Preliminary Injunction Denied, But Two-Day TRO Granted Precluding Launch of Generic Estrogen Patch

The court denied plaintiff's motion for a preliminary injunction but granted plaintiff's motion for a TRO precluding the launch of defendants' generic transdermal estrogen product. "Plaintiffs' motion is denied to the extent it seeks a PI, and granted to the limited extent that [defendant] is temporarily restrained from launching its Generic Product [for two days]. At that point this limited TRO will automatically expire unless additional relief, such as a stay pending appeal, is granted either by this Court or the Court of Appeals, relief this Court will only consider if [plaintiff] files a notice of appeal and an expedited motion for a stay no later than [tomorrow]."

Noven Pharmaceuticals, Inc. v. Mylan Technologies Inc. et al, 1-17-cv-01777 (DED August 20, 2018, Order) (Stark, USDJ)

Request for Attorney Fees of $1.3 Million Reduced to $100 Thousand Due to Heavily Redacted Billing Records

The court awarded defendant only $100,000 of its claimed $1.3 million in attorney fees under 35 U.S.C. § 285 because defendant failed to present sufficient evidence to support its fee claim. "No explanation is included as to nature of the tasks performed that [defendant] categorizes as exclusive to the defense of [one patent-in-suit], to which [defendant's] recovery is limited. The over 400 pages of invoices provided have been completely redacted of all narrative description of the work performed. . . . The Court is highly skeptical that the descriptive narratives of every single time entry by every single timekeeper in this case constituted an attorney-client privileged communication or work product. . . . The Court declines [defendant's] offer to provide the Court with the 400 plus pages of billing records unredacted in camera so the Court can review the individual entries and determine from the hundreds of pages the reasonableness of the work performed. . . . Measured by the pleadings and motions filed attributable to the [patent-at-issue], the Court, in its discretion, awards [defendant] $100,000.00."

IPS Group, Inc. v. Duncan Solutions, Inc., 3-15-cv-01526 (CASD August 17, 2018, Order) (Bencivengo, USDJ)

Prevailing Party’s Previously-Sanctioned Misconduct Weighs Heavily Against Award of Attorney Fees

Following remand, the court denied plaintiff's motion to reinstate its award of attorney fees under 35 U.S.C. § 285 because of plaintiff's own misconduct in seeking a TRO. "The Federal Circuit concluded not only that '⁠[plaintiff's] misconduct cannot be disregarded on the theory that failure to award fees is equivalent to double-sanctioning [plaintiff],' but also 'that [because] this misconduct has already been sanctioned[, it] should be weighed more heavily, rather than be excluded in the 35 U.S.C. § 285 analysis.' Defendants urge that '⁠[l]itigants who sanctionably lie do not deserve a fee award.' The Court sanctioned [plaintiff] for submitting [a] deceitful declaration in support of the TRO, 'without a colorable basis' and 'in bad faith, i.e., motivated by improper purposes such as harassment and delay.' Weighing this litigation misconduct more heavily, considering the Court's findings that [defendant's] noninfringement argument was not groundless and that its litigation strategy was reasonable, the Court finds that [defendant's] conduct did not warrant fee shifting as an exceptional case under either the Patent or Lanham Acts."

Romag Fasteners, Inc. v. Fossil, Inc., et al, 3-10-cv-01827 (CTD August 16, 2018, Order) (Arterton, USDJ)

Employee’s Home Office Qualifies as Regular and Established Place of Business

The court denied one defendant's motion to dismiss for improper venue because defendant had a regular and established place of business through an employee's home office in the forum. "⁠[One defendant's] New York employee's home office is not merely a 'sporadic' or isolated work environment. . . . [S]ales representatives 'contact[] a prospective customer at a potential customer's office' and 'take initial sales orders.'. . . Although [defendant] does not require sales people to live in their assigned territory, [it] admits that it 'tries to hire people living within their assigned sales territory,' one of which is New York. Indeed, [defendant's] job postings reveal that it seeks out territory managers for specific locations. . . . And . . . sales agents must contact potential customers at their offices and conduct trainings when [defendant's] products arrive. All of these tasks necessitate proximity to customers."

RegenLab USA LLC v. Estar Technologies Ltd. et al, 1-16-cv-08771 (NYSD August 15, 2018, Order) (Carter, Jr., USDJ)

Unauthorized Amendment of Contentions Does Not Require Motion to Strike if the Issue is Clearly and Timely Raised by Letter

The court denied as moot defendant's motion to strike plaintiff's supplemental infringement contentions after plaintiff conceded the contentions should be withdrawn. "Except in response to the Court’s claim construction ruling, a plaintiff may only amend its infringement contentions with leave of Court, which requires a showing of good cause. [Plaintiff] never moved for such leave. . . . Thus, under the rules, [its] supplemental infringement contentions never had any operative effect, and [defendant's] motion was not technically necessary. . . . To be clear, however, accused infringers should not remain silent about 'amended' or 'supplemental' contentions served without a motion for leave and expect to avoid those contentions late in the proceeding. . . . But if the defendant has clearly and timely raised an issue with the plaintiff’s failure to seek leave -- as [defendant] did here by way of its [letter to plaintiff] -- the defendant need not then spend time moving to strike the 'amended' contentions."

Traxcell Technologies, LLC v. AT&T, Inc. et al, 2-17-cv-00718 (TXED August 14, 2018, Order) (Payne, MJ)

Plaintiff’s Controlling Shareholder Joined as Necessary Party for Potential Attorney Fees Liability

Following summary judgment, the court granted defendant's motion to join plaintiff's founder/inventor as a necessary party and pursue attorney fees against him under 35 U.S.C. § 285. "There is no evidence in the record that establishes that [plaintiff] currently has income or liquid assets. In fact, [the founder's] own declaration shows that [plaintiff] lacks sufficient financial resources. . . . Moreover, [defendant] provides evidence that [plaintiff] has not paid its fees and costs to its former counsel for over a year. . . . Given [the founder's] controlling shareholder power and his status as the only person from [plaintiff] who is involved in this litigation, the Court finds that [his] activities may potentially subject him to liability for attorneys’ fees and that he should be joined in this action."

Phigenix, Inc. v. Genentech, Inc., 5-15-cv-01238 (CAND August 13, 2018, Order) (Freeman, USDJ)

Jury Finding of Willful Infringement Does Not Satisfy Section 287 Notice Requirement

Following remand, the court granted defendant's motion for summary judgment to preclude plaintiff from seeking pre-suit damages and rejected plaintiff's argument that the jury's willful infringement finding satisfied plaintiff's obligation to establish actual notice. "⁠[Plaintiff] argues . . . that it meets it burden to show actual notice under Section 287 based on both the Court’s rulings and the jury’s findings of willful infringement. [Plaintiff] further points to evidence introduced at trial that [defendant] knew about the [patents-in-suit] and was aware internally about potential infringement. But the reading of the statute that [plaintiff] urges conflates the patentee-centered inquiry of notice under Section 287(a) with the infringer-centered inquiry of willfulness with regard to liability. . . . The jury’s finding of willfulness does not relieve [plaintiff] of its obligation to mark or notify -- neither of which [plaintiff] did prior to [filing suit]. "

Arctic Cat Inc. v. Bombardier Recreational Products Inc. et al, 0-14-cv-62369 (FLSD August 10, 2018, Order) (Bloom, USDJ)

Counsel’s Removal of Non-Disclosure Footer From Purported Prior Art Document Warrants Award of Monetary and Evidentiary Sanctions

The court imposed monetary sanctions against defense counsel for removing a non-disclosure footer from an exhibit in support of defendant's motion to dismiss on the ground that the accused device was publicly disclosed prior art. "I do not find that [counsel] intentionally doctored the Power Point presentation or intentionally proffered false or misleading evidence to the Court when he filed [defendant's] motion to dismiss. . . . However, I do find that his conduct was reckless . . . both as to the initial filing of the Power Point presentation from which the non-disclosure footer was removed, and as to his failure to undertake a serious investigation as to why the error occurred and to timely bring the matter to the Court’s attention. The gist of [defendant's] motion to dismiss was that the presentation to [an automotive group] was a public disclosure that invalidated Plaintiff’s claim as prior art. The basis of the motion would therefore be open to question in the light of evidence that the presentation was not public, but subject to confidentiality and non-disclosure. . . . [A] reasonable attorney who became aware that he or she had inadvertently filed an exhibit that had deleted this information would be horrified. . . . Instead, after being informed that he filed an exhibit that he should have known had relevant information removed, he dug in."

Webasto Thermo & Comfort North America, Inc. et al v. Bestop, Inc., 2-16-cv-13456 (MIED August 9, 2018, Order) (Whalen, MJ)

Knowledge of Potential Infringement During Prior Settlement Does Not Trigger Equitable Estoppel

Following jury and bench trials, the court found that equitable estoppel did not preclude plaintiff's claims for infringement of its footwear design patents because there was no misleading conduct following the parties' settlement of an earlier case. "⁠[Plaintiff] did not act in a misleading way when it contractually gave [defendant] the right to sell potentially infringing boots in the [prior] Settlement Agreement. . . . [Defendant] argued that [plaintiff] was aware of the [current accused] designs as early as [seven years ago]; even if that were true, [plaintiff] did not act in a misleading manner because [plaintiff] had no obligation to settle claims that exceeded the scope of the [prior] Litigation."

Deckers Outdoor Corporation v. Romeo and Juliette, Inc. et al, 2-15-cv-02812 (CACD August 8, 2018, Order) (Hatter, USDJ)

Instruction That Jury “Should” Consider Objective Indicia Not Erroneous

Following a jury verdict of invalidity, the court denied plaintiff's motion for a new trial because the jury instructions regarding obviousness were proper. "⁠[T]he Court instructed the jury that it 'should' consider objective indicia of nonobviousness in making its obviousness determinations. [Plaintiff] contends that the jury should have been instructed that it 'must' consider objective indicia of non-obviousness because such considerations are mandatory. . . . [Plaintiff's] argument . . . has more traction in the context of statutes and contracts: words written by lawyers, argued over by lawyers, and interpreted by lawyers. Here, however, in the context of jury instructions, 'should' sufficiently conveyed to the members of the jury (none of whom were lawyers) the purportedly mandatory nature of their consideration of objective indicia of nonobviousness. . . . Even if it was error for the Court to use 'should' rather than 'must,' such error was harmless -- it neither misled the jury nor had a probable effect on the verdict."

Bombardier Recreational Products, Inc et al v. Arctic Cat, Inc et al, 0-12-cv-02706 (MND August 7, 2018, Order) (Tunheim, USDJ)

Post-Verdict Sales of Infringing Product Support Award of Enhanced Damages

Following a jury verdict of willful infringement, the court granted in part plaintiff's motion for enhanced damages and increased the damage award by 25% because one-quarter of defendant's sales at issue took place after the verdict. "⁠[E]nhancement is appropriate in light of evidence of culpable conduct presented at trial and [defendant's] deliberate and conscious decision to continue selling [the accused product] after the verdict. . . . [O]n the pre-trial record, the question of infringement was, without doubt, debatable. But the situation changed at trial. [Plaintiff] presented credible evidence of deliberate copying. . . . The evidence also raised doubts about whether [defendant] attempted in good faith to evaluate infringement after being sued. . . . After the verdict, [defendant] continued to sell [the accused product] and did not modify the units in any way. Its course of conduct can only be seen as intentional, and entirely at its own risk."

Johnstech International Corp. v. JF Technology Berhad et al, 3-14-cv-02864 (CAND August 6, 2018, Order) (Donato, USDJ)

Vague Interrogatories a "Gift" to Answering Party

The court granted in part plaintiff's motion to compel further interrogatory responses regarding defendants' offers to sell the accused surgical products. "The dispute lies with Defendants’ response to the portion of the Interrogatory calling for a 'detailed description of the circumstances of [defendants'] offering to each customer.' Defendants assert that this portion of the request is vague, irrelevant and not proportional. . . . Its vagueness was a gift from Plaintiff; Defendants were free to interpret it and provide a response, so long as the response was reasonable. Doing nothing was not acceptable. . . . Defendants need not, in supplementing their response, respond directly to the 8 categories of information Plaintiff believes should be in the response. Defendants may consider the list merely as suggestions that it may use to craft a reasonable response."

NuVasive, Inc. v. Alphatec Holdings, Inc. et al, 3-18-cv-00347 (CASD August 3, 2018, Order) (Dembin, MJ)

Defense Counsel’s Past Representation of Party to Confidential Settlement Agreement Does Not Justify Disqualification

The court denied plaintiff's motion to disqualify defense counsel who represented a third party as a defendant in another case involving the same patent-in-suit that resulted in a confidential settlement agreement. "⁠[B]ecause [counsel] did not represent [plaintiff] in that prior matter, there is no way that he could have had access to relevant privileged information belonging to [plaintiff], which is the third requirement of the test. The only claim is that he is now aware of the information contained in the confidential settlement agreement entered into in that case. There is no claim that [counsel] violated his duty of loyalty to his former client, and no claim that he has 'divulge[d] confidential communications' that he learned from his former client. Nor has there been any claim that he accepted representation of a person whose interests are adverse to those of his former client. . . . [P]laintiff provides no authority for this novel proposition that this set of circumstances demands disqualification of the adversary’s attorney."

Tour Technology Software, Inc. v. RTV, Inc., 1-17-cv-05817 (NYED August 2, 2018, Order) (Pollak, MJ)

Conclusory Disclaimer Stricken From Expert’s Report

The court granted plaintiff's motion to strike portions of the reports of defendant's invalidity experts which included disclaimers. "⁠[Plaintiff] insists that the following language should be stricken from the claim charts included with [the experts'] Invalidity Reports: 'Even if these references do not expressly disclose this claim element, the claim is obvious due to the inherent disclosure of the references and/or the knowledge of one of ordinary skill in the art. . . .' The failure of [defendant's] experts to provide any analysis supporting their conclusions is prejudicial to [plaintiff] because it cannot adequately prepare to cross-examine [them] regarding said conclusions or counter their reasoning with [its] own experts. [Defendant's] argument that the challenged statements are not 'reservations' or 'disclaimers,' but instead, reflect 'the fact that the claim elements are also found elsewhere,' does not address the problem with the experts’ lack of analysis. If [defendant] is correct, then there is no harm in striking the statements."

Karl Storz Endoscopy-America, Inc. v. Stryker Corporation et al, 3-14-cv-00876 (CAND August 1, 2018, Order) (Corley, MJ)

Victory at Trial Does Not Justify Increase in Rate for Ongoing Royalty

Following a jury trial, the court partially granted plaintiff's motion for an ongoing royalty and awarded the same royalty rate imposed by the jury. "⁠[T]he Court refused to grant a preliminary injunction . . . finding that because [plaintiff] did not practice that patent, [it] could not show any irreparable harm. . . . [T]he Court is unwilling to award [plaintiff] a royalty enhancement predicated only upon its victory at trial. This is especially so because the hypothetical negotiation the Court must now envision mirrors the hypothetical negotiation the jury already considered in setting the $4-per-sale royalty rate which [plaintiff] seeks to enhance. . . . [Plaintiff] has not shown that a hypothetical negotiation conducted now should end any differently than the hypothetical negotiation envisioned by the jury in setting the rate originally."

The Chamberlain Group, Inc. v. Techtronic Industries Co., Ltd. et al, 1-16-cv-06097 (ILND July 31, 2018, Order) (Leinenweber, SJ)

"Obscure" Royalty Rate Does Not Render Jury Award Excessive

Following a jury trial, the court denied defendant's motion for new trial and rejected defendant's argument that the jury's damages award was excessive. "Because the Court granted judgment of matter of law against [plaintiff] on the issue of lost profits, [plaintiff] was only entitled to a reasonable royalty. . . . [Defendant] argues that the jury’s damages award 'does not appear to be based on a reasonable royalty since it amounts' to obscure percentages. . . . [Defendant] cites no authority requiring the jury to award a reasonable royalty based on a round number. But even then . . . the Court can arrive at the $2,624,288 damages amount with simple math. . . . A reasonable jury may have resolved this discrepancy [between the parties' experts] by averaging the two sales figures, which results in a sales figure of $16,930,546. The jury’s damages award of $2,624,288 is 15.5% of $16,930,546. Although not required by law, the Court finds that 15.5% is a clean royalty rate that a jury could be reasonably expected to award [plaintiff] for [defendant's] infringement."

Schwendimann v. Arkwright Advanced Coating, Inc., 0-11-cv-00820 (MND July 30, 2018, Order) (Tunheim, USDJ)

Google Global Cache Server Housed in Local ISP Qualifies as Regular and Established Place of Business

The court denied Google's renewed motion to dismiss for improper venue because it had a regular and established place of business in the district through its Google Global Cache servers housed by third-party ISPs. "⁠[W]hile a virtual space or electronic communications alone are insufficient to denote a 'place' within the meaning of the statute, they may, with more, be indicative of the requirement having been met. . . . Here . . . there is more than 'merely' 'a virtual space or [] electronic communications from one person to another.' The 'place' is specifically localized: a physical server occupying a physical space. Not only does Google exercise exclusive control . . . over the digital aspects of the GGC, Google exercises exclusive control over the physical server and the physical space within which the server is located and maintained. . . . [Defendant's] ownership of the server and its contents is absolute, as is [its] control over the server’s location once it is installed. . . . The statute does not require 'substantial' business or 'large' impact from the business being done at the place of business -- in order to lay proper venue in a judicial district, the statute simply requires that a regular and established place of business be present."

SEVEN Networks, LLC v. Google LLC, 2-17-cv-00442 (TXED July 19, 2018, Order) (Gilstrap, USDJ)

Intercompany Sales From Patentee to Wholly-Owned Subsidiary May Constitute “Sales” for Purposes of Lost Profits

The court denied plaintiff's motion for summary judgment that defendant was not entitled to lost profits damages for infringement of its interferon therapy patent on the ground that only defendant's subsidiary sold treatments in the U.S. "⁠[Defendant] explains that it sells [its products] to [its non-party wholly owned subsidiary] in return for payment of an intercompany purchase price. [The subsidiary] then sells those products to wholesalers and pharmacies. The lost profits that [defendant] is principally seeking in this case are on the intercompany sales from [defendant] to [the subsidiary]. . . . [T]he intrafamily, intercompany sales from [defendant] to [its subsidiary] can constitute 'sales' by [defendant] for lost profits purposes. [Plaintiff] has not appeared to have cited a blanket rule prohibiting the fact finder from considering such transactions in a lost profits analysis. In addition, construing the facts in the light most favorable to [defendant], the Court finds that [defendant] has produced enough evidence that a rational juror could conclude that the profits of [the subsidiary] flow inexorably to [defendant]."

Bayer Healthcare Pharmaceuticals Inc. v. Biogen Idec Inc., 2-10-cv-02734 (NJD July 26, 2018, Order) (Cecchi, MJ)

Significance of ITC Complainant’s Domestic Investment in Patented Products is Not Determined by Reference to Complainant’s Overall Domestic Investments

The ALJ denied respondents' motion for summary determination that complainants could not satisfy the economic prong of the domestic industry requirement because of their de minimis domestic investments. "The core of Respondents’ argument here is that the percentage of [complainant's] domestic investments in the patented products is too small in relation to its overall domestic investments (to say nothing of its worldwide investments) to be significant. Respondents assume that there is a level of relative investment below which it is impossible to 'credibly establish' significant investments. Respondents’ analysis fails to take proper account of the Commission’s guidance that determining satisfaction of the economic prong is a flexible exercise. . . . [I]nvestments made by a large entity may appear less significant when subjected to a strictly mathematical comparison with overall expenditures, but such investments may be deemed substantial nevertheless. . . . Respondents cite no authority for their contention that '⁠[complainants'] investments are simply too small,' and such an assertion contradicts well-established ITC precedent holding that a domestic industry is not determined by reference to absolute numbers."

LED Lighting Devices, LED Power Supplies, and Components Thereof, 337-TA-1081 (ITC July 24, 2018, Order) (Lord, ALJ)

Section 271(e) Safe Harbor Extends to Clinical Trial Participants’ Continued Treatment After Trial

The court granted defendant's motion for summary judgment that it did not infringe plaintiff's chronic pain treatment patents because the post-trial use of the accused systems fell within the safe harbor provision of 35 U.S.C. § 271(e). "The use of the [two] systems in patients that have participated in the Accelerate trial fits within the safe harbor provision of 35 U.S.C. § 271(e), even after the patients have completed their participation in the trial. This use is 'reasonably related to the development and submission of information' to the FDA for device approval. The FDA specifically approved a trial plan that allowed participants to continue to receive treatment after results were collected. And international standards for medical research require trial sponsors allow participants to access studied treatments even after the trial's conclusion."

Nevro Corp. v. Boston Scientific Corporation et al, 3-16-cv-06830 (CAND July 24, 2018, Order) (Chhabria, USDJ)