Jury Finds Claims Drafted To Cover Infringing Product Not Infringed And Lacking Written Description

At trial, the jury heard argument that plaintiff specifically drafted three claims of the patent-in-suit to cover defendant's artificial lumbar disc devices. At plaintiff’s request, the court instructed the jury that "there is nothing improper in filing a patent application for the purpose of obtaining a right to exclude a known competitor's product from the market." Nevertheless, the jury found (i) that plaintiff failed to prove that the accused devices "include all requirements of each [asserted] claim of the [patent-in-suit]," and (ii) that defendants proved "by clear and convincing evidence that the specification of the [patent-in-suit] does not contain an adequate written description supporting [the independent claim on which the other two asserted claims depend]."

Synthes (USA) v. Spinal Kinetics Inc., 5-09-cv-01201 (CAND December 13, 2011)

Failure to Allege Specific Facts or Statutory Provision Supporting Invalidity Renders Pleading Insufficient

Plaintiff's motion to dismiss defendant's invalidity counterclaims for failure to state a claim was granted. "[T]he plaintiff in [McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir. 2007)] described how the defendant infringed the patent, whereas [defendant] does not state any facts supporting why [plaintiff's] Asserted Patents are invalid. Second, unlike the plaintiff’s reliance on a specific statute in McZeal, [defendant] relies on all of the United States patent laws, 'including one or more of 35 U.S.C. §§ 101-103 and/or 112.' Taken together, unlike in McZeal, [defendant] does not allege that [plaintiff's] Asserted Patents are invalid for any specific reason or under any certain statutory provision."

Cleversafe, Inc. v. Amplidata, Inc., 1-11-cv-04890 (ILND December 20, 2011, Order) (Kocoras, J.)

No Direct Infringement Where Steps of Method Claim Are Performed Outside the United States

Defendants' motion for summary judgment of noninfringement of plaintiff's wireless device management patent was granted as to direct infringement. "Plaintiff must show that Defendants actually used the BES software within the United States in a way that directly infringes the patent-in-suit, i.e., in a way that practiced each step of the patented method within the United States. The Court finds that, based on the undisputed facts, Plaintiff cannot establish that Defendants performed either the 'establishing a mailbox' or 'placing a command for the wireless device in the mailbox at the server' within the United States. . . . [B]ecause the only alleged 'mailbox' resides outside the United States, Defendants do not practice the 'establishing a mailbox' or 'placing a command for the wireless device in the mailbox at the server' steps of Claim 1 within the United States."

Mformation Technologies, Inc. v. Research in Motion Limited, et. al., 5-08-cv-04990 (CAND December 19, 2011, Order) (Ware, J.)

Inventor/Attorney’s Law Firm Disqualified to Serve as Plaintiff’s Counsel

The court granted defendant's motion to disqualify plaintiff's counsel because an attorney at plaintiff's firm was an inventor of the patents-in-suit and would be a key trial witness. "[The inventor/attorney] does not fit the role of 'lawyer-litigant-witness' as contemplated by [Bottaro v. Hatton Associates, 680 F.2d 895 (2d Cir. 1982)] because [the inventor/attorney] is not a litigant. As a result, [his] personal interest in choosing [his firm] as counsel is lessened. . . . In this case, while [the inventor/attorney] is the managing member of [plaintiff], he is not a party litigant. The court concludes that [his] interest will not be clear to the jury, and he will more likely be viewed by the jury as an attorney in plaintiff counsel’s firm, not as the plaintiff in the case."

WhitServe LLC v. GoDaddy.com, Inc., et. al., 3-11-cv-00948 (CTD December 15, 2011, Order) (Hall, J.)

Multiple Withdrawals of Plaintiff’s Counsel Warrants Dismissal for Failure to Prosecute or $100K Sanction

Where a corporate plaintiff was without counsel after withdrawal of three sets of attorneys, the court ordered that it would dismiss plaintiff's cases for failure to prosecute unless plaintiff retained new counsel within a month and paid $100,000 as a financial sanction to compensate defendants for expenses incurred during the delay. "The record is clear that the Plaintiff is personally responsible for its lack of counsel. Plaintiff may or may not be able to pay counsel. Plaintiff claims to have funds but to not be able to get to them. It's clear that Plaintiffs principal is a difficult personality who has clashed with multiple well-respected attorneys and law firms, and is not good about following the directions of the Court. When the various law firms and lawyers have all moved to withdraw for irreconcilable differences, it is the responsibility of the Plaintiff. The only reasonable interpretation of the cryptic withdrawal motion of the last set of attorneys is that the Plaintiff reneged on some financial arrangement. The prejudice to the defendants arises from the delay. . . . It does not make sense to me that if new counsel do enter an appearance [by the deadline next month], the case should just go on as if the last six-to-eleven months had not happened. An intermediate sanction that would allow the case to continue is a financial one. . . . Thus, the Court is conditioning continuance of this litigation on the payment of sanctions, and will require the deposit of $100,000 into the Clerk's Office by [the deadline]. . . . If [defendants'] expenses are less than $50,000 for either or both of the two defendants, any excess funds will be returned."

WebXchange Inc. v. Dell Inc., 1-08-cv-00132 (DED December 15, 2011, Order) (Andrews, J.)

Public Interests Weigh Against Issuance of Preliminary Injunction Impacting Defendants' Participation in Economic Development Project

The court denied plaintiffs' motion for a preliminary injunction in part because the public interest weighed against injunctive relief. A defendants' participation in a major public works project would be affected. According to [the] State Senate President . . . the Paulsboro Project will be 'the largest economic development project that Gloucester County has ever undertaken . . . . [and] is a great opportunity to create jobs, and economic vitality in Paulsboro and all of the towns surrounding this region.'. . . Specifically, the Port is projected to create 2,000 jobs and about $12 million per year in tax revenues. Therefore, the public interest weighs in favor of denying the preliminary injunction."

Weeks Marine, Inc. v. TDM America, LLC, 2-11-cv-03850 (NJD December 14, 2011, Order) (Salas, M.J.)

Pleading Of Inequitable Conduct Intent To Deceive Requires Only Facts From Which It Is Plausible -- Not The Single Most Reasonable Inference --

That The Applicant Had An Intent To Deceive

The court granted defendants' motion to dismiss plaintiff's inequitable conduct claims even though the court disagreed with the pleading standard for intent to deceive argued by defendants. "[Defendant] argues that in order to survive a motion to dismiss, [plaintiff] must plead facts from which 'the specific intent to deceive must be the ‘single most reasonable inference able to be drawn from the evidence.''. . . While the Federal Circuit obviously intended to curb the number of inequitable conduct defenses asserted by accused infringers when it tightened the inequitable conduct standard, the Federal Circuit did not express the desire to adjust the standard for pleading that defense so severely. . . . In order to survive dismissal, the accused infringer must allege facts from which it is plausible that the applicant had an intent to deceive. The inference need not be the most reasonable inference, but merely a reasonable inference beyond the mere possibility that the applicant had an intent to deceive."

Human Genome Sciences Inc., et. al. v. Genentech Inc., et. al., 2-11-cv-06519 (CACD December 9, 2011, Order) (Pfaelzer, J.).

The magistrate judge recommended denying plaintiff's motion to dismiss defendant's inequitable conduct claims and rejected plaintiff's argument that Therasense, Inc. v. Becton, Dickinson, and Co., 649 F.3d 1276 (Fed. Cir. 2011), changed the pleading standard for inequitable conduct. "[Plaintiff] posits that inequitable conduct pleadings must, when taken as true, be 'sufficient to require a finding of deceitful intent in light of all the circumstances.' The Federal Circuit recently reiterated that, even after Therasense, all that is required at the pleading stage is a plausible inference of deceptive intent. . . . [A] pleading that does not show but-for materiality or that bases intent solely on the materiality of the withheld reference would be not survive the pleading stage. However, it does not follow that the pleadings must show by clear and convincing evidence that the patentee had the specific intent to deceive the PTO, i.e., that the specific intent to deceive is the single most reasonable inference able to be drawn."

EON Corp. IP Holdings, LLC v. T-Mobile USA, Inc., et. al., 6-10-cv-00379 (TXED December 13, 2011, Order) (Love, M.J.)