Local Interests Favor Transfer of Dispute Between Swedish Plaintiff and Pennsylvania Defendant to Pennsylvania

In recommending a grant of a Pennsylvania defendant's motion to transfer venue from the Western District of North Carolina, Asheville Division, to the Western District of Pennsylvania, the magistrate judge found that the "interest in having localized controversies settled at home" favored transfer. "[T]he court places itself in the shoes of a juror and asks the question that every juror asks, which is 'why was I called away from work or my home to hear this case?' Beyond civic duty, which is present in every district, the answer in this case would be hard for a juror to take: to resolve a dispute between a Pennsylvania and a Swedish Company concerning a product that is not manufactured [in North Carolina] and was purportedly invented by people who live very far away. . . . The overriding localized interest would be in Pennsylvania, where jurors will likely be familiar with places like Latrobe [Pennsylvania] as that town appears to be the locus of defendant’s business activities and the place from which many of the witnesses in this action are likely to live."

Sandvik Intellectual Property AB v. Kennametal Inc., 1-09-cv-00163
(NCWD November 5, 2009, Memorandum and Recommendations) (Howell, M.J.)

Motion for Claim Construction Denied Because the Parties Failed to Show Why Construction was Necessary

The parties' motions for claim construction were denied for failing to comply with the court's pretrial order requiring the parties to "persuade the court that construction of each specified term is necessary to resolve a disputed issue concerning infringement or invalidity." "The reason for the order is not to require parties to parrot its language before the court construes claim terms; it is to avoid devoting judicial resources to the issuance of advisory opinions on the construction of claim terms about which the parties have no concrete dispute. Claims construction is not an academic exercise. As much as the parties may hate to show their hands at this early stage, they must do so if they hope to seek the benefit of claim construction before filing motions for summary judgment."

Semiconductor Energy Lab. Co., Ltd. v. Samsung Elect. Co., Ltd. et al.,
3-09-cv-00001 (November 4, 2009, Order) (Crabb, J.)

Failure to Include Prior Art in Invalidity Contentions Excused Where Defendant Possessed Diagram of Prior Art Before the Disclosure Deadline ...

But Lacked Knowledge of its Significance

Defendant's motion for leave to amend its invalidity contentions to include additional prior art was granted. "[T]he parties do not dispute that Defendant had knowledge of [the prior art] in its diagramed form before the [deadline to serve a prior art list]. Defendant never concealed that it believed that the hand-drawn diagram of the [prior art] is relevant to its invalidity defense. Nevertheless, having knowledge or possession of a hand-drawn diagram is different than having knowledge of relevant prior art. A hand-drawn diagram without more does not warrant the conclusion that the diagramed item was an invention that 'was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.'"

Regalo International, LLC v. DEX Products, Inc., 08-cv-04206
(MND November 3, 2009, Order) (Boylan, J.)

Court Has Subject Matter Jurisdiction to Hear Constitutional Challenge to Gene Patent

The court denied defendant PTO's motion to dismiss for lack of subject matter jurisdiction plaintiffs' complaint alleging that patents claiming genes used in breast cancer testing were invalid as unconstitutional. "While the USPTO notes the existence of a comprehensive scheme to redress violations of the Patent Act, it cites to no comparable statutory scheme providing a remedy for persons who complain about the constitutionality of patents issued by the USPTO and/or the policies and practices of the USPTO. . . . The novel circumstances presented by this action against the USPTO, the absence of any remedy provided in the Patent Act, and the important constitutional rights the Plaintiffs seek to vindicate establish subject matter jurisdiction. . . ."

Association For Molecular Pathology et al. v. USPTO et al.,
1-09-cv-04515 (NYSD November 2, 2009, Opinion) (Sweet, J.)

Infringing Sales Following Jury Verdict of Infringement Warrant Enhanced Damages

The court granted plaintiff's motion for enhanced damages for sales of infringing products occurring between the jury's verdict of infringement and entry of a permanent injunction. "The weight of the evidence supporting the jury verdict for [plaintiff] . . . the lack of evidence to support a finding of invalidity, the fact that the jury found against Defendants on this issue, and the deferential standard of review applied to a jury verdict, establish an objectively high likelihood that even after any appeals are concluded, sales of the accused products will constitute infringement of one or more valid claims. . . . The court further finds . . . that the $400.00 per unit reasonable royalty found by the jury should be enhanced to $500.00 per unit for sales of infringing products occurring between trial and the date the injunction is entered."

Cummins-Allison Corp. v. Shinwoo Information & Telecomm. Co., Ltd. et al.,
9-07-cv-00196 (TXED October 30, 2009, Order) (Clark, J.)

Case Not Exceptional In Light of Prevailing Defendant's $1.9 Million Post-Markman Attorneys' Fees

Following a grant of summary judgment of noninfringement, the court denied defendant's motion for attorneys' fees incurred after the court's claim construction ruling and rejected defendant's arguments that discovery disputes and plaintiff's failure to dismiss following claim construction made the case exceptional. "Annoying as the discovery disputes were, they are not so unusual as to make this an exceptional case. The term 'exceptional' means just that. . . . Moreover, it is suspect that this case was so obviously baseless after the court’s claim construction ruling when one considers the $1.9 million defendant spent in fees and costs after the ruling. It is puzzling how this case could have required such expenses if it was so clear that a simple motion for summary judgment based only on the two relevant constructions would have brought the case to the end."

WNS Holdings, LLC et al v. United Parcel Service, Inc., 3-08-cv-00275
(WIWD October 29, 2009, Order) (Crabb, J.)

Prior Art Teachings May be Combined to Show Obviousness Even if Prior Art Structures Cannot be Physically Combined

In granting defendants' motion for summary judgment of invalidity for obviousness, the court rejected plaintiff's argument that it "would not have been obvious to a person of ordinary skill in the art to combine [prior art references] because of structural differences" between the references. "Contrary to Plaintiffs' assertions . . . it is not necessary to show that each and every element of a prior art reference can be incorporated into an invention in order to make that invention obvious. A reference can be considered for everything it teaches, not only for the invention it claims. . . . It is thus unnecessary for Defendants to establish that the appropriate elements of [one prior art reference] could be incorporated into [another prior art reference] without altering their structures."

Tokai Corp et al. v. Easton Enterprises Inc et al., 5-07-cv-00883
(CACD October 23, 2009, Order)(Phillips, J.)