Litigation Over Ownership of Patent Bars Later Infringement Claims as to Related Patent

Defendant's motion to dismiss on the basis of claim preclusion was granted where, in an earlier litigation concerning ownership of a related patent and misappropriation of trade secrets, plaintiff was awarded damages and defendant was awarded the related patent. "[A]ll of the facts relevant to [plaintiff's] patent infringement claim were known [11 years ago] when [defendant] initiated the declaratory judgment action that ultimately led to [plaintiff's] recovery on its trade secret misappropriation and fraud claims. Prior to [that earlier] litigation, [plaintiff] obtained an [accused product] with which it could have done an infringement analysis against the [patent-in-suit]. Therefore, [plaintiff] could have brought its patent infringement claim then."

SLR Partners, LLC et al. v. B. Braun Medical Inc., 3-09-cv-01145
(CASD October 26, 2009, Order) (Miller, J.)

Counsel Asserting and Later Withdrawing Privilege Objections Ordered to Pay Costs of Additional Deposition

The court ordered plaintiff's counsel to pay defendant for all costs associated with taking another deposition of a witness. "[The witness'] deposition is ninety-seven pages long. [Plaintiff] asserted privilege and/or work product ninety-seven times. Ninety-five of these assertions have now been waived. [Plaintiff's] conduct is unacceptable."

Davis-Lynch Inc v. Weatherford Int'l Inc., 6-07-cv-00559
(TXED October 26, 2009, Order) (Love, M.J.)

Witness Excused for Medical Condition, Barred From Further Testimony

Defendant's motion to have its witness excused from deposition and trial because of a medical condition was granted. "However, because it is not clear from the [letter from the witness' physician] how the diagnosed condition is affecting [the witness'] daily life, sanctions will be imposed against [defendant] in this case if [the witness] provides any testimony (through a declaration, a deposition or at trial) in any other case involving the patents at bar." The court stated it would "consider sanctions ranging in severity from the imposition of an adverse inference to the imposition of the costs of a new trial to the imposition of an adverse judgment."

Genetics Institute LLC v. Novartis Vaccines and Diagnostics Inc., 1-08-cv-00290
(DED October 23, 2009, Order) (Robinson, J.)

EDTX Meet & Confer Rule for Discovery Motions Requires Participation by "Lead Counsel"

Defendants' motion to compel the production of patent prosecution files from plaintiff's outside attorneys was denied without prejudice because lead counsel did not participate in the "personal conference" required by the court's local rule. "Pursuant to Local Rule CV-7(h), prior to seeking court intervention, lead counsel for the movant must have a personal conference with the lead counsel for the non-movant. . . . [I]n the Certificate of Conference, Defendants identified [an attorney] as 'lead counsel for the Defendants,' when [a different attorney] is listed on the Court’s docket as Defendants’ lead attorney. [The third party] accurately points out that this is in violation of the certification components set forth in Rule CV-7(i) that requires all elements of Rule 7(h) to be met, as well as the stipulation that in discovery-related motions, the Certificate of Conference must be signed by lead counsel. The Court sees no reason that the 'lead counsel' signing a Certificate of Conference should not be the same attorney that is designated as lead counsel on the Court’s docket sheet. . . . [B]oth parties are reminded that 'unavailability' is no excuse for lead and local counsel’s failure to participate in discovery."

Konami Digital Entertainment Co, Ltd. et al. v. Harmonix Music Systems, Inc. et al., 6-08-cv-00286
(TXED October 22, 2009, Memorandum & Opinion) (Love, M.J.)

Expert's Failure to "Originate, Author or Understand" His Own Written Opinions Did Not Warrant Exclusion of Testimony

The court denied plaintiff's motion to exclude the reports and testimony of defendant's technical expert on the grounds that the expert "did not originate, author or understand several of his opinions." "[Plaintiff] cites excerpts from [the expert's] deposition to show that 1) he could not recall exactly how many reports he had signed, 2) did not know which opinions that he had expressed in each of his reports, 3) could not identify the differences between the various reports, 4) did not know that a legal section was added to his third invalidity report, 5) did not understand the difference between 'obviousness' and 'anticipation' with respect to invalidity, 6) was generally unfamiliar with the [patent-in-suit], 7) has a personal relationship with the owners of [defendant's] predecessor, 8) took no part in collecting scales allegedly exhibiting prior art or determining which of those scales should be relied upon in his supplemental report and 9) in at least one instance, examined photographs of a scale and not the scale itself. . . . [A]lthough [the expert's] nervousness, confusion and difficulty answering legal questions may provide grounds to impeach his credibility, they are not grounds to strike him as an expert witness. . . . [The expert] . . . averred that he reached all of the opinions stated in his reports and reviewed all of his reports before signing them. In light of this, it would be up to the jury to decide whether and how much to trust [the expert's] admissible opinions."

Sunbeam Products, Inc. v. HoMedics, Inc., 3-08-cv-00376
(WIWD October 15, 2009, Order) (Crocker, M.J.)

Judge Sleet Imposes "Limit of 10 Disputed Terms Per Patent" Rule

The court struck the parties' join claim construction chart and ordered them to file an amended version. "The parties have submitted for construction 19 terms from [the patent-in-suit]. Although disinclined to do so in the past, the court -- regrettably -- will impose a limit of 10 disputed terms per patent for claim construction in this and all future patent actions."

Grape Technology Group Inc. et al. v. Jingle Networks Inc.,
1-08-cv-00408 (DED October 20, 2009, Order) (Sleet, J.).

Reported In today's Docket Report:

14 new patent cases

1 monetary award

2 claim terms construed

1 patent determination

10 rulings in 8 cases

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