Failure to Disclose Specific Combination of Prior Art Precludes Invalidity Argument Based on Such Combination

The court granted plaintiff's motion to preclude evidence of defendants' new obviousness defense based on the combination of prior art references. The prior art references were disclosed individually in defendants' discovery responses and expert reports, but not in the combination asserted in defendants' summary judgment motion. "The Court finds the defendants’ expert report to be wide ranging in listing bases for the defendants’ obviousness defense. As such, the absence of the [specific combination asserted in summary judgment] in this and all other documents that preceded the defendants’ motion for summary judgment is notable. The defendants had every opportunity to raise obviousness defenses during discovery and in fact did so. The Court views the defendants’ failure to timely raise this particular defense as a waiver, and grants the plaintiff’s motion to preclude on this issue."

Metso Minerals, Inc. v. Powerscreen International Distribution Limited et al., 2-06-cv-01446 (January 28, 2010, Memorandum of Decision & Order) (Spatt, J.)

Try the Docket Report today for free. No strings attached. No pushy sales. And we’ll NEVER share your email address. Click the link in the top right of this page to send a request.

Misleading Argument Concerning Disclosed Prior Art is Insufficient to Support Claim of Inequitable Conduct

In granting plaintiff's motion for summary judgment on defendant's inequitable conduct counterclaim, the court rejected defendant's argument that plaintiff misled the PTO in certain arguments favoring patentability over the prior art. "The Federal Circuit recently stated that 'our precedent has made clear that an applicant is free to advocate its interpretation of its claims and the teachings of prior art' . . . The court pointed out that since the prior art reference had been 'submitted for the patent examiner to examine herself, she was free to accept or reject the patentee’s arguments distinguishing its invention from the prior art.'"

K-TEC v. Vita-Mix, 2-06-cv-00108 (UTD February 2, 2010, Order) (Campbell, J.)

"Confidential" Accusation Creates Substantial Controversy Sufficient to Exercise Subject Matter Jurisdiction

The magistrate judge recommended denying defendant's motion to dismiss plaintiff's declaratory relief action for lack of subject matter jurisdiction where plaintiff's suit was based upon an allegedly confidential email between defendant and a third party. "There is nothing inherently confidential about a statement accusing a third party’s product of patent infringement. [Defendant] should reasonably have anticipated -- and perhaps even intended -- that its claim of infringement by [plaintiff's] product would be communicated to [plaintiff]. . . . The communication was an affirmative act fairly traceable to [defendant]; the fact that the email was marked 'confidential' does not affect the justiciability analysis."

Google Inc. v. Traffic Information LLC, 3-09-cv-00642 (ORD February 2, 2010, Findings & Recommendation) (Hubel, M.J.)

Plaintiff's Failure to Entertain Settlement Negotiations Supports Award of Attorneys' Fees

In granting in part defendant's motion for attorneys' fees under § 285, the court found that defendant's earlier offer to settle merited an award of fees. "The Court also considers the tactics of counsel. Despite considerable evidence that it had not infringed, [defendant's pre-summary judgment] letter also included an offer of settlement. There is no evidence [plaintiff] entertained negotiations. These divergent tactics, commendable on [defendant's] behalf, support an award of fees . . ."

Old Reliable Wholesale, Inc. v. Cornell Corporation, 5-06-cv-02389 (OHND February 2, 2010, Memorandum Opinion & Order) (Dowd, J.)

Allegation That Plaintiff "Buried" Prior Art in IDS is Sufficient to State a Claim for Inequitable Conduct

The court denied plaintiff's motion for judgment on the pleadings as to defendant's inequitable conduct claim based on the theory that plaintiff buried relevant prior art among 597 other prior art references. "Defendants have sufficiently alleged with particularity that [plaintiff's] prosecuting attorney . . . filed [two IDSes] in connection with the prosecution of the . . . patents that contained approximately 598 prior art references in which [plaintiff] failed to identify the relevant prior art pertaining to invalidity. . . . Further, [defendants] allege that the PTO examiner specifically requested a clarification or explanation of the prior art references, and thus sufficiently allege with particularity the materiality of submitting a 'mountain' of prior art. Last, Defendants sufficiently allege that [plaintiff] intended to deceive or mislead the PTO during the prosecution of the . . . patents because it submitted a mountain of largely irrelevant material to the PTO examiner and then failed to inform the PTO examiner which material was relevant, and, in the case of [one] patent, submitted no IDS at all."

CIVIX-DDI LLC v. National Association of Realtors et al., 1-05-cv-06869 (ILND February 1, 2010, Memorandum Opinion & Order) (St. Eve, J.)

Real World Difficulty in Combining Prior Art Teachings Does Not Trump Express Suggestion to Combine

In concluding that one of ordinary skill in the art would be motivated to combine the teachings of a prior art betting system with the teachings of a prior art banking system, the court found a suggestion to combine where the betting system stated that its “voice response unit can be applied to other fields" and listed potential applications, including "credit card checking" and "deposit balance information." The court rejected plaintiff's argument that the "urgent time pressures" associated with "[the] betting system . . . are not present in a remote access banking system." "The question is not whether the specific implementations described in [the two prior art systems] can be seamlessly integrated. When dealing with different applications like betting and banking, problems would undoubtedly result from combining those implementations. Such facts do not tend to show that particular features from each reference should not be combined for the purposes of determining whether a disputed claim is obvious. The correct question is whether a person of ordinary skill in the art would be motivated to combine the specific elements from the references that would result in the claimed invention. . . . [Here the betting reference] provides an express suggestion to combine [its] technology with financial applications like [the banking reference], and any problems associated with combining specific implementations do not teach away from the claimed combination."

Ronald A. Katz Technology Licensing L P v. Echostar Communications Corporation et al., 2-07-cv-06222 (CACD January 29, 2010, Order) (Klausner, J.)

Grant of Preliminary Injunction does not Establish Objective Recklessness for Willfulness

In addressing the parties' dispute as to whether the court's order granting a preliminary injunction (upheld on appeal) was admissible to establish willfulness under In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), the court concluded that "generally only evidence regarding the prelitigation landscape of the dispute will be admitted." "It cannot be emphasized enough that the litigation process is a complicated one, comprising multiple steps and moved forward by multiple decisions, ranging from resolving a discovery dispute to a case-dispositive motion. Consequently, I am very uncomfortable with characterizing administrative and court decisions as 'objective evidence' for presentation to a jury."

Cordis Corporation v. Boston Scientific, et al., 1-03-cv-00027 (DED January 28, 2010, Memorandum Order) (Robinson, J.)