Two Motions To Transfer Venue From EDTX -- 1 Granted, 1 Denied

Defendants' motion to transfer venue for convenience was denied due to the existence of a related case even though all but one of the other private and public interest factors were neutral or weighed in favor of transfer. "The Federal Circuit has found that, in patent cases, the 'consideration of the interest of justice, which includes judicial economy, may be determinative to a particular transfer motion, even if the convenience of the parties and witnesses might call for a different result.' . . . Plaintiffs have pending in this courthouse a related lawsuit against [another company] asserting the [same patent-in-suit]. The two cases involve the same claim construction issues and transferring the case will only consume unnecessarily additional judicial resources. The court finds that the interests of justice weigh heavily against transfer."

Novartis Vaccines and Diag., Inc. et al. v. Bayer Healthcare, LLC et al., 2-08-cv-00068 (TXED September 28, 2009, Memorandum Opinion & Order) (Ward, J.)

Venue for suit initiated by Maryland plaintiff against defendants from Ohio, Sweden, Switzerland, and Israel was transferred to the Northern District of Ohio. "Considering all of the private and public interest factors, the defendants have met their burden of showing that the Northern District of Ohio is clearly more convenient than the Eastern District of Texas. Therefore, the motion to transfer venue is granted."

Immerson Medical Inc. v. Mentice AB et al., 2-08-cv-00161 (TXED September 29, 2009, Order) (Everingham, M.J.)

Question of Whether Patent Assignment Applies to CIP Certified for Interlocutory Appeal

The court certified for interlocutory appeal its denial of defendants' motion to dismiss for lack of subject matter jurisdiction. "Defendants convincingly argue that reasonable grounds exist for a difference of opinion. Although courts have found variously worded assignments to include CIPs, Defendants are correct that there is no binding precedent holding that an assignment with the exact terms cited [all "rights, title and interest" in "the inventions covered thereby and any division, reissues, continuations and extensions thereof"] includes CIPs."

Gerber Scientific Intl. Inc v. Satisloh AG et al.,
3-07-cv-01382 (CTD September 25, 2009, Amended Order) (Dorsey, J.)

Novo Nordisk Ordered to Correct Overly Broad Orange Book Use Code

Defendant was entitled to a mandatory injunction requiring plaintiff to change the Orange Book use code for the patent-in-suit. "[Defendant's] ANDA covers repaglinide. [Plaintiff's] patent which is the subject of this patent action does not cover repaglinide; it covers repaglinide only in combination with metformin. The U-968 use code narrative for the [patent-in-suit] states 'a method for improving glycemic control in adults with type 2 diabetes mellitus.' It is so broad as to incorrectly suggest that the [patent-in-suit] generically covers three (3) different FDA-approved methods of use of repaglinide . . . Because the FDA does not review use code narratives . . . it has required [defendant] as part of its ANDA to 'submit an updated patent certification addressing the [patent-in-suit] and its associated Use Code 968.' . . . [Defendant] has therefore been seriously disadvantaged by the improper U-968 use code narrative. . . . [Plaintiff], by the change in the use code narrative is attempting to extend the life of an expired patent."

Novo Nordisk A/S et al. v. Caraco Pharm. Lab., Ltd.,
2-05-cv-40188 (MIED September 24, 2009, Decision) (Cohn, J.).

Modification of Claim Construction in Jury Instruction Warrants New Trial

The court granted plaintiff's motion for a new trial where, after the close of plaintiff's case at trial, the court modified its previous claim construction based on evidence presented during trial. "Since this construction came after Plaintiffs had presented their evidence, Plaintiffs were left in the position of having presented expert witness testimony and graphics that were not supported by the Court’s eventual construction. . . . [A]fter a review of the evidence and the trial transcript, the Court finds that the number and significance of the claim terms undefined, defined after key testimony, and that were poorly defined allowed prejudicial error to creep into the trial process such that substantial justice was not done."

Avago Tech. General IP PTE Ltd. et al. v. Elan Microelectronics Corp. et al.,
5-04-cv-05385 (CAND September 23, 2009) (Ware, J.)

Grouping Accused Products, Alleging Compliance With Industry Standard Prove Fatal to Infringement Claims

In granting defendant's motion for summary judgment of noninfringement, the court rejected plaintiff's "shortcuts" of grouping accused products and asserting that compliance with an industry standard constitutes infringement. "When plaintiffs filed this patent infringement suit alleging that three separate patents had been infringed by more than 260 products they had to know it would not be simple or easy to prove that each of the accused products infringed every element of each claim of each asserted patent. Their efforts to take shortcuts by alleging 'compliance with industry standards' and grouping accused products have failed. Merely asserting that products comply with an industry standard that runs more than 1000 pages is not proof that the products practice specific sections of the standard. Grouping does not work when the only evidence supporting such grouping is merely that 'in general, different versions of a product are part of the same family and have the same basic functionality.' Slight variations in product functionality may be the difference between infringement and non-infringement by that product . . . Saying that products have the same 'basic' functionality is not enough to justify grouping without evidence that the relevant features are identical."

Fujitsu Limited et al v. Netgear, Inc.,
3-07-cv-00710 (WIWD September 18, 2009, Order)
(Crabb, J.)

Report & Recommendation: Apple's iPhone Does Not Infringe Caller ID Patent

The magistrate judge recommended granting Apple's motion for summary judgment that the iPhone does not infringe a patent claiming a system for "displaying the incoming telephone number and the name of the party." With respect to function, "[w]hile the iPhone includes a mechanism for displaying the incoming telephone number alone, it lacks a mechanism for displaying the incoming telephone number along [with] the information contained in the name field of the Address Book." Further, "the telephone number that appears on the iPhone’s display device is not the 'incoming' telephone number . . . [but] the custom label that was created before any incoming call occurs." With respect to structure "while the microprocessor of the [patent-in-suit] is programmed to operate in two alternative modes and to always display the incoming telephone number, the algorithm of the iPhone’s display device operates in three alternative modes and only sometimes displays the incoming telephone number. Given these substantial differences, no reasonable jury could find literal infringement."

Figa v. Apple Inc., 1-08-cv-10304
(MAD September 21, 2009, Report & Recommendation)
(Dein, M.J.)

Research Funding Agreement Granting "Unrestricted Rights" to "Results of Research" Did Not Convey License to Resulting Patent

Research funding agreements granting Intel "unrestricted rights at no cost to the results of [the funded] research" was vague with respect to the patent rights conferred to Intel, requiring consideration of extrinsic evidence to interpret the agreement. Considering such evidence, the court granted plaintiff's motion for summary judgment on Intel's express license defense, concluding: "All the parties’ dealings both before and after the [research funding agreements] indicate that the parties never intended that the agreements provide defendant an express license in intellectual property developed during the research period funded. No reasonable jury could find otherwise."

Wisconsin Alumni Research Foundation v. Intel Corp.,
3-08-cv-00078 (WIWD September 17, 2009, Order) (Crabb, J.)