Patent Trial is not a "Popularity Contest"— Positive Publicity Unrelated to Elements in Suit are Excluded from Evidence

The court granted in part the parties' motions in limine to preclude publicity which praises a party or its products. "Apple will not be permitted to present media articles or equivalent publicity praising features of the iPhone or iPad (or the Apple company, Steve Jobs, or Apple products in general) unless they mention (or can be shown to be referring to) claim elements that Apple alleges Motorola infringes or that Motorola argues were anticipated or obvious and that are actually in dispute. If the articles or other publicity do not praise an element in suit, they are irrelevant to any legal issue in the case, and can only confuse the jury. . . . More broadly, I forbid Apple to insinuate to the jury that this case is a popularity contest and that jurors should be predisposed to render a verdict for Apple if they like Apple products or the Apple company or admire Steve Jobs, or if they dislike Motorola or Google. The overall quality of the products involved in the litigation is irrelevant to the legal issues. This prohibition applies mutatis mutandis to Motorola . . ."

Apple, Inc. v. Motorola, Inc., et. al., 1-11-cv-08540 (ILND May 25, 2012, Order) (Posner, C.J.).

Defendants' "Intimidating" Settlement Offers Support Award of Enhanced Damages and Attorneys' Fees

The court granted in part plaintiff's motion for attorneys' fees under 35 U.S.C. § 285 following a jury trial where defendants engaged in bad faith litigation tactics. "Plaintiff contends that Defendants’ litigation tactics reflect an effort to intimidate Plaintiff so that he would not pursue his lawful patent claims. Defendants allegedly attempted to do so by asserting that they would 'not let go of this case' until Plaintiff paid Defendants their attorney’s fees. . . . These settlement offers, combined with intimidating language, are evidence of bad faith litigation tactics. Thus, this evidence supports an award of attorney’s fees."

Jake Lee v. Mike's Novelties, Inc., et. al., 2-10-cv-02225 (CACD May 22, 2012, Order) (Kronstadt, J.).

Judge Posner Excludes Opinion of Plaintiff's Reasonable Royalty Expert for Relying Solely on Plaintiff's Technical Expert to Identify Noninfringing Alternatives

The court excluded the opinions of plaintiff's damages expert as to a reasonable royalty for plaintiff's real-time display patent because the expert based his analysis on information obtained from plaintiff's principal technical expert. "Suppose [the damages expert] had been hired by [defendant] to advise on how at lowest cost [defendant] might obtain the functionality of [the asserted patent at issue] without infringing that patent. Obviously [the damages expert] would not have gone to the patentee for that information! For it would be in the patentee’s interest to suggest a method of inventing around that was extremely costly, because the costlier the invent-around, the higher the ceiling on a reasonable royalty. . . . So. . . imagine this imaginary conversation between [plaintiff's damages expert] and [defendant], which I’ll pretend hired [the damages expert] to advise on how at lowest cost to duplicate the patent’s functionality without infringement: [Defendant]: 'What will it cost us to invent around, for that will place a ceiling on the royalty we’ll pay [plaintiff]?' [Expert]: 'Brace yourself: $35 million greenbacks.' [Defendant]: 'That sounds high; where did you get the figure?' [Expert]: 'I asked an engineer who works for [plaintiff].' [Defendant]: 'Dummkopf! You’re fired.'"

Apple, Inc. v. Motorola, Inc., et. al., 1-11-cv-08540 (ILND May 22, 2012, Order) (Posner, C.J.).

Participation in Standards Setting Organization Did Not Create Implied License or Preclude Injunctive Relief

Following an evidentiary hearing, the ALJ rejected respondent's RAND, implied license, and equitable estoppel defenses. "[W]ith all the patents subject to RAND licensing obligations that may have ever come before the Commission, [respondent] was not able to cite one case in which a section 337 remedy was foreclosed due to the existence of RAND obligations. . . . [Respondent] has cited to no instance in which an executed document such as a letter of assurance sent to an SSO resulted in an implied license. . . . [T]he documents sent to the SSOs by [complainant] explicitly state that no license should be implied. Moreover, the evidence indicates that [complainant] has licensed its patents, including those deemed to be essential to SSO standards, only after negotiations. . . . [Respondent] never explains . . . that it undertook [investment costs] in consideration of [complainant's] communications with the SSOs in which it assumed RAND obligations. [Complainant's] communications to the SSOs may have been misleading . . . but there is no evidence [respondent] relied on any statement by [complainant] to embark on, or continue in, any course of conduct."

Gaming and Entertainment Consoles, Related Software, and Components Thereof, 337-TA-752 (ITC May 10, 2012, Order) (Shaw, ALJ).

End User Agreement Reserving Discretion to Not Provide Accused Service Negates "Direction and Control" Needed for Joint Infringement Claim

The court dismissed for failure to state a claim plaintiff's claim that defendants and end users of Google Voice (an internet telephone service) jointly infringed plaintiff's internet telephone method patent. "Plaintiff contends that the [patent-in-suit] was infringed by multiple parties acting at the direction of cell phone users. . . . Without pleading 'control or direction,' [plaintiff] has not set forth a plausible claim for joint patent infringement. . . . [Plaintiff] alleges that cell phone users enter into subscription agreements with [defendant]. The Plaintiff does not, however, allege that these agreements 'contractually obligate' [defendant] to connect [the accused system's] calls using the [a platform] interface. . . . Indeed . . . [plaintiff] specifically alleges that '[defendant] reserves the right to restrict calls or connections to any telephone in its sole discretion.' . . . Thus, viewing the allegations in the light most favorable to the Plaintiff, [it] has not alleged that cell phone users direct or control the allegedly infringing method."

Selex Communications, Inc. v. Google, Inc., 1-09-cv-02927 (GAND May 11, 2012, Order) (Thrash, J.).

No Settlement Privilege for Discovery Requests

The court granted plaintiff’s motion to reconsider an earlier order directing plaintiff to produce all documents on its privilege log. However, upon reconsideration, the court rejected plaintiff’s assertion of a purported “settlement negotiation privilege derived from Federal Rule of Evidence 408.” “[N]ew federal privileges are not to be created by the courts lightly. Liberal discovery is the general rule. More and more exceptions to this general rule threaten to swallow it. This case, in particular, illustrates the danger of creating new privileges. Both parties here have repeatedly engaged in disingenuous invocation of privileges and exceptions in a show of blatant gamesmanship, abusing the rules of discovery in either an attempt to create delay or to avoid surrendering evidence they know full well should be turned over. They don’t need yet another tool by which to abuse the system. The Court finds no discovery privilege exists regarding settlement negotiations. Admissibility, of course, is an entirely different matter. But if [plaintiff] continues to withhold these documents, it must do so on a basis other than settlement 'privilege.'"

Pactiv Corporation v. Multisorb Technologies, Inc. et al, 1-10-cv-00461 (ILND May 18, 2012, Order) (Leinenweber, J.).

Price Erosion by Copycat Product Causes Irreparable Harm Sufficient for Preliminary Injunction

The court granted plaintiff’s motion for entry of a preliminary injunction enjoining defendant from manufacturing, marketing, and selling its accused products, finding that plaintiff was likely to suffer irreparable harm due to defendant’s infringement of plaintiff’s soil stabilizer patents. “[Plaintiff] is likely to suffer irreparable harm if [defendant] continues selling an infringing product, produced by infringing methods. . . . I am convinced that due to the price erosion of the product, combined with [plaintiff’s] size, [plaintiff] would suffer irreparable harm. . . . [Defendant’s] product is a copycat that appears to have pirated [plaintiff’s] patented technology and product formulation. This gave [defendant] the advantage of selling the same technology and product without investing in research, development, intellectual property, or market development efforts. Thus, [defendant] is able to offer its product to the market at a lower price than [plaintiff]. In contrast, [plaintiff] is seeking to recoup its investments through sales of its [patented] products. . . . I am thus convinced that [plaintiff] will suffer irreparable harm if [defendant] is continued to allow to sell its copycat product."

Encap LLC v. Oldcastle Retail Inc et al, 1-11-cv-00808 (WIED May 18, 2012, Order) (Griesbach, J.)