboration between the parties. . . . [Defendant] argues that [his] opinions regarding this contemplated royalty offer should be excluded, because offers -- particularly if never conveyed -- have little value. . . . [A]t the time of this offer, [plaintiff's predecessor] and [a third party] were discussing a cooperation agreement, a situation quite distinct from anticipation of litigation. [Defendant's] criticisms can be adequately addressed through cross-examination and the presentation of competing evidence."

Plastic Omnium Advanced Innovation and Research v. Donghee America, Inc. et al, 1-16-cv-00187 (DED May 22, 2018, Order) (Stark, USDJ)

Response to Interrogatory Seeking Conception and Reduction to Practice Dates May Not Identify Voluminous Documents

The court granted defendant's motion to compel further interrogatory responses regarding conception and reduction to practice. "⁠[Defendant] concedes that [plaintiff] has narrowed the dates (indeed, [plaintiff] has said it will use the filing date for [one patent-in-suit]) but the issue of [plaintiff] citing 'hundreds of documents' with no explanation of their relevance. . . . [Plaintiff] shall prepare a document entitled 'Date of Conception' as to the [other patent-in-suit]. The document shall list the documentary support for its date range and attach the relevant documentation -- limited to 10 documents -- which shall be highlighted. [Plaintiff] shall do the same for 'Reduction to Practice.' These documents will serve as a base line for conception and reduction to practice. Should [plaintiff] choose to amend the dates at some later date, it will have to be based on newly discovered evidence."

Magna Electronics, Inc. v. Valeo, Inc. et al, 2-13-cv-11376 (MIED May 18, 2018, Order) (Cohn, USDJ)

Ratification of Subsidiary’s In-District Facility Qualifies as Regular and Established Place of Business

The court denied a defendant's motion to dismiss plaintiffs' patent infringement action for improper venue because defendant had a regular and established place of business in the district by ratifying its subsidiary's manufacturing and research facility as its own place of business. "⁠[Defendant's] own corporate announcement and reports from San Antonio media reflect that [defendant] announced its move to San Antonio . . . more than 8 years ago. The court concludes that an 8-year presence reflects a regular and established place of business. . . . [W]hatever the lease arrangements are, the court concludes that [defendant] has ratified the San Antonio facility as its place of business. Also, [defendant] represents that it has a place of business in the district, as it lists the San Antonio facility as a place of business on its website, in the telephone and other web-based directories, and has placed its name on a large sign on the exterior of building."

Board of Regents, The University of Texas System et al v. Medtronic, Inc. et al, 1-17-cv-00942 (TXWD May 17, 2018, Order) (Yeakel, USDJ)

Technical Expert’s Indefiniteness Opinions Excluded as Irrelevant for Relying on Claim’s Intended Result

The court granted plaintiff's motion to exclude the testimony of defendants' technical expert regarding defendants' enablement and written description theories as irrelevant. "Defendants conclude the claim limitation doesn’t satisfy the written-description or enablement requirements because the reduction can be achieved in more ways than just reducing the thickness of the insulator. But the proper focus is on structure rather than the intended result. [The claim at issue] is directed to a device, and the specification describes an embodiment of that device . . . . While the limitation recites the result of selecting that range, that result is not a structural limitation of the claim. Because his opinion is based on an incorrect interpretation of the limitation, the Court will grant the motion and exclude as irrelevant [the expert's] opinion that the specification does not provide guidance as to how the parasitic capacitance is reduced."

Kaist IP US LLC v. Samsung Electronics Co., Ltd. et al, 2-16-cv-01314 (TXED May 17, 2018, Order) (Payne, MJ)

Disingenuous Licensing Discussions Sufficient to Support Willful Infringement Claim

The court denied defendant's motion to dismiss plaintiff's willful infringement claims for failing to sufficiently allege egregious conduct through defendant's licensing negotiations. "When considering [plaintiff's] allegations and other facts pled in the Complaint that show that [defendant] knew in detail about how it infringed each Asserted Patent as a whole, a reasonable inference can be drawn that [defendant's] licensing discussions were disingenuous. . . . As such, the Court finds that the Complaint contains sufficient facts from which a plausible conclusion could be reached that [defendant's] conduct went beyond those 'in a typical infringement case' and thus was egregious. . . . [T]o the extent that [defendant] is arguing that the allegations pertaining to the settlement discussions cannot lend any support to [plaintiff's] willful infringement claim at the pleading stage, the Court rejects that argument. Whether [plaintiff] has evidence to prove its claims is a matter for another day."

Finjan, Inc. v. SonicWall, Inc., 5-17-cv-04467 (CAND May 16, 2018, Order) (Freeman, USDJ)

Pain Treatment Patents Do Not Claim Unpatentable Law of Nature

The court granted plaintiff's motion for summary judgment because the asserted claims of its pain treatment patents did not encompass unpatentable subject matter and found that the claims were not directed toward a law of nature. "⁠[Two claims] each recites a 'method of treating pain in a patient having mild or moderate hepatic impairment,' and teaches using a specific extended release formulation of hydrocodone bitartrate that has a particular release profile. Although the inventions recited in those claims were based upon a natural law -- the physiological response to hydrocodone in individuals with or without mild or moderate hepatic impairment -- the claims do more than merely report those physiological responses. Rather . . . the claims asserted in this case describe a specific dosing regimen to treat a specific condition based on the patient’s medical status."

Pernix Ireland Pain Ltd. et al v. Alvogen Malta Operations Ltd., 1-16-cv-00139 (DED May 15, 2018, Order) (Bryson, CJ)

Genotyping Patent Invalid Under 35 U.S.C. § 101

Following a jury trial, the court granted plaintiff's motion for judgment as a matter of law because the asserted claims of plaintiff’s labrador retriever genotyping patent encompassed unpatentable subject matter and found that the claims were directed toward a natural phenomenon. "⁠[T]he patent utilizes a number of scientific terms which at first review appear difficult to understand and make the patent appear impressive on its face. However, when the language is explained, the patent simply states that the search for the mutation involves the laboratory examination of Labrador Retriever DNA, which resulted in the discovery of the mutation, which in combination with similar mutations of Labrador Retrievers who mates with a carrier results in offspring having a higher probability of inheriting the mutation. The mutation itself and the fact that it is inherited through male and female dog carriers mating are both natural phenomena."

Genetic Veterinary Sciences, Inc. d/b/a Paw Prints Genetics v. LABOklin GmbH & Co. KG et al, 2-17-cv-00108 (VAED May 14, 2018, Order) (Morgan, SJ)

Software Qualifies as "Article of Manufacture" for Disgorgement of Profits Under 35 U.S.C. § 289

Following a jury trial, the court denied defendant's renewed motion for judgment as a matter of law that plaintiff was not entitled to disgorgement damages under 35 U.S.C. § 289 for infringement of its design patents because plaintiff's software qualified as an article of manufacture. "⁠[Defendant] argues that [plaintiff's patents] claim a 'display screen' as their article of manufacture and, because [defendant] only presented evidence of profits from a software product and not a physical 'display screen,' it cannot recover disgorgement damages. . . . [Defendant] has already admitted that its products . . . infringe the [patents]. Thus, [defendant] has already admitted that there exists an 'article of manufacture' to which the patented designs . . . have been applied. Moreover . . . [s]oftware is 'a thing made by hand or machine,' and thus can be an 'article of manufacture.'"

Microsoft Corporation v. Corel Corporation et al, 5-15-cv-05836 (CAND May 11, 2018, Order) (Davila, USDJ)

$75 Million Jury Verdict Reinstated

The court granted plaintiff's motion to reconsider an earlier order granting defendant a new damages trial and upon reconsideration reinstated the jury's $75 million verdict because the extensive evidence of unaccused products was not reflected in the verdict. "⁠[Defendant's] complaint is that the damages model 'is flawed' and 'contrary to law' inasmuch as a patentee 'can only receive infringement damages on those devices that actually performed the patented method during the relevant infringement period.' Yet [defendant] was not assessed damages on unaccused products because the jury was instructed that lump sum damages are available only for 'products [plaintiff] has accused in this case.'. . . [Plaintiff] simply populated the 'book of wisdom,' with information about projected sales of both accused and unaccused products. . . . Although [defendant] presented the jury with damages estimates that accounted for future sales of unaccused products, the jury’s $75 million assessment is consistent with the court’s instruction to award damages only for accused products. . . . Thus, while the jury’s assessment includes damages for future sales of accused products, which by definition is what a lump sum payment reflects, the award did not necessarily include damages for future sales of unaccused products."

Ericsson Inc. et al v. TCL Communication Technology Holdings Limited et al, 2-15-cv-00011 (TXED May 10, 2018, Order) (Payne, MJ)

Damages Expert Precluded From Relying on a Settlement Agreement He Was Unable to Review Due to Protective Order Restrictions

The court granted in part plaintiff's motion to exclude the testimony of defendant's damages expert regarding prior settlement agreements because the expert was not authorized to review one agreement under the protective order. "Plaintiff contends that because [the expert] cannot review the terms of [a settlement agreement], 'he cannot offer any opinion about whether the terms of the [OpenKey] Settlement Agreement are a reliable indicator of a reasonable royalty.' . . . Defendant’s argument that [its damages expert] can determine the circumstances surrounding [a] Settlement Agreement from [plaintiff's damages expert's] report alone is flawed. Plaintiff notes that [its own] expert report does not disclose the full terms or circumstances of the [agreement], and points out that the report states that [plaintiff's expert] was unable to draw any meaningful conclusions from [the agreement] under the Georgia-Pacific analysis. Thus, it seems implausible that [defendant's expert] knew of the circumstances or even the terms of the [agreement]. Since [defendant's expert] cannot review the terms of the [agreement], [he] may not rely on the [agreement] in offering his opinion."

S3G Technology LLC v. UniKey Technologies, Inc., 6-16-cv-00400 (TXED May 8, 2018, Order) (Mitchell, MJ)

Pre-Alice Finding of Validity Collaterally Estops Defendant From Challenging Validity Under 35 U.S.C. § 101

The court granted plaintiff's motion for summary judgment that defendant's challenge under 35 U.S.C. § 101 was barred by collateral estoppel because a jury found the patent-in-suit valid in the parties' prior action. "While the Federal Circuit has yet to address squarely whether multiple theories of invalidity constitute 'different' issues for collateral estoppel purposes, the majority of courts that have considered the question view patent validity as a single issue. . . . [E]ven if [Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)] had constituted a change in the law, [defendant] does not explain how pre-Alice law would have precluded [it] from bringing a Section 101 defense. . . . There is no evidence that a Section 101 defense was completely unavailable to [defendant] under the framework set out in [Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1282 (2012)], or that such a challenge would have been futile prior to Alice."

XpertUniverse, Inc. v. Cisco Systems, Inc., 3-17-cv-03848 (CAND May 8, 2018, Order) (Seeborg, USDJ)

Plaintiff’s Former Officer and Lead Inventor Disqualified as Consultant for Defendant

The court granted plaintiff's motion to disqualify plaintiff's former officer/lead inventor of the patents-in-suit from consulting with defendant on non-confidential matters. "⁠[Defendant] contends that separate and apart from any confidential information he may have received from [plaintiff and its predecessor], [its consultant] has knowledge regarding the background and subject matter of the patents-in-suit that is not confidential. [Defendant] argues it has retained [him] to consult only about these matters, not confidential information or patent strategy. However, [plaintiff] need not show that [its former officer] has been retained to consult regarding [plaintiff's] confidential information or patent strategy, but need only show that he received confidential information 'that is relevant' to the current patent litigation. . . . Given that [the consultant] is an inventor of the technology at issue in this case, it is impractical to expect him to be able to parse 'the specifics of the knowledge [he] gained while working at [plaintiff's predecessor] and his knowledge generally.'"

Promptu Systems Corporation v. Comcast Corporation et al, 2-16-cv-06516 (PAED May 7, 2018, Order) (Sanchez, USDJ)

Working Closely With Corporate Affiliate Does Not Create a Regular and Established Place of Business Necessary for Venue

The court granted defendants' motion to transfer for improper venue because one subsidiary defendant's contacts with the district were insufficient to establish a regular and established place of business in the district for another subsidiary defendant. "Defendants concede that [one defendant] has a place of business in this district in the form of a retail store. . . . Defendants dispute some of [plaintiff's] allegations, but even if the court assumes that all of them are true, they show only that defendants are both subsidiaries of the same parent company and that they collaborate on matters common to both of them. That’s not sufficient to treat defendants as interchangeable for the purpose of determining whether each has a place of business in this district. . . . Because there is no authority for the view that venue is proper as to one corporation simply because that corporation 'works closely' with another corporation that may be sued in that district, [plaintiff] has failed to meet its burden to show that venue is proper in this district."

Unity Opto Technology Co., Ltd. v. Lowe's Home Centers, LLC et al, 3-18-cv-00027 (WIWD May 4, 2018, Order) (Peterson, USDJ)

Technical Expert Precluded From Offering Testimony at Odds With Plain and Ordinary Meaning of Patent Claim

The court granted in part defendant's motion to strike portions of the report of plaintiff's technical expert for applying improper legal principles. "The asserted claims require that each created reprogrammable communication protocol 'includes a command code set. . . .' The parties dispute the meaning of 'includes.' When asked whether a communication protocol that did not include a command code set would satisfy this claim limitation, [the expert] responded, '⁠[I]t’s a question of whether it’s capable of including a command code set that defines those signals to -- you have to have -- it needs to be capable.' That’s not the question. The plain and ordinary meaning of the phrase requires more than a mere capability that the communication protocols include a command code set: It requires actual inclusion. Accordingly, the Court will preclude [the expert] from advancing any argument that, with respect to this limitation, mere capability of inclusion is sufficient."

Salazar v. HTC Corporation, 2-16-cv-01096 (TXED May 3, 2018, Order) (Payne, MJ)

Ceasing Infringing Activity Eliminates Substantial Controversy Necessary for Declaratory Judgment of Infringement

The court granted defendants' motion to dismiss plaintiff's claim for a declaration of patent infringement for lack of subject matter jurisdiction. "Defendant, through its principal, declares under penalty of perjury that it has ceased the allegedly infringing conduct. . . . Defendant here has ceased the accused activity, employs a different design, and plans to destroy the prototypes. . . . [I]t is not clear that Defendant here stopped the accused activity prior to the commencement of the lawsuit. This is, however, a distinction without a difference. . . . Because Defendant has ceased the allegedly infringing activity, an opinion of declaratory judgment would amount to an advisory opinion based on hypothetical facts. Defendant has made sufficient representations to remove any reasonable apprehension of infringement. Further, Defendant is not currently infringing and no harm appears immediate."

Resh, Inc. v. Skimlite Manufacturing Inc. et al, 5-18-cv-00291 (CACD April 30, 2018, Order) (Bernal, USDJ)

Early Daubert Motion Permitted for Law Professor Expert

The court denied plaintiff's motion to strike defendant's expert report from a law professor, but allowed plaintiff to file an early Daubert motion. "Plaintiff, mindful that such reports have about as much chance of seeing the light of day as the Washington Generals did of beating the Globetrotters, wants to quash it now. Defendant points out that the usual procedure is to dispose of such issues by means of a Daubert motion. Plaintiff wants to resolve the matter through the more expeditious and less expensive discovery dispute procedure. Unfortunately, it really is not a discovery dispute. In order to avoid unnecessary expense, however, I will permit Plaintiff to file a Daubert motion now. . . . If the Generals win, I will then permit Plaintiff to file an expert report from a law professor in reply."

BASF Corporation v. Johnson Matthey Inc., 1-14-cv-01204 (DED May 1, 2018, Order) (Andrews, USDJ)

Production of Entire iOS and watchOS Source Code Not Relevant and Proportional to Infringement of Step Counter Patent

The court denied plaintiff's motion to compel production of the entire source code for two of defendant's operating systems because plaintiff failed to establish that the additional code was relevant and proportional to the needs of the case. "⁠[Plaintiff] asks that [defendant] produce the entire source code for the iPhone/iPad’s and [Apple] Watch’s operating systems (iOS and watchOS, respectively). . . . [Plaintiff's] claims relate solely to the [patent-in-suit], a patent for a step counter. Apple iPhones, iPads, and Watches encompass hundreds or thousands of features wholly unrelated to those claims. . . . [Plaintiff] intimates that the way a code review 'usually' works is that the inspecting party’s code expert may 'look at whatever he thinks relevant.' [Plaintiff] cites no authorities for this proposition. . . . If [plaintiff] believes those particular code files are relevant and that [defendant] should produce them, and if [defendant] disagrees, the parties must meet and confer in good faith to try to resolve the dispute. . . . But [plaintiff] may not circumvent this procedure and demand that [defendant] produce all of its [operating system] source code so that [plaintiff] can 'paw[] through [defendant]’s source code without limitation.'"

Uniloc USA, Inc. et al v. Apple Inc., 4-18-cv-00362 (CAND April 30, 2018, Order) (Beeler, MJ)

Counsel’s Failure to Investigate Plaintiff’s Ownership of Patent-in-Suit Justifies $360,000 Sanctions Award

The court granted defendants' motion for more than $360,000 in sanctions under Rule 11 and 28 U.S.C. § 1927 against plaintiff's counsel because plaintiff's standing allegations and pre-suit investigation were unreasonable. "⁠[Counsel] disregarded any reasonable inquiry into the ownership or assignment of the [patent-in-suit], and asserted this claim for infringement without any objectively reasonable basis for the allegation that [plaintiff] was the owner of the right to enforce the [patent] by assignment. . . . [Counsel's] alleged reliance on its client does not absolve it of any of the violations of Rule 11. . . . [Counsel] improperly withheld the purported assignment documents, drafted in March 2016, until March 23, 2017. . . . [Plaintiff's] alleged oral, exclusive license, even if it had existed since prior to the original Complaint, would not have cured the standing defect or altered that [plaintiff's] claim for infringement of the [patent] was subject to dismissal. . . . [Counsel's] pattern of conduct demonstrates bad faith or a disregard of attorney obligations in filing and pursuing claims, which is akin to bad faith."

Sub Zero Franchising, Inc. v. Frank Nye Consulting LLC, d/b/a The Arctic Scoop et al, 2-15-cv-00821 (UTD April 27, 2018, Order) (Jenkins, SJ)