Direct Competition Not Required For Permanent Injunction

The court granted plaintiff's motion for a permanent injunction even though the parties were not direct competitors. "The Court is not aware of any precedent which requires direct competition in any form before an injunction may be granted. [Plaintiff] can still prove irreparable harm in the absence of direct competition. . . . Though [defendant] sells the technology to customers and [plaintiff] licenses its services to companies. . . who then sell the technology to customers, there is still indirect competition. . . . [Defendant's] unlawful infringement unquestionably impedes upon the portion of the market share which [plaintiff's licensee] could have, and thus it impedes on [plaintiff's] ability to introduce its patented technology to the portion of the market that [defendant] controls."

ActiveVideo Networks, Inc. v. Verizon Communications, Inc., et. al., 2-10-cv-00248 (VAED November 23, 2011, Order) (Jackson, J.)

Uniloc Warrants New Damages Trial Despite Lack of Objection

The court granted defendants' motion for a new damages trial following remand even though defendants had not objected to the use of the 25% rule at trial. "Given the widespread acceptance of the 25 percent rule, it would not have been unreasonable for [defendant] to have failed to raise the issue before the Court. . . . [T]he Federal Circuit had implicitly upheld the use of the 25 percent rule prior to [Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011)], and Defendant had no notice that an objection to its use would have been fruitful in light of the Federal Circuit’s previous treatment of the rule. The law does not speak in absolutes and recognizes that a litigant might not be aware of the necessity of making an objection at trial where the great weight of the case law suggests that an objection is not worth making."

Spine Solutions, Inc. v. Medtronic Sofamor Danek, Inc., et. al., 2-07-cv-02175 (TNWD November 23, 2011, Order) (McCalla, J.)

Disclosure of Communications With Prosecution Counsel During Sale of Patent Waives Privilege

Plaintiffs' motion to compel defendant to produce documents from the original patent owner's prosecution counsel was granted based on the patent purchase agreement between the original owner and defendant. "[The original owner] turned over ownership and control of all of those documents it transferred to [defendant]. . ., thereby waiving any attorney-client privilege as to those documents. Because [defendant] 'controls' the [patent] prosecution documents that [prosecution counsel] has in its possession, the documents must be produced under the existing protective order."

HTC Corp., et. al. v. IPCOM GmbH & Co. KG, 1-08-cv-01897 (DCD November 21, 2011, Order) (Collyer, J.)

General Warning to Industry Did Not Create Substantial Controversy Sufficient to Support Declaratory Judgment Claim

The court granted defendants' motion to dismiss plaintiffs' declaratory relief claim for lack of an actual controversy. "[P]laintiffs allege that [defendant] has 'declined to license' to third parties, and that [it] has generally 'warned' the industry that it would not tolerate infringement of the [patent-in-suit]. Unfortunately for plaintiffs, these facts are insufficient to establish an actual controversy under the central lesson of [Innovative Therapies Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377 (Fed. Cir. 2010)]: that a patentee’s actions toward third parties are generally not sufficient to establish declaratory judgment jurisdiction."

Mama Cares Foundation, et. al. v. Nutriset Societe Anonym France, et. al., 1-09-cv-02395 (DCD November 18, 2011, Order) (Lamberth, J.)

"Motion to Behave" Denied Where Counsel Failed to Meet & Confer

The court denied plaintiff's motion for a protective order prohibiting a defense lawyer from participating in future depositions because of abusive behavior. "Both sides encourage the review of deposition DVD after deposition DVD. And yet, remarkably, neither side confronts or even truly acknowledges evidence undermining its preferred conclusion, in textbook examples of what psychologists refer to as 'confirmation bias.' Nor does either side point to even one instance in which it followed [the district judge's] explicit instructions for lead trial counsel to meet in person before imposing on the court what is essentially a motion to behave. . . . These instructions were not optional, and at no point have the parties sought relief from these instructions even after the undersigned reminded them of that opportunity. The court must therefore decline to share the conclusions it has reached about what is depicted in the transcripts and DVDs stacked on the court's desk."

Apple Inc. v. Samsung Electronics Co. Ltd., et. al., 5-11-cv-01846 (CAND November 16, 2011, Order) (Grewal, M.J.)

Undisclosed Trojan Horse Rebuttal Experts Prohibited

The court granted defendant's motion to strike a rebuttal expert report written by a new expert. "The issue presented is whether a new expert who did not serve any opening report may nonetheless make a reply submission attacking the opposition reports served by the other side. Neither party has identified any controlling authority on this point. . . . True, reply reports were not explicitly limited to the authors of the opening reports. The Court thought this was already clear and in twelve years of using this form of case management scheduling order, this is the first time anyone has suggested to the contrary. . . . A party with the burden of proof on an issue should not be allowed to secretly prepare an army of 'rebuttal' experts to attack the opposition reports like Odysseus and the Greeks springing forth from their wooden hideout in Troy."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND November 15, 2011, Order) (Alsup, J.)

Failure to Pay $275,000 in Accrued Attorneys' Fees Does Not Justify Counsel's Withdrawal

Defense counsel's motion to withdraw was denied without prejudice, even though defendant owed counsel more than $275,000, where the only event remaining in the case was a contempt hearing regarding plaintiff's motion to enforce judgment. "The Court is sympathetic to [counsel's] position and acknowledges that $277,749.29 is a significant amount of money. Indeed, that may be even truer for a law firm of only seven attorneys, such as [defense counsel]. The case is so near completion, however, that the Court finds that continued representation by [defense counsel] does not constitute not an 'unreasonable burden.'"

The Walman Optical Company v. Quest Optical Inc., 0-11-cv-00096 (MND November 15, 2011, Order) (Graham, M.J.)