"Catch-All" Description of "Authors and Inventors of Prior Art" Does Not Satisfy FRCP 26 Obligation

The court granted plaintiff's motion to exclude the testimony of authors/inventors of prior art where defendant's FRCP 26 disclosures failed to identify the witnesses by name and instead identified them by the description "Authors and inventors of prior art references identified and produced in this Action." "[Defendant] argues that [plaintiff] had notice but does not explain why it failed to supplement. Allowing [the witnesses] would prejudice [plaintiff] in that they have not had the opportunity to depose either witness to learn the scope of their testimony. On the other hand, striking [the witnesses] does not strike the prior art reference; [defendant's] invalidity expert can still speak to the [prior art]. . . . Moreover, to rule that a catch-all phrase equals compliance with Rule 26 would shift the burden of identifying relevant witnesses to the other party. This would require parties to search through invalidity contentions, prior art, and prior art cited by prior art for potential witnesses. Such a result flies in the face of the spirit and purpose of the discovery rules."

Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED October 7, 2009, Order) (Folsom, J.)

Plaintiff Not Required to Limit 178 Asserted Claims

Defendant's motion to limit the number of asserted claims was denied. "[Plaintiff] is not required to limit the number of asserted claims against [defendant] from 178 claims to 10 claims at this time. The limitation would prejudice [plaintiff] because the case is currently in its early stage. However, as [plaintiff] states, it will eventually be forced to streamline its Markman presentation and case so that the important issues are considered by the Court."

i2 Technologies, Inc. et al. v. Oracle Corporation et al.,
6-09-cv-00194 (TXED October 6, 2009, Order) (Davis, J.)

Device Capable Of Infringing Use Is Not Exempt From Liability Because Such Use Is "Improper, Unknown, And Dangerous"

Accused device could be found to infringe even though the infringing use would be "improper, unknown, and dangerous," provided such use did not require any physical alteration of the accused device. "[Defendant] argues that the [accused device] does not infringe because there is no evidence that (1) it 'intended or anticipated' physicians to use the [accused device in an infringing manner]; (2) physicians actually operate the [accused device] this way; (3) promotional materials or instructions teach or reference [using the accused device in an infringing manner]; or (4) this method serves a functional purpose not already accomplished. . . .The [infringing method] does not require physical alteration of the [accused device]; it is an alternative method of using the device. Therefore, whether physicians or users of the [accused device] actually employ the [infringing method] is irrelevant."

Baran v. Medical Device Technologies, Inc., 1-04-cv-01251
(OHND September 30, 2009, Memorandum & Order) (O'Malley, J.)

Anti-Trust and Misuse Defenses Severed and Stayed Pending Resolution of Infringement Issues

The court granted plaintiffs' motion to bifurcate the infringement claims from defendant's antitrust and patent misuse claims, and to stay discovery on the antitrust and misuse claims. "With respect to conserving judicial economy, defendants' antitrust and patent misuse claims may be rendered moot by resolution of the patent infringement issues. . . . Even if plaintiffs do not succeed in proving infringement, the court could still determine that plaintiffs 'realistically expect[ed] success on the merits,' thus obviating the need to adjudicate time consuming and complex antitrust and patent misuse issues. . . . Further militating toward bifurcation of these issues if the dictinct lack of evidentiary overlap between issues of patent validity and infringement and issues of patent misuse and antitrust."

Eurand Inc. et al. v. Mylan Pharmaceuticals Inc. et al., 1-08-cv-00889
(DED October 2, 2009, Memorandum Order) (Robinson, J.)

Judge Ward Overturns Jury Verdict of Willfulness Based In Part on Closeness of Claim Construction

Following a jury verdict of willful infringement, the court granted defendants' motion for judgment as a matter of law of no willful infringement based in part on the closeness of claim construction which was not presented to the jury. "[T]he fact that certain facts were not presented to a jury, such as the close issue of claim construction, does not preclude the court to consider them. . . . In this case, the issue of claim construction was close and [defendants'] proposed interpretation for the claims, although eventually not adopted, was reasonable and based upon the specification and prosecution history of the . . . patent. Thus, the Court takes the close issues of claim construction into consideration in its determination of whether [defendants'] actions were 'objectively reckless.'"

Centocor, Inc. et al v. Abbott Laboratories, 2-07-cv-00139
(TXED October 1, 2009, Order) (Ward, J.)

Successful Defendant Ordered to Pay Attorneys' Fees and Costs Associated With Unsuccessful Invalidity Defense

Although the jury found in favor of defendant, the court awarded plaintiff its attorneys' fees as to defendant's unsuccessful claim of invalidity. "[Defendant's] actions in pursuing the counterclaim of invalidity long after it was shown not to be meritorious amounts to vexatious conduct. Defending against [defendant's] claims of invalidity was a considerable financial burden to [plaintiff] in terms of attorney time, firm resources, and out-of-pocket expense. [Defendant's] adamant denial that there was any misconduct in this case displays the same arrogance that has colored this case almost from its inception."

Kellogg v. Nike et al., 8-07-cv-00070
(NED September 30, 2009, Memorandum & Order) (Bataillon, J.)

Five New Orders on Transfer of Venue From EDTX -- Two Denied Where All Public and Private Interest Factors Favored Transfer or Were Neutral

Defendant's motion to transfer venue was denied even though all of the private and public interest factors favored transfer or were neutral. "While this case was pending, [defendant] filed a separate action against [plaintiff] in the Eastern District of Virginia. . . . By filing suit in [Virginia], [defendant] has demonstrated that it is not inconvenient to litigate the dispute across the country, away from its party witnesses and its sources of its proof. . . . The court does not fault [defendant] for its decision to sue in [Virginia] – the venue statute gives [defendant] a range of options. But the court views with some caution [defendant's] convenience arguments when the court examines the totality of the circumstances existing between these two parties. Under these facts, and despite the court’s findings on the public and private interest factors, [defendant] has not demonstrated good cause for a transfer."

GraphOn Corp. v. Juniper Networks, Inc., 2-07-cv-00373
(TXED September 29, 2009, Order) (Everingham, M.J.)