Stay Pending Inter Partes Review May Apply Only to Parties Stipulating to Litigation Estoppel

The court ordered additional briefing following plaintiff's submission of its unopposed motion to stay pending inter partes review. "The PTO has not yet acted on the petitions [for inter partes review]. . . . Fact discovery is complete. . . . The parties appear to agree that the litigation estoppel provided by statute would only apply against [the defendant who submitted the petition for inter partes review], and that it may only be effective after all appeals of the PTO’s decision are exhausted. The Court indicated that it believes that granting a stay at this point in the proceedings may not save much effort unless all parties to the stay are bound by the outcome of the inter partes review. One defendant indicated that it was willing to stipulate to be so bound. The Court agreed to give the other defendants time to consider the issue before the Court rules on the instant motion, as the Court is considering a stay that applies only to the parties who would be bound by the outcome of the inter partes review."

Achates Reference Publishing, Inc. v. Symantec Corporation, et. al., 2-11-cv-00294 (TXED April 5, 2013, Order) (Payne, M.J.).

Seventeen Year Prosecution History Alone does not Result in Laches

The court denied plaintiff's motion for summary judgment that defendants' reissued DNA fingerprinting patent was unenforceable due to laches because of a 17 year prosecution history from the original application to issuance. "[Plaintiff] has not shown that the inventors deliberately delayed prosecution, either to enable [defendants] to capture later-developed technology or to extend the term of the patent. Nor has [plaintiff] shown that any of the delays were unreasonable. . . . [Plaintiff] cannot explain what it would have done differently if the patent had issued earlier, or how it relied on, or was harmed by, the delay. [It] raises the specter that long patent prosecutions will hide inventions from the public, slowing scientific progress. But that did not occur here. . . . No one disputes that the invention gained widespread use in the genetic analysis industry despite the delay."

Promega Corporation v. Applied Biosystems, LLC, 1-13-cv-02333 (ILND April 4, 2013, Order) (Posner, C.J.).

Section 337 Violation Based on Method Claim Requires Infringement at the Time of Importation

Following a hearing on remand, the ALJ found no violation of section 337 regarding complainants' data communication network patent. "In view of the Commission’s opinion in [Certain Electronic Devices with Image Processing Systems, Components Thereof and Associated Software, Inv. No. 337-TA-724], it is now apparent that [respondent] does not directly infringe the asserted claims 1 and 12 at the time of importation. . . . The Commission’s opinion in Electronic Devices holds that the practice of an asserted method claim within the United States after importation cannot serve as the basis for an exclusion order. . . . [I]n order to use an accused Xbox 360 system in an infringing manner, one must use the Xbox console in conjunction with a wireless accessory such as a Wireless controller. . . . [T]here is no evidence that Microsoft directly infringes asserted claims 1 or 12 at the time of importation."

Gaming and Entertainment Consoles, Related Software, and Components Thereof, 337-TA-752 (ITC April 1, 2013, Order) (Shaw, ALJ).

Plaintiff’s Location as “Artifact of Litigation” Given Little Weight in Venue Analysis

The court granted defendant's renewed motion to transfer venue from the Southern District of Florida to the Southern District of California and gave little weight to plaintiff's choice of forum. "[Plaintiff's] parent company . . . is based in Canada and [plaintiff's] 'presence in Florida appears to be simply an artifact of litigation.' [Plaintiff] admits that its decision-making to base itself in Florida took into account 'federal district courts that are knowledgeable concerning patent matters, participate in the patent pilot program, and maintain an expedited docket compared to other jurisdictions.' [Plaintiff's] only Florida employee is a patent attorney. . . . Given these circumstances, little weight should be given to the Plaintiff's choice of forum."

Wi-LAN USA, Inc., et. al. v. Apple Inc., 1-12-cv-24318 (FLSD April 2, 2013, Order) (Moore, J.).

Obvious Solution to Nonobvious Problem Does Not Render Patent Invalid

The court denied defendant's motion for summary judgment that two of plaintiff's medical imaging patents were invalid as obvious. "[Defendant] has, at its disposal, the use of common sense in this analysis. But mere recitation of the phrase 'common sense' will not do. . . . [Defendant] argues that '[i]f we look at the inventors’ options to accomplish each function, it is undeniable they were obvious' . . . The flaw with this argument is that it assumes that the PHOSITA would have an awareness of the problem solved by the invention. Often, the inventive contribution lies in defining the problem in a new revelatory way. Once the problem is defined, the solution might well be obvious; but the problem remains non-obvious. If courts invalidated patents simply because the problems described in the specifications bore obvious solutions, a significant percentage of existing patents would vanish. Such an analysis almost invites hindsight bias. . . . [Defendant] has not submitted evidence of the extent of the design need or market pressure which would have provided the [person having ordinary skill in the art] with a blueprint of the problem to be solved. The patent cannot provide this blueprint."

DatCard Systems Inc. v. PacsGear Inc., 8-10-cv-01288 (CACD April 1, 2013, Order) (Pfaelzer, J.).

Proceeding With Litigation Following Unfavorable Claim Construction Warrants Attorneys’ Fees

The court granted in part defendants' motion for attorneys' fees under 35 U.S.C. § 285 following summary judgment of noninfringement. "[D]efendants filed the instant motion for attorneys’ fees pursuant to 35 U.S.C. § 285 or, in the alternative, 28 U.S.C. § 1927. Defendants seek to recover fees and costs accrued between the time the Court issued its Order Regarding Claim Construction . . . and the Court’s grant of summary judgment . . . [Plaintiff] persisted in litigating this case even after its own expert conceded that the processors in defendants’ chips cannot access all of the condition code storage locations. [Plaintiff's] decision to proceed, not only in the face of the Court’s claim construction, but in light of its own expert’s testimony supporting a finding of non-infringement, 'prolonged the litigation in bad faith.' Thus, this case is exceptional under 35 U.S.C. § 285. . . . [D]efendants are entitled to recover fees and costs incurred between . . . the date of [plaintiff's expert's] deposition [and] when the Court granted defendants’ motion for summary judgment."

BIAX Corporation v. NVIDIA Corporation, et. al., 1-09-cv-01257 (COD March 30, 2013, Order) (Brimmer, J.).

No Permanent Injunction Where Plaintiff Emphasized Certainty of Damages Case and did not Seek Preliminary Injunction

Following a bench trial, the court denied plaintiffs' motion for a permanent injunction against defendant's surgical tools. "[T]he Court finds that Plaintiff did not prove the [irreparable injury] prong, as [its] first witness who testified at trial . . . was unable to articulate why if [plaintiff] has endured infringement and harm to its reputation since 2004, it never sought preliminary injunctive relief. Throughout trial, [plaintiff] has been emphatic as to its entitlement to lost profits and to a certain royalty rate, which further supports the position that 'remedies available at law, such a monetary damages,' are fully adequate to compensate for [its] injury." Tyco Healthcare Group LP, et. al. v. Ethicon Endo-Surgery Inc., 3-10-cv-00060 (CTD March 28, 2013, Order) (Arterton, J.).