Where defendant modified its product after providing a sample to plaintiff in discovery, plaintiff was entitled to a sample of the modified product. "[Plaintiff's] sample requests are intended to . . . identify the nature and composition of the . . . product as [defendant] intends for it to be sold. . . . this matter will not be decided based on a hypothetical product."
Eli Lilly and Co. v. Teva Pharm. USA, Inc., 1-06-cv-01017 (INSD December 5, 2008, Order).
Defendants were not estopped under 35 U.S.C. § 315(c) from arguing invalidity based on a prior art computer even though the computer "was actually raised as potential prior art during the [inter partes] reexamination proceeding" because "in reexamination proceedings, the PTO considers only 'patents or printed publications' " and a physical computer is neither.
Acco Brands, Inc. v. PC Guardian Anti-Theft Products, Inc., 3-04-cv-03526 (CAND December 4, 2008, Order)
"Despite filing a 'Joint Motion for Entry of Protective Order,' the Protective Order as proposed by the parties . . . contained a disputed provision and was therefore not actually agreed to by the parties. . . . [T]he parties may submit a protective order that conforms with the protective order suggested by the local rules or a protective order agreed upon by competent counsel. If the parties' current counsel cannot agree on a protective order, the Court suggests they retain alternative, competent counsel."
Victor Company of Japan, Ltd. v. Cyberlink Corp., 1-08-cv-00041 (TXWD November 25, 2008, Order)
"A rule that any patent holder that licensed its product could never obtain a preliminary injunction is at odds with the purpose of 35 U.S.C. § 103. Patent holders are granted exclusive authority to grant licenses and to refuse licenses; such that a patent holder could license to small non-threatening operations, but refuse to license to a competitor that could run the patent holder out of business. The court could be presented with a situation where a patent holder has licensed to non-threatening competitors but is facing irreparable harm because of a large competitor’s unlicensed infringement."
Automated Merchandising Systems, Inc. v. Crane Co., 3-08-cv-00097 (WVND December 2, 2008, Order)
"Patent Rule 3-1 -- in connection with confusing and conflicting product branding -- is not meant to be used as a tactical tool. To the contrary, the Rule is in place to allow defendants to have reasonable notice of the plaintiff’s infringement claims. Because of the nature of the patent claim, [plaintiff] had reasonable notice that [defendant] was accusing the [product at issue] and the method that it deployed regardless of the branding or the configuration of its components."
Alcatel USA Resources Inc v. Microsoft Corp., 6-06-cv-00499 (TXED December 1, 2008, Memorandum Opinion and Order)
"I hold as a matter of law that [defendant] suffered material prejudice because of plaintiff's [four year] delay in bringing suit. . . . As [plaintiff] did not follow through on its initial threat to sue, [defendant] continued investment in [the accused product] line. [Defendant] . . . invested in marketing [the accused products] and obtaining trademark protection. It increased its sales force and devoted a substantial percentage of its promotional resources to the products. . . . This uncontroverted evidence establishes a nexus between plaintiff's delay and [defendant's] expenditures related to [the accused products]."
Aspex Eyewear, Inc. et al v. Clariti Eyewear, Inc., 1-07-cv-02373 (NYSD November 26, 2008, Memorandum Decision)
"Based upon the Court’s observations of [McDermott Will & Emery partner Joel Freed's] excellent capabilities, the Court finds his $703 per hour billing rate reasonable." The court also awarded fees based on Arnold & Porter's voluntarily discounted billing rates of $432-$542/hour for partners, $300-$456/hour for associates, and $128-$204/hour for paralegals.
Lucent Technologies v. Gateway Inc., 3-02-cv-02060 (CASD November 17, 2008, Order)
