“License Production Order” Requires Disclosure of Licenses Covering the Patents-In-Suit, Including Settlement Licenses

Following the case management conference, the court issued a "License Production Order" requiring plaintiff to produce all license agreements covering the patents-in-suit. "If plaintiff is seeking a reasonable royalty, in whole or as part of its damages, [in 4 weeks], plaintiff will produce to defendants all license agreements it has entered into, or now holds as a successor-in-interest to a prior licensor, covering the patents at issue, whether entered into before or after the start of litigation (i.e., licenses arising from settlement of litigation). The production of licenses is subject to the highest level of confidentiality (Attorneys’ Eyes Only) unless the plaintiff designates them otherwise."

SPH America, LLC v. AT&T Mobility, LLC, 3-13-cv-02318 (CASD March 18, 2014, Order) (Bencivengo, J.)

“And/Or” Pleading Insufficient to Satisfy Joinder Requirements of 35 U.S.C. § 299

The court granted defendants' motion to dismiss for improper joinder where plaintiff alleged that "[t]he accused products are compliant with [two standards] and/or incorporate [two] chip sets for wireless communication, and/or incorporate [two] sets for wireless communication, and/or the equivalents of such chip sets.” "The Court is not persuaded [plaintiff's] pleading, with its deliberate use of the ambiguous words 'and/or,' satisfies [its] obligation under [35 U.S.C. § 299] of alleging the Defendants indeed make, use, import, offer to sell or sell the same allegedly infringing product or process. As noted by [movants], the Amended Complaint does not allege any commonality between any [movants'] accused product and any [other defendant's] accused product. And merely alleging the accused products have [the same] chip sets in them is insufficient to support joinder, as the incorporation of a common component into different accused products does not satisfy section 299’s requirement that the Defendants provide the same accused product or process."

Atlas IP, LLC v. Medtronic, Inc., et al, 1-13-cv-23309 (FLSD March 17, 2014, Order) (Altonaga, J.)

No Intervention to Address Claim Construction

The magistrate judge recommended denying a motion by plaintiff's competitor to intervene and participate in claim construction. "While it is true that [movant] . . . has been sued by [plaintiff in another action], and that action involves three of the same patents implicated in this action, any ruling by the court in this matter concerning claim construction will not be binding in that case. . . . If intervention were permitted under such circumstances, it seems likely that the courts would be inundated with requests by accused infringers, or even potentially those fearing infringement litigation, to be heard regarding the question of claim construction. To permit such a practice would wreak havoc on the courts and further complicate already expensive and complex patent infringement litigation."

John Mezzalingua Associates, Inc. v. Corning Gilbert, Inc., 5-12-cv-00911 (NYND March 14, 2014, Order) (Peebles, M.J.)

Expert’s Past and Potential Consulting Work Precludes Access to Defendant’s Confidential Information

The court granted defendant's motion for a protective order precluding plaintiff's proposed expert from reviewing defendant's confidential information. "[One proposed expert] is an active consultant in the field at issue. In the very recent past, he has worked for several of [defendant's] competitors, and there has been no representation or agreement that he will not do so again in the very near future. [Defendant] points out several ways in which the information to which he would be exposed as an expert in this case could influence his work as a consultant on patent licensing, reverse engineering, and portfolio management, even if he were to make his best efforts to cabin the information off in his mind, and the court finds these concerns persuasive. Furthermore, despite the concerns raised by [defendant], [plaintiff] has not identified any unique qualifications or knowledge that make [him] better suited than any other expert to serve."

GPNE Corp. v. Apple Inc., 5-12-cv-02885 (CAND March 13, 2014, Order) (Grewal, M.J.)

Attorneys’ Fees Denied in Exceptional Case For Failure to Distinguish Between Declaratory Judgment Fees and Counterclaim Fees

The court denied plaintiff's motion for attorneys’ fees under 35 U.S.C. § 285 following a joint motion for dismissal. Although the court found the case to be exceptional, plaintiff did not submit adequate and timely evidence of fees related to defendant's counterclaims. "[Plaintiff] has not met its burden of substantiating the hours worked here. The materials [plaintiff] submitted in justification for attorney fees appear to include all work done by counsel after [defendant] submitted its counterclaims. The materials fail to distinguish between the hours incurred for work done on the counterclaims and hours incurred as a result of [plaintiff's] noninfringement or invalidity claims under its Complaint for Declaratory Judgment. . . . As such, an award of attorney fees in this case would require speculation. . . . The Court declines to invite untimely record keeping submissions or belated explanations for [plaintiff's] failure to fulfill its current burden."

Mauna Kea Technologies v. Anticancer, Inc., 3-11-cv-01407 (CASD March 12, 2014, Order) (Bencivengo, J.)

Judge Dyk Excludes Valuation Opinion Premised on Multivariate Hedonic Regression Analysis

The court granted defendant's renewed motion to exclude plaintiff's damages expert's multivariate hedonic regression analysis. "In assessing the appropriateness of the benchmark rates against the Georgia-Pacific factors, [the expert] . . . used multivariate hedonic regression to 'estimate the value of the accused feature’s contribution to the overall prices realized by [defendant] on the 5 Accused Products.' . . . Even assuming that hedonic regression analysis could properly be used to calculate the value of the accused feature, I conclude that [plaintiff's expert's] methodology relies on arbitrary assumptions that have no basis in the facts of this case or hedonic analysis in general. [His] attribution of equal value to all 19 RAS features is not based on any theory that meets the Daubert criteria of verifiability, peer review or publication, an acceptable error rate, or general acceptance in the scientific community. Indeed, [he] admitted that he could not separately estimate the value of the accused feature because all 19 RAS features were present in the same processor models.. . . . Utilizing guesswork is precisely what [plaintiff] is attempting to do here with [its expert's] guess as to the value of the accused feature in connection with his hedonic analysis. . . . [The expert's] opinion that 2.2% of the price of the accused products is attributable to the 8 accused feature lacks the 'valid scientific connection to the pertinent inquiry' that is required 'as a precondition to admissibility' under Rule 702."

Stragent, LLC et al v. Intel Corporation, 6-11-cv-00421 (TXED March 6, 2014, Order) (Dyk, C.J.)

IPR Terminated Due to Indefiniteness of Challenged Claims

The Board terminated inter partes review because the challenged claims were indefinite. As a result, the Board was "unable to reach a determination of the alleged grounds of unpatentablilty over prior art." "[T]he scope of the claims of the . . . patent cannot be determined without speculation. Consequently, the differences between the claimed invention and the prior art cannot be determined. . . . [The patent owner] urges us to conduct the prior art analysis based on only the functional recitation of the means-plus-function element. We decline to do so. . . . [T]hat is contrary to the requirements of both 35 U.S.C. § 112, sixth paragraph, and 35 U.S.C. § 103. The obviousness determination is directed to the claimed invention as a whole, not to any partial invention that does not include all of the requirements of the claim. . . . Without ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness."

Petition for Inter Partes Review by Research In Motion Corporation, IPR2013-00036 (PTAB March 7, 2014, Order) (Lee, APJ)

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Compliance with Form 18 Insufficient to Plead Infringement

The court granted defendant's motion to dismiss and rejected the argument that compliance with Form 18 was sufficient to state a claim for direct infringement. "[Plaintiff] . . . assert[s] that its case is only for direct infringement and that complaints presenting such claims . . . need only comply with Form 18 . . . [T]o exempt patent complaints from the requirements of [Bell Atlantic v. Twombly, 550 U.S. 544 (2007)] and [Ashcroft v. Iqbal, 556 U.S. 662 (2009)] is to ignore a fundamental rationale that underpins those decisions. . . . [B]efore filing a complaint, counsel must ascertain exactly what claims should alleged to be infringed and how they are infringed. That can be done with brevity and clarity if counsel know at the outset their theories of infringement and what can, and cannot, be said about allegedly infringing conduct. . . . Indeed, it is high time that counsel in patent cases do all of that work before filing a complaint. . . . The current practice is to file a Form 18 complaint and then, using claim charts, prior art charts, discovery, and motions, to pare claims that ought not to have been brought or that cannot withstand careful scrutiny. That process has proven to be an increasingly expensive proposition for the parties and one that takes a tremendous toll on already strained judicial resources."

Macronix International Co., Ltd. v. Spansion, Inc. et al, 3-13-cv-00679 (VAED March 10, 2014, Order) (Payne, J.)