Submission of False Affidavit to PTO Does Not Support Inequitable Conduct Claim Without Allegations of Facts Sufficient to Infer Intent to Deceive

Plaintiff's motion for leave to amend its complaint to include a claim for inequitable conduct was denied even though the request was made shortly after plaintiff learned that one inventor submitted a false affidavit to the PTO. "[T]here is no allegation that the affiant at bar did not contribute to the invention, or that the application that matured into the [patent-in-suit] contains otherwise false representations. I certainly recognize that candor is the hallmark of the patent system and that false statements, about even ministerial acts, can have significance as to the survival of a patent in the review process. Nevertheless, I decline to allow an inequitable conduct claim to be pursued after the close of discovery when there are insufficient allegations of underlying facts from which I may reasonably infer that the material misrepresentation was made with a specific intent to deceive the PTO."

Robert Bosch LLC v. Pylon Manufacturing Corp., 1-08-cv-00542
(DED October 19, 2009, Memorandum Order) (Robinson, J.)

Is previously undisclosed prior art admissible at trial to show the state of the art? It depends on the court.

Plaintiffs' motion in limine to exclude defenses and prior art disclosed 31 days before trial was granted in part. "[Defendant argued] that the evidence disclosed in its §282 Notice is intended to show only the 'state of the art' and not prior art, which would exempt it from disclosure under Local Patent Rules 3.1 and 3.4. . . . I do not find this argument persuasive. It is not up to a party to decide if and/or when it would like to comply with the Local Patent Rules. If [defendant] intended to use publications/documents to establish the state of the prior art, then it was required to disclose them over two years ago."

Emcore Corp. et al. v. Optium Corp., 2-07-cv-00326
(PAWD October 16, 2009, Order) (Ambrose, J.)

Plaintiff's motion in limine to exclude certain prior art was granted in part. "Although [defendant] is correct that it may use certain items to show the state of the art, the extent to which [it] may use the references depends largely on the disclosures in [its] expert report. Although [defendant's] expert may testify as to what references were considered, simply listing references as having been considered is insufficient to obtain the admissibility of all of those references."

Abstrax, Inc. v. Dell, Inc. et al., 2-07-cv-00221
(TXED October 16, 2009, Order) (Everingham, M.J.)

Court Approves Fee Award Based on Hourly Rate 3 Times Local Average for IP Practitioners Due to National Scope of Patent Litigation and Experience

In granting defendant's motion for attorneys' fees, the court found that defense counsel's hourly rates of $175 to $764.75 were reasonable. "[Defendant's] use of primary counsel . . . even at rates which well exceeded that of local counsel or [the average hourly rate of $245 for intellectual property practitioners in the Southeastern region according to the AIPLA bi-yearly Economic Survey from 2007] was justified. The attorneys were clearly specialists in the field of intellectual property – which is, by its very nature, national and not necessarily regional in scope – and, specifically, infringement suits, the art of litigating such a suit, and the background issues of patent prosecution. Further, [defense counsel] were clearly intimately aware of the [accused] product . . . as well as the history of these two parties. . . . Simply stated, it makes sense to proceed with such counsel, even at a higher rate than one might pay for local counsel, in a suit such as this."

iLOR, LLC v. Google, Inc., 5-07-cv-00109
(KYED October 15, 2009, Memorandum Opinion & Order) (Hood, S.J.)

Interrogatory Response Spanning 1,500 Pages is Inadequate Disclosure of 3-Page Prior Art Reference

The court granted plaintiff's motion to preclude defendants from relying on an anticipatory prior art reference that was not disclosed until the last day of fact discovery and was buried in 1,500 pages of documents. "To the extent Defendants disclosed the [prior art reference] in a supplemental interrogatory response in advance of the discovery deadline, the disclosure was buried within roughly 1,500 pages of documents that were otherwise identified only by Bates numbers. Defendants cannot reasonably expect Plaintiffs to be on notice of a three page reference -- buried within roughly 1,500 pages of numerically identified documents -- that was neither called out by specific Bates number nor by name. Such identification, or lack thereof, does not qualify as adequate notice of Defendants invalidity contentions."

Laboratory Skin Care Inc. et al. v. Limited Brands Inc. et al.,
1-06-cv-00601 (DED October 14, 2009, Memorandum Opinion) (Farnan, J.)

Delay in Asserting Affirmative Defense and "Piratical" Settlement Demand Bar Recovery of Attorneys' Fees by Successful Defendant

In denying defendant's motion for attorneys' fees following plaintiff's voluntary dismissal of its patent claims, the court concluded that defendant's fees and expenses were incurred due to its delay in asserting an affirmative defense and its "almost piratical" demand "that plaintiff 'dismis[s] with prejudice all pending litigation' (including other cases) and pay defendant $1,200,000, an amount that is more than double defendant’s estimate of its fees and non-taxable costs now. . . . To the extent that defendant incurred what it now deems unnecessary costs and fees in this case, the blame lies with defendant’s strategy and tactics." "Athough [35 U.S.C. § 285] indicates that an award of fees is a rare event, this has not stopped prevailing parties in this district from seeking fees as a matter of course. But as a point of logic, if every patent lawsuit is exceptional, then none of them is."

Spacesaver Corp. v. The Marvel Group, Inc. et al., 3-08-cv-00354
(WIWD October 13, 2009, Order) (Crocker, M.J.)

Dearth of Qualified Experts Does Not Warrant Disclosure of CAD Files to Competitors' Consultant

Plaintiff's motion to allow disclosure of defendant's highly confidential CAD files to its expert was denied. "The court recognizes that most of the potential experts [plaintiff] contacted were not only reluctant to take a position in opposition to [defendant], but actually hoped to get work from [defendant]. Nevertheless, the extreme sensitivity of the [CAD] files raises heightened concerns of inadvertent disclosure to competitors that may not be protected adequately by the [protective order]. . . . [T]he court finds that the risk of inadvertent disclosure outweighs [plaintiff's] need to show the [CAD] files to [its expert] at this time. [Plaintiff's expert] acknowledges that he currently does consulting work for two [of defendant's] competitors, and he is likely to consult with other competitors in the future. . . ."

Saso Golf, Inc. v. Nike, Inc., 1-08-cv-01110
(ILND October 5, 2009, Memorandum Opinion & Order) (Nolan, J.)

Lobbying Efforts Not Privileged With Respect to Specific Patent

Defendant's motion for a protective order quashing the deposition of its attorney who was defendant's policy counsel/legislative strategist was granted in part. "Defendant’s lobbying activities are generally protected by the First Amendment . . . [and] Plaintiff has not shown adequate relevance, to the present case, of Defendant’s efforts to affect the future development of the applicable law. . . . [However] [g]iven that Defendant is publicly engaged in lobbying activities on the issue of patent reform, the court will allow Plaintiff to inquire into whether and to what extent Defendant’s lobbying efforts have specifically addressed the patent in suit."

PA Advisors, LLC v. Google Inc. et al., 2-07-cv-00480
(TXED October 8, 2009, Order) (Folsom, J.)