Patent Issues "Just After 12:00 a.m." on the Date of Issuance, Not When PTO Website Reports Issuance

The court denied defendant's motion to dismiss plaintiff's earlier-filed declaratory relief action for lack of subject matter jurisdiction where the declaratory relief action was filed on the day the patent issued, but before the PTO website reported such issuance. "Neither party has presented the Court with legal authority addressing this precise question, and the Court is aware of none. . . . Unlike the electronic filing systems utilized by federal courts, neither the PTO websites nor the patent itself displays the time a patent was issued. Without such concrete data, parties would have to rely on affidavits stating the time the PTO website first showed the patent had issued. Thus, it seems that under [defendant's] approach, the race to the courthouse would be preceded by a race to first observe a patent’s issuance on the PTO website. . . . [T]he Court is persuaded that [plaintiff's] approach is correct and holds that the [patent-in-suit] was issued just after 12:00 a.m. EDT on July 6, 2010, and thus [plaintiff's] Complaint was filed after the Patent issued."

Cerro Wire Inc. v. Southwire Company, 3-10-cv-00087 (GAND March 4, 2011, Order) (Camp, J.)

Failure to Establish Direct Infringement by Customers Sinks Indirect Infringement Claims

In granting defendant's motion for summary judgment of no indirect infringement, the court found that "even after extensive discovery - comprising over 7 million pages of documents, 40 depositions, and 55 subpoenas to [defendant's] customers - [plaintiff] has failed to present even a single instance of a customer using the [accused] products in an allegedly infringing manner. . . . [Plaintiff] has not cited a single document in which [defendant] instructs its customers to implement the exact scenarios that [plaintiff] contends infringe the [patents-in-suit], all of which require a specific combination and configuration of products, supported by particular hardware and other specified elements, before they are even capable of infringing."

TecSec, Incorporated v. International Business Machines, et. al., 1-10-cv-00115 (VAED March 3, 2011, Order) (Brinkema, J.)

Falsely Advertising Compliance With Patented Method Constitutes False Marking

Following a bench trial, the court found that plaintiff had engaged in false marking where it advertised that its fish products were produced in accordance with a patent to which plaintiff had a license, but where plaintiff did not follow the method described by that patent. "[Plaintiff] was aware that these advertisements were false in, at least one way: [plaintiff] never pre-cooled the [filtered wood] smoke down to 0º to 5º C before applying it to the tuna to be treated with [filtered wood smoke], as required by the [patent-in-suit]."

King Tuna v. Anova Food, 2-07-cv-07451 (CACD February 24, 2011, Order) (Wright, J.)

Is the Claim Term "At Least About" Indefinite?

YES:
Defendants' motion for summary judgment of indefiniteness of two of plaintiffs' patents-in-suit was granted. "[W]e agree with [defendants] that 'at least about' does not sufficiently inform the public on what would infringe. . . . There is simply no intrinsic evidence that the word 'about' coupled with 'at least' has an accepted meaning."

Kimberly-Clark Worldwide, Inc. v. First Quality Products Inc., et. al., 1-09-cv-01685 (PAMD March 1, 2011, Order) (Caldwell, J.)

NO:

$2.6 Million Attorneys' Fee Award in $300,000 Case Warranted Due to Complexity of Case and Value of Permanent Injunction

Plaintiffs' motion for attorneys' fees was granted and the court awarded fees of more than $2.6 million. "The case required an inordinate amount of time and labor based on extensive motion practice and discovery difficulties encountered during the course of the litigation, most of which were initiated or caused by the Defendant. The questions at issue, although artfully distilled and presented at trial, were complex and layered, requiring the analysis and understanding not only of the specific patent at issue, but of earlier related patents and patent application procedures as well. To understand, simplify, and distill the information and present it to the jury in an understandable and persuasive manner involved an extremely high level of skill. Plaintiffs' lawyers did exceptional work in this case, and achieved the best possible outcome for their clients. . . . Although the damage amounts in this case were not extensive, the $300,000 in actual damages pales against the value of an enforceable permanent injunction that will prevent [defendant] from continuing its established practice of infringement . . . ."

Bendix Commercial Vehicle Systems LLC, et. al. v. Haldex Brake Products Corporation, 1-09-cv-00176 (OHND March 1, 2011, Order) (Nugent, J.)

Patentee Entitled to Permanent Injunction Despite Granting Earlier Licenses Where Licensees and Infringing Party Compete

In granting plaintiff's motion for a permanent injunction, the court found that defendant's infringing products competed with plaintiff's licensees and therefore irreparably harmed plaintiff. "While [the parties] are not direct competitors, the record establishes that [defendant's] Infringing Systems are in direct competition with [plaintiff's] licensees and that [defendant's] use of the infringing products interferes with [plaintiff's] licensing opportunities. . . . [Plaintiff] pursued a number of different commercial activities with the relevant patent portfolio including endeavoring to manufacture the patented equipment, soliciting purchase offers for the patents, granting licenses to some entities, and declining to grant licenses to others. In light of the range of commercial activities [plaintiff] has engaged in with the Patents-In-Suit, the Court finds the present case to be factually distinguishable from those cases where the patentee routinely grants boilerplate licenses to any interested parties to such an extent that permitting a licensed infringer to remain on the market would not irreparably harm the patentee."

Harris Corporation v. Federal Express Corporation, 6-07-cv-01819 (FLMD February 28, 2011, Order) (Antoon, J.)

Surviving Summary Judgment Insulates Against Request for Attorneys' Fees

Defendants' post-trial motion for attorneys' fees under Section 285 was denied. "[Defendant's] theory is that [plaintiff] should be liable for attorneys' fees because it ultimately lost its infringement claim against [defendant] at trial. . . . [B]ecause [plaintiffs'] action survived summary judgment, it is appropriate to conclude that it was not objectively baseless, and thus, not exceptional for purposes of awarding attorneys' fees."

Astrazeneca AB, et. al. v. Laboratorios Dr. Esteve S.A., et. al., 1-03-cv-06057 (NYSD May 19, 2010, Order) (Jones, J.)