Repeated Sloppiness With Privilege Designations Justifies Discovery Sanctions

The court granted in part plaintiffs' motion for monetary sanctions for their motions to compel discovery defendants withheld as privileged. "The Court has conducted three previous in camera reviews of documents that Defendants withheld, and each time, the Court has compelled Defendants to review their privilege logs and produce additional documents in accordance with the law. . . . As a result of Defendants' consistent sloppiness and noncompliance, the Court has expended a great deal of time reviewing exemplars, holding conferences, and preparing opinions and orders compelling Defendants to produce additional documents that were improperly withheld. Likewise, Plaintiffs have spent substantial resources seeking to obtain documents that should have been produced long ago."

Au New Haven, LLC f/k/a Uretek LLC et al v. YKK Corporation, 1-15-cv-03411 (NYSD January 5, 2018, Order) (Netburn, MJ)

Storing Products at Amazon Fulfilment Center Does Not Qualify as Place of Business for Venue

The court granted defendant's motion to dismiss for improper venue because defendant did not have a regular and established place of business in the district through its use of an online retailer's fulfillment centers. "Plaintiff does not present any evidence or legal authority to support its argument that the Amazon FCs are the physical, geographical location of [defendant]. . . . Plaintiff contends that [defendant] leases the place of business since it pays a storage fee to Amazon in exchange for storing the product. Plaintiff has not conducted a legal analysis demonstrating that a monthly subscription fee equates to leasing space in the FCs. On the other hand, Defendant has presented evidence that it has no control over which FCs its products will be sent, and once stored at one Amazon FC, Amazon has discretion to redistribute [defendant's] products to another Amazon FC. Since [defendant] has no control over its products once they are sent to Amazon FCs, these storage centers cannot be said to be the 'place of Defendant.'"

Reeflection, LLC v. Spire Collective LLC d/b/a StoreYourBoard et al, 3-17-cv-01603 (CASD January 5, 2018, Order) (Curiel, USDJ)

Fact Dispute as to Scope of Assignment Precludes Summary Judgment on Assignor Estoppel

The court denied plaintiff's motion for summary judgment that defendant's invalidity counterclaim was barred by assignor estoppel because defendant's founders were named inventors of the patent-in-suit and assigned plaintiff the right to the patent's application. "It is undisputed that [defendant] is in privity with [the inventors]. But the question remains, and the parties greatly dispute, whether [the inventors] assigned to [plaintiff] an invention that is claimed in the [patent]. The issue turns on whether the invention assigned by [the inventors] to [plaintiff] is different from or merely a narrower version of the invention claimed in the [patent]. Although assignor estoppel is an equitable doctrine for the Court to ultimately decide, these subsidiary factual disputes make summary judgment on the issue inappropriate at this time."

Verinata Health, Inc., et. al. v. Ariosa Diagnostics, Inc., et al, 3-12-cv-05501 (CAND January 4, 2018, Order) (Illston, USDJ)

IPR Estoppel Does Not Apply to Invalidity Grounds Omitted From Petition

The court denied plaintiff's motion for summary judgment that its lighting patents were not invalid for lack of novelty or obviousness due to IPR estoppel. "⁠[Plaintiff] contends that, any invalidity contention that [defendant] did disclose in its preliminary and supplemental invalidity disclosures must fail because [defendant] is estopped from asserting such contention in federal court under 35 U.S.C. § 315(e)(2), since [defendant] 'raised or reasonably could have raised' any such contentions in its IPR petition. . . . Some courts . . . reason[] that [Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016)] only requires excluding from the scope of Section 315(e)(2) those invalidity grounds for which the PTAB did not institute review, but not invalidity grounds that the petitioner failed to raise in its petition because the narrower estoppel suggested by Shaw would encourage petitioners to hold back 'a second-string invalidity case in reserve in case the IPR does not go the defendant’s way.'. . . . There is much appeal in a broader reading of the estoppel provision. . . . [But that] reading of the estoppel provision is foreclosed by Shaw. The Federal Circuit in Shaw held that the phrase 'during inter partes review' applies only to the period of time after the PTAB has instituted review, and notwithstanding [plaintiff's] claims to the contrary, that holding was not limited to Section 315(e)(1) nor was it mere dicta."

Koninklijke Philips NV et al v. Wangs Alliance Corporation d/b/a WAC Lighting Co., 1-14-cv-12298 (MAD January 2, 2018, Order) (Casper, USDJ)

Preliminary Relief Barring Plaintiff’s Enforcement Activity and Takedown Notices Denied

The court denied defendant's motion for a temporary restraining order and preliminary injunction to prohibit plaintiff's enforcement actions, including posting takedown notices with online retailers, because defendant failed to establish a likelihood of success on the merits of its noninfringement and invalidity counterclaims. "⁠[Defendant] provides no evidentiary support of its proposed claim construction to support such a narrow claim construction that would exclude several preferred embodiments. . . . [Defendant] has not provided the Court with any evidence of how a person of ordinary skill in the art would apply the references to the asserted claims to render the claims obvious. . . . [With respect to its invalidity counterclaim based on lack of enablement and written description, Defendant] fails to provide the Court with any indication of how those skilled in the art would read the patent at issue. . . . [With respect to its invalidity counterclaim based on anticipation, Defendant] has provided no evidence regarding when [plaintiff's] first public disclosure or sale of the invention occurred. Instead, [defendant] appears to be relying on an assumption that it will ask for and receive a spoliation instruction from the Court because of alleged destruction of evidence. But [defendant] cannot use this form of speculation to show a reasonable likelihood of success on the merits that the patent is invalid for prior public disclosure."

Blazer v. Chrisman Mill Farms LLC, 5-17-cv-00430 (KYED January 2, 2018, Order) (Reeves, USDJ)

Court's Questioning of Damages Expert No Basis for New Trial

The court denied defendant's motion for a new trial because defendant was not prejudiced by the court questioning defendant's damages witnesses at trial. "⁠[Defendant] believes that the Court expressed disdain for its positions in front of the jury, coloring their evaluation of the evidence despite an instruction not to take anything from the Court’s comments during trial. . . . [Defendant's expert] reiterated that the 20 Amp Limitation is 'just a test specification. No tool actually does that.' The Court responded, 'Understood, but that’s what patents are all about.' This lone comment, even if it could be seen as disparaging [the expert's] opinion, was not prejudicial. The Court’s one-liner did not unravel the prior thirty minutes of questioning. . . . The Court did accuse [defendant] of 'flailing in the wind,' but this was no more than the Court’s suggestion that the point had been made and it was time to move forward. . . . The trial record was replete with evidence supporting the jury’s damages determination, and the Court’s few comments and questions had little, if any, effect in the grand scheme."

Milwaukee Electric Tool Corporation et al v. Snap-On Incorporated, 2-14-cv-01296 (WIED December 29, 2017, Order) (Stadtmueller, USDJ)

District Court Split Excuses Pre- In re Micron Delay Asserting Venue Challenge

The court transferred plaintiff's patent infringement action in response to defendant's motion to dismiss and rejected plaintiff's argument that defendant's venue challenge was untimely. "⁠[Defendant] concedes that its motion came six months after [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct 1514 (2017)], but the delay was due to the fact that other courts interpreted TC Heartland differently. There was a district court split over whether a challenge to venue was waived if the moving party delayed in raising this issue. . . . Once the Federal Circuit issued its opinion in [In re Micron Technology, Inc., 875 F.3d 1091 (Fed. Cir. 2017)] holding that 'TC Heartland changed the controlling law,' [defendant] filed the instant motion within a week. . . . To hold that [defendant] was required to immediately file its change of venue motion after TC Heartland was issued, but prior to the definitive guidance in Micron Technology, when the only law in this circuit at the time held that TC Heartland did not change the law, would be patently unfair to [defendant]."

SCVNGR, Inc. d/b/a LevelUp v. DailyGobble, Inc. d/b/a Relevant, 1-16-cv-00134 (RID December 27, 2017, Order) (McConnell, Jr., USDJ)