In re TS Tech, In re Genentech, and In re Volkswagen Do Not Provide "New Grounds" for Transfer of Venue

Defendant's motion to transfer venue for convenience was denied. In an earlier case, the court denied defendant's motion to transfer venue and in connection with a subsequent dismissal without prejudice the parties agreed that venue would be in the Eastern District of Texas unless there were "new grounds" for transfer. In the instant case, the court rejected defendant's argument that In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008), In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008), and In re Genentech, 566 F.3d 1338 (Fed. Cir. 2009) provided "new grounds" for transfer. "Although the new cases clarified the standard for obtaining a venue transfer, these cases continue to apply the same public and private interest factors in evaluating § 1404(a) transfer motions. Indeed, the Federal Circuit has stated that it was applying well settled Fifth Circuit law."

Financial Sytems Tech. (Intellectual Property) Pty. Ltd. et al. v. Oracle Corp., 2-08-cv-00371 (TXED December 8, 2009, Memorandum Opinion & Order) (Everingham, M.J.).

Assignment Executed by Incorrect Entity Nevertheless Conveyed "Substantial Rights" to Patent Sufficient to Vest Plaintiff with Standing

Defendant's motion to dismiss for lack of standing was denied notwithstanding an error in the assignment of the patent rights -- "the correct officer signed the . . . Assignment on behalf of the incorrect entity" -- that was not corrected until after suit was filed. "[T]he correct officer who signed the . . . Assignment, who was at the time an officer of [two companies], signed the assignment on behalf of the wrong entity, thereby creating a clerical error in the . . . Assignment. . . . The Court finds that [plaintiff] did have enforceable rights to the patents-in-suit when it brought this lawsuit. The Court finds that this ownership vested [plaintiff] with constitutional standing to bring this lawsuit."

Southwest Efuel Network, L.L.C. v. Transaction Tracking Technologies, Inc., 2-07-cv-00311
(TXED December 7, 2009, Memorandum Opinion & Order) (Ward, J.)

Determination Of Commercial Offer For On-Sale Bar Does Not Include Course of Dealing or Industry Practice

The court granted Honeywell's motion for summary judgment of invalidity based on the on-sale bar. In doing so, the court rejected Honeywell's argument that its Proposal submitted in response to Boeing's Request for Proposal was not a commercial offer even though it "express[ed] firm and definite commitments regarding, among other things, price and delivery [terms]." "Honeywell contends that this detailed proposal was not an offer, based on the 'longstanding business relationship between Honeywell and Boeing, as well as the industry custom and norm in the context of the proposal phase of a complex, developmental project' . . . In the Court's view, however, the fact that further negotiations might arise, or even be expected, does not preclude the . . . Proposal from being an invalidating offer where, as here, the . . . Proposal contained the essential terms of an offer and Honeywell manifested its intent to make an offer to Boeing."

Honeywell Intl Inc., et al. v. Audiovox Corp., et al.,
1-04-cv-01337 (DED December 4, 2009, Memorandum Opinion) (Farnan, J.)

Apple Overturns Willfulness Verdict in Post-Trial Motions

Defendant's motion for judgment as a matter of law regarding willful infringement related to a $19 million verdict was granted despite the jury's finding that defendant's infringement was willful. "Although [defendant's] invalidity and noninfringement arguments were unsuccessful, these defenses were strong enough to preclude a finding of objective recklessness. . . . [Defendant] presented a good faith argument that the [patent-in-suit] was invalid as anticipated. . . . Although the jury rejected this defense, the issue was, viewed objectively, sufficiently close to preclude a finding of willful infringement."

OPTi, Inc. v. Apple, Inc., 2-07-cv-00021
(TXED December 3, 2009, Memorandum Opinion & Order) (Everingham, M.J.)

Defendants' Website, Marketing Activities, and Single $29.95 Sale of Accused Service Warrant Exercise of Personal Jurisdiction

"Defendants have sold at least one allegedly infringing product, provided two samples of the allegedly infringing product free of charge, maintain an ongoing license with at least one district member, have contacted members to solicit business, maintain an internet website accessible by district members, and conduct Internet advertising accessible by district members. . . . The cause of action for patent infringement is alleged to arise out of these activities. . . . Any burden on Defendants in having to litigate this case in Texas is not sufficiently compelling to outweigh Plaintiffs' and Texas's interest in adjudicating this case in Texas."

Absolute Software, Inc. et al v. World Computer Security Corporation et al.,
1-09-cv-00142 (TXWD December 2, 2009, Order) (Yeakel, J.)

Howrey Disqualified From Representing Boston Scientific In New Jersey, But Not Delaware

The court granted plaintiff's motion to disqualify Howrey as defense counsel even though another court denied a parallel motion in a case involving the same parties and counsel. "Judge Robinson held that even though there was a violation of Rule 1.7 of the American Bar Association’s Model Rules of Professional Conduct (“Rule 1.7"), disqualification of Howry as counsel for [defendant] was not appropriate because Howry’s ethical screen was a sufficient measure to deal with the violation in the District of Delaware." Applying New Jersey law, the court held that a violation of the rule required disqualification. "Given the violation of Rule 1.7, this Court finds that disqualification is appropriate here. The Court therefore need not engage in an analysis of whether [plaintiff's] alleged 'obfuscatory' conduct in causing the conflict of interest justifies disqualification."

Wyeth et al. v. Abbott Laboratories et al., 3-08-cv-00230
(NJD December 1, 2009, Letter Order) (Bongiovanni, M.J.)

Late Amendment of Contentions: Denied as to New Patent, Granted as to New Prior Art

Plaintiff's motion for leave to serve amended infringement contentions, asserting infringement of an additional patent, was denied because defendant made its source code available a month before plaintiff's supplemental contentions were due and plaintiff waited more than four months after that date to seek leave to amend its infringement contentions. "[Plaintiff] has not shown that its delay in adding [a] Patent was reasonable based on the amount of time it had to inspect [defendant's] source code." However, defendant's motion for leave to supplement its invalidity contentions was granted. "[T]he Court notes that the addition of prior art references post Markman do not have the same implications as the addition of an entirely new patent. Any potential prejudice that [plaintiff] may suffer as a result of [defendant] amending its invalidity contentions would likely arise in connection with the [upcoming] discovery deadline. This potential prejudice can easily be cured with an appropriate continuance of the discovery deadline if needed."

Sybase, Inc. v. Vertica Systems, Inc., 6-08-cv-0024
(TXED November 30, 2009, Memorandum Opinion & Order) (Davis, J.)