Demonstrating Device at Tradeshow May Constitute Infringing Use​

The court denied defendants' motion to dismiss plaintiff's direct patent infringement claims for failing to sufficiently allege that they used the accused product or that the infringement was de minimis. "[D]efendants appear to suggest that demonstration of an infringing device at a trade show cannot constitute 'use' for purposes of § 271 as a matter of law. . . . I likewise decline to hold that demonstration of an infringing device at a trade show can never constitute 'use' for purposes of § 271. . . . It can reasonably be inferred that in showing potential customers how the device operated, the defendants used the [accused device] to check the diameter of a part. . . . [T]he defendants' alleged infringement is not limited to their use of the [accused device] at [one trade show]. . . . Further, at this stage, I am unable to accept the defendants' contention that their alleged infringing conduct is unlikely to recur."

Marposs Societa Per Azioni et al v. Jenoptik Automotive North America, LLC et al, 1-16-cv-09041 (ILND April 7, 2017, Order) (Bucklo, USDJ)

Willful Infringement Claim Based Solely on Post-Filing Conduct Fails as a Matter of Law​

The court granted defendants' motion to dismiss plaintiff's willful infringement claim because it was based on post-filing conduct. "Although [Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016)] rejected the [In re Seagate Tech, LLC, 497 F.3d 1360 (Fed. Cir. 2007)] test of what constitutes a reckless state of mind to support an award of § 284 damages as too rigid, it did not discuss whether such damages are limited to the alleged infringer's pre-filing conduct, other than to state that culpability for willful infringement purposes is 'measured against the knowledge of the actor at the time of the challenged conduct.' The Federal Circuit in Seagate stated that 'in ordinary circumstances, willfulness will depend on an infringer's prelitigation conduct.' Other cases, post-Halo, have concluded that Seagate's conclusion with respect to the unavailability of a claim for willful infringement based upon post-filing conduct is still good law. Further, a court in this district has held that a claim for enhanced damages based on willful infringement 'must necessarily be grounded exclusively in the accused infringer's pre-filing conduct. . . when an accused infringer's post-filing conduct is reckless, a patentee can move for a preliminary injunction.' . . . Accordingly, the Court finds that Plaintiffs willful infringement claim, which is based solely on Defendants' post-filing conduct, fails as a matter of law."

Cooper Lighting, LLC v. Cordelia Lighting, Inc. et al, 1-16-cv-02669 (GAND April 6, 2017, Order) (Cohen, USDJ)

Invalidity Opinion Delivered After Product Launch No Defense to Willful Infringement​

Following a jury trial, the court granted plaintiff's motion for entry of judgment and found that defendant's patent infringement was willful because defendant's invalidity defenses were not relied upon at the time the accused products were introduced. "[T]he Court in [Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016)] has eliminated the ability of an accused infringer to posit reasonable invalidity defenses which were not relied upon at the time the accused products were introduced into the market. . . . '[C]ulpability is generally measured against the knowledge of the actor at the time of the challenged conduct.' There is no indication in the record that [defendant's expert] provided [defendant] his opinion on invalidity before the accused products went into production. . . . [T]here is no record evidence that [defendant] had knowledge of the invalidity defense derived from the combination of prior art and SAE standards at the time of the challenged conduct."

Omega Patents, LLC v. Calamp Corp., 6-13-cv-01950 (FLMD April 5, 2017, Order) (Byron, USDJ)

Vehicle Camera System Patent Not Invalid Under 35 U.S.C. § 101 at Pleading Stage​

The special master recommended denying defendant's motion for judgment on the pleadings on the ground that plaintiff’s vehicle camera system patent encompassed unpatentable subject matter because defendant failed to establish that the asserted claims were directed toward an abstract idea. "[T]he claims specify a particular imaging array sensor configuration and a particular approach of using data acquired from the sensor. That approach includes a step that the patent argues to depart from a conventional data processing approach by the inclusion of a reduced image data set. Also, because the imaging array sensor is taught and claimed to be useful in a misaligned condition, applying reasonable inferences in favor of Plaintiff, it can be said that the sensor as well is used in an unconventional manner, instead of the more conventional aligned technique. In this manner, the patent purports to provide an improved and unconventional approach to addressing misalignment of the image array sensor and the resulting data."

Magna Electronics, Inc. v. Valeo, Inc. et al, 2-13-cv-11376 (MIED March 31, 2017, Order) (Dobrusin, Special Master)

$1 Billion Valuation of Inventor’s Non-Asserted Patents Excluded as Prejudicial​

The court granted in part defendants' motion in limine to exclude the value of non-asserted patents from plaintiff's inventor under Rule 403. "Defendants move to exclude Plaintiff from discussing the technology or value of non-asserted patents that list [the same inventor] as the named inventor and that Plaintiff purports were valued at over $1 billion. . . . Plaintiff may provide a limited discussion of these non-asserted patents and their general subject matter at trial when discussing [the inventor's] background. Nevertheless, the Court agrees with Defendants that a discussion of the value of these non-asserted patents would likely lead to unfair prejudice and jury confusion substantially outweighing the limited probative value of such evidence."

Carucel Investments, L.P. v. Novatel Wireless, Inc. et al, 3-16-cv-00118 (CASD April 3, 2017, Order) (Huff, USDJ)

Patent Assignment Agreement Providing Outcome-Based Compensation to Fact Witness Does Not Justify Award of Attorney Fees ​

Following claim construction and a stipulated judgment of noninfringement, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation tactics were not exceptional. "Defendants rely on the compensation arrangement in the Agreement with [a third party], coupled with Plaintiff’s initial disclosures identifying certain principals from [the third party] as fact witnesses, to argue that Plaintiff has agreed to pay fact witnesses to testify and the payment is contingent on the outcome of the case. However, the Agreement involves assignment of the Patent, not an agreement to pay fact witnesses to testify, and the witnesses identified included the inventor. . . . [T]he Agreement provides for [the third party] to be compensated based on the outcome of a patent infringement lawsuit and requires cooperation from [the third party]. The Agreement’s compensation arrangement is not so out of the ordinary to make this case exceptional."

Rembrandt Gaming Technologies, LP v. Boyd Gaming Corporation, et al, 2-12-cv-00775 (NVD March 31, 2017, Order) (Du, USDJ)

Technical Expert Unqualified to Offer Opinion on Apportionment Value​

The court granted in part defendant's motion to exclude the testimony of plaintiff's technical expert regarding apportionment as unqualified. "An apportionment analysis is performed as part of a damages calculation. As such, there is an inherently economic quality to an apportionment analysis. . . . [Plaintiff's expert], with his Ph.D. in computer science and academic and industry experience in hardware and software design and development, is qualified to review the technical information in this case and opine regarding the importance of the various features of the accused products from a technical perspective. However, due to [his] limited experience with economic apportionment, he is not qualified to provide an ultimate opinion with respect to a damages value attributable to the patented invention. . . . [His] opinions . . . may be an input into the damages expert’s opinion about the proper apportionment value, but may not be the final apportionment value itself."

Realtime Data LLC d/b/a IXO v. Oracle America, Inc., 6-16-cv-00088 (TXED March 30, 2017, Order) (Love, MJ)