Signal Processing Patent Not Invalid Under In Re Nuijten

The court denied defendant's motion to dismiss on the ground that plaintiff’s signal processing patent encompassed unpatentable subject matter under In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007). "In Nuijten . . . the Federal Circuit held that transitory signals did not fall within one of the four categories of patentable subject matter and thus were patent ineligible. Defendant misses a key holding in Nuijten -- the Federal Circuit allowed processing claims and only denied patent eligibility for claims that covered the signals themselves. Here, Claims 5 and 18 describe the process of splitting and synthesizing signals. . . . Neither claim covers a signal, and thus, a Nuijten analysis is unnecessary."

Hybrid Audio, LLC v. Visual Land, Inc., 2-17-cv-08968 (CACD April 5, 2018, Order) (Lew, USDJ)

PTAB Joinder Does Not Limit Scope of IPR Estoppel

Following two inter partes review proceedings, the court granted plaintiff's motion for summary judgment that IPR estoppel under 35 U.S.C. 315(e)(2) barred defendants from asserting invalidity of previously instituted claims based on prior art that was known by defendants when they joined a third-party's IPR, but which defendant's failed to assert in that IPR. "When requesting joinder, Defendants did not raise any of the additional prior art patents and publications already identified in their invalidity contentions in this case. Defendants respond that because the 'PTAB routinely denies joinder if a second-filed petition might introduce new arguments or grounds into a pending IPR,' the only grounds that Defendants 'reasonably could have raised in the [third-party] IPR were the same grounds on which the PTAB already instituted the [third-party] IPR.' Contrary to Defendants’ arguments, there is no 'mirror image' rule for joinder. The PTAB has noted that requests for joinder can involve petitions that assert different grounds of invalidity. . . . Allowing Defendants to raise arguments here that they elected not to raise during the [third party] IPR would give them 'a second bite at the apple and allow [defendants] to reap the benefits of the IPR without the downside of meaningful estoppel.'. . . Accordingly, Defendants are statutorily estopped from arguing that the instituted claims of the [patent] are anticipated or obvious in light of prior art patents and publications discussed in their invalidity contentions."

ZitoVault LLC v. International Business Machines Corporation et al, 3-16-cv-00962 (TXND April 4, 2018, Order) (Lynn, USDJ)

Invalidation of One Patent Does Not Justify Reduction of $7 Million Attorney Fees Award

The court granted plaintiff's motion for over $7 million in attorney fees under 35 U.S.C. § 285 and rejected defendants' argument that the fees should be reduced by 33% on the ground that one of the patents-in-suit was found to be invalid as obvious because the hours billed were inextricably intertwined. "⁠[Plaintiff's] counsels’ work on 'unsuccessful claims was intimately related to the work done on successful claims.' Most of [plaintiff's] counsels’ time was 'devoted to the litigation as a whole, making it impossible to divide the work done on each individual claim.' The number of witnesses called at trial did not increase as a result of the unsuccessful claims. Further, all of [plaintiff's] claims were so closely related that allocating the amount of time spent litigating each individual claim would have been impossible."

Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd. et al, 4-14-cv-00371 (TXED April 3, 2018, Order) (Mazzant, USDJ)

"Designer of Ordinary Skill in the Art" and "Ordinary Observer" Inappropriate for Determining Article of Manufacture

The court granted in part defendant's motion to exclude the testimony of plaintiff's technical experts because their application of the "designer of ordinary skill in the art" and "ordinary observer" standards to identify the relevant article of manufacture was improper. "The Court finds that there is no basis for importing these perspectives, which are used in the infringement and validity contexts, into the article of manufacture inquiry. Furthermore, the Court finds that introducing these perspectives risks confusing and misleading the jury. However, the Court declines [defendant's] request to exclude all of the material that [defendant] identified as related to these perspectives. . . . [M]uch of the DOSA-related testimony would be relevant and admissible if [the experts] instead testify to these points from their own perspectives as experts in industrial design and icon and graphical user interface design."

Apple Inc. v. Samsung Electronics Co. Ltd., et al, 5-11-cv-01846 (CAND April 2, 2018, Order) (Koh, USDJ)

Success Rates on Requests to Stay Pending IPR, CBM, or PGR through 2017

Post-Hoc "Parade of Horribles" Does Not Justify Award of Attorney Fees

Following a jury trial, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics as a whole were not exceptional. "Defendants’ strategy with its § 285 Motion seems to be to throw out as many different aspects of Plaintiff’s behavior as it can to support its fee request and 'see what sticks.' But it would be both tedious and wasteful for the Court to consider each and every individual tree when it should be looking at the landscape in the bigger forest. . . . And while perhaps true that Plaintiff had some shortcomings in its litigation and pre-litigation conduct and positions, the Court is unconvinced that those shortcomings amount to a showing that Plaintiff’s behavior was exceptional. . . . A party cannot simply hide under a rock, quietly documenting all the ways it’s been wronged, so that it can march out its 'parade of horribles' after all is said and done. That is the tenor of many of Defendants’ arguments here. Or alternatively, where Defendants did come forward at some point and challenged Plaintiff’s positions with some success, Defendants have not proven that they have been exceptionally wronged -- they got at least some of the relief they sought."

ATEN International Co., Ltd. v. Uniclass Technology Co., Ltd. et al, 2-15-cv-04424 (CACD March 30, 2018, Order) (Guilford, USDJ)

Defendant’s Obnoxious Copying and Failed Design-Around Support Award of Enhanced Damages

Following a jury verdict of willful infringement, the court granted in part plaintiff's motion for enhanced damages because defendant's copying, lack of a good faith belief in noninfringement/invalidity, lack of closeness of the case, duration of misconduct, lack of remedial action, and motivation for harm favored an enhancement of $3.8 million on a $7.6 million award. "⁠[A]n attempted design around that ultimately fails to actually design around and is adjudged to be infringing necessarily copies where, as here, the adjudged infringer begins with a copy already existing technology and then proceeds to make changes. . . . [T]he record lacks any 'written evidence that anyone at [defendant] considered the full claim scope or alternative embodiments that might fall within it.'. . . [T]his case is one where the copying exhibited is 'so obnoxious as to clearly call for' 'discourage[ment] by punitive damage[s].' . . . [T]he jury awarded [plaintiff] approximately 90% of [its] proposed damages. . . . Although [defendant's] continued infringement lasted for 'only a year and eight months,' the Court must nonetheless weigh the period of time against [its] pre-suit notice and continued infringement. . . . [Defendant's] actions were preventative; they served to prevent expansion of the scope of the ongoing infringement as found at trial. . . . It is not 'good old-fashioned competition' to trespass upon other competitor’s property rights in pursuit of profits."

Whirlpool Corporation v. TST Water, LLC, 2-15-cv-01528 (TXED March 29, 2018, Order) (Gilstrap, USDJ)