Evidence of Reexamination Not Relevant For Jury Trial On Infringement

The court granted defendant's motion in limine to exclude references to the presumption of patent validity, a prior administrative determination of patentability, and defendant's rejected reexamination request. "The court will explain the burden of proof on invalidity. The reexamination results are not relevant evidence."

Smith & Nephew, Inc. v. Interlace Medical, Inc., 1-10-cv-10951 (MAD August 17, 2012, Order) (Zobel, J.).

Seven Month Delay Investigating Infringement Allegations Followed by “Infinitesimal Change” to Accused Product Support Enhanced Damages and Attorneys’ Fees

The court granted plaintiff's motion for treble enhanced damages after the jury found willful infringement and the court found that all nine Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992), factors favored such an award. "[E]ven after being sued in this case, [defendant] waited approximately seven months to determine if its products infringed the [patent-in-suit]. After learning that is products did infringe the [patent], [defendant] made an 'infinitesimal' change in an apparent attempt to stop future infringement. There was no evidence how [defendant] concluded this change was sufficient to prevent future infringement and, in fact, it was unclear whether the change was even made to all of [its] systems. . . . [Defendant] learned it was infringing in 2007 but did not disclose that until 2011. Between 2007 and 2011, [it] vigorously argued that no evidence existed which would establish infringement. Moreover, [defendant] did not alert its customers to the alleged changes in its systems meant to prevent future infringement and there were no meaningful changes to its system manuals reflecting that the operations had been altered."

Integrated Technology Corporation v. Rudolph Technologies, Inc., et al., 2-06-cv-02182 (AZD July 23, 2012, Order) (Silver, J.).

Under Therasense, Failure to Disclose Non-Enabling Reference was not Material Misrepresentation Sufficient to Support Inequitable Conduct Defense

On remand, the court reversed its pre-Therasense finding of inequitable conduct and determined that plaintiff's database patent was not unenforceable under Therasense v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) where plaintiff identified a prior art system in its IDS but did not produce a brochure regarding that system to the PTO. "The [prior art] System that is the subject of the [undisclosed] Brochure represents a significant body of programming effort that, under Federal Circuit standards, could not be enabled by a mere bullet-point brochure. . . . Since the [brochure] lacked enablement, it could not have stopped the PTO from granting the [patent-in-suit's] claims had it been disclosed. Accordingly, under the appropriate Therasense 'but-for' test, the [brochure] is not material, and [defendant's] inequitable conduct defense fails."

Golden Hour Data Systems, Inc. v. emsCharts, Inc., et. al., 2-06-cv-00381 (TXED August 15, 2012, Order) (Gilstrap, J.).

Appointment of Lead Defendant to “Brief and Argue” Claim Construction on Behalf of All Consolidated Defendants does not Violate Due Process

The court overruled defendant's objections to the court's scheduling order, which required appointment of a "lead defendant for briefing and argument" of claim construction, and rejected defendant's claim that the order violated due process. "[Defendant] claims it is improper to require an unrelated defendant to argue claim construction on [its] behalf. . . . The Court’s procedure mimics the accepted procedure of assigning lead parties in complex cases, such as in multidistrict litigation and class action suits. . . . The lead defendant in effect acts as the liaison for all the defendants during the Markman procedure. Although the lead defendant is the responsible party, it serves in a representative capacity on behalf of all defendants for common issues. Accordingly, the Court is unpersuaded that its procedure deprives [defendant] of any constitutional right."

GeoTag Inc. v. Circle K Stores, Inc., 2-11-cv-00405 (TXED August 14, 2012, Order) (Schneider, J.).

Multi-Defendant Case Severed Per AIA (§ 299), But Consolidated for Pre-Trial With Venue Issues Delayed Until After Claim Construction.

After granting defendants' motion to sever and consolidating the cases for pre-trial purposes, the court issued an order retaining all cases through the claim construction phase, even if pending motions to transfer were or would be granted. "This serves two important purposes. First, it conserves judicial resources by requiring only one district court to address the underlying disputed claim terms. . . . Second, this case management approach ensures that the related patent cases proceed initially on a consistent claim construction, thus avoiding inconsistent rulings. However, this case management approach should not be perceived as an invitation to file motions to transfer venue. . . . This Court currently has approximately forty pending motions to transfer venue. If the average cost of discovery and briefing for each of these transfer motions is only $300,000, then approximately $12 million is being spent by the parties on an issue that does not move the ball down the field, but only seeks a new field upon which to play."

Norman IP Holdings, LLC v. Lexmark International, Inc., et. al., 6-11-cv-00495 (TXED August 10, 2012, Order) (Davis, J.).

Losing Plaintiff’s Failure to Perform Pre-Filing Investigation Supports Award of Attorneys’ Fees

The court granted defendant's motion for attorneys' fees under 35 U.S.C. § 285 following the dismissal of plaintiff's second amended complaint. "Regarding pre-filing investigation, Plaintiff concedes in opposition to the Motion for Sanctions that 'Plaintiff has not alleged that Defendant provides user input devices because such information is not available publicly so there is no basis to make such a statement as to that specific fact.' Plaintiff therefore acknowledges that there was no good faith basis to assert this claim against Defendant and that the lawsuit was filed with the knowledge that Plaintiff could not allege a required part of the patent claims. Thus, the litigation was objectively baseless. . . . Nevertheless, Plaintiff continued to prosecute this case, resulting in briefing on two separate Motions to Dismiss and a frivolous Motion for Reconsideration."

Lyda v. Fremantlemedia North America, 1-10-cv-04773 (NYSD August 9, 2012, Order) (Batts, J.).

Online Shopping Cart did not Implicate Divided Infringement Because Web Pages Contained Embedded Programming and did not Require a User to Download or Install Software

The court denied defendants' post-trial motion for judgment as a matter of law that the accused online shopping cart system did not infringe plaintiff's internet commerce patents. The court rejected defendant's divided infringement argument that the patented system required two computers and defendants' only put into service one such computer. "Defendants argue that they. . . do not use the claimed system because the claims require a buyer computer (client-side) and a shopping cart computer (server-side). . . . Here, unlike [Centillion Data Systems, LLC v. Qwest Communications International, Inc., 631 F.3d 1279 (Fed. Cir. 2011)], Defendants do not require their customers to download and install software so that the buyer computer is able to interact with the shopping cart computer as required by the claims. Rather, the delivery of Defendants’ web page itself provides the programming required by the claims; the user is not required to install anything. Thus, Defendants’ web server, by delivering web pages containing embedded programming, puts the system as a whole into service so that Defendants may benefit from the system. Accordingly, Defendants use the system under § 271(a) by putting the system into service, i.e., controlling the system as a whole and deriving benefit from it."

Soverain Software LLC v. J.C. Penney Corporation, Inc., et. al., 6-09-cv-00274 (TXED August 9, 2012, Order) (Davis, J.).