“Content Dependent Data Decompression” and “Content Independent Data Decompression” Deemed Indefinite and Lacking Written Description

The court granted defendants' motion for summary judgment of invalidity of two of plaintiff's data compression patents for indefiniteness and lack of written description because the claims were in conflict with the process described in the specification. "The terms 'content dependent data decompression' and 'content independent data decompression' are undefined and meaningless. . . . While content dependency and independency have a great deal to do with the compression claims in the inventions, they lose all meaning once the encoding process has occurred and the descriptor is appended. All that matters from that point forward is that the encoder was used -- not the method for its selection (i.e., not the content on which the encoder selection was based). Simply put, decompression has everything to do with the algorithm used at the front-end compression and nothing to do with the content on which the selection of that algorithm was based. That presents a mind-twisting conundrum regarding the meaning of the terms at issue -- i.e., a conundrum that 35 U.S.C. § 112 was designed to prevent."

Realtime Data, LLC d/b/a IXO v. Morgan Stanley, et. al., 1-11-cv-06696 (NYSD June 27, 2012, Order) (Forrest, J.).

Samsung Enjoined From Selling Galaxy Tab 10.1

On remand, the court granted plaintiff's motion for a preliminary injunction precluding infringement of its design patent by defendants' Galaxy Tab 10.1 tablet computer. The court previously denied a preliminary injunction in part because defendant raised a substantial question of validity. On appeal, however, the Federal Circuit reversed the court's finding as to invalidity and remanded for consideration of the balance of hardships and public interest factors. On remand, the court found the balance of harms and public interest weighed in favor of an injunction. With respect to the balance of harms, the court explained: "[A]lthough [defendant] will necessarily be harmed by being forced to withdraw its product from the market before the merits can be determined after a full trial, the harm faced by [plaintiff] absent an injunction on the Galaxy Tab 10.1 is greater. [Plaintiff's] interest in enforcing its patent rights is particularly strong because it has presented a strong case on the merits. This Court previously found the Galaxy Tab 10.1 to be substantially similar 'in the eyes of the ordinary observer' to the [design patent-in-suit]. Indeed, the Court noted that the Galaxy Tab 10.1 is 'virtually indistinguishable' from [plaintiff's] iPad and iPad 2. . . . [Defendant's] concern over the losses suffered as a result of an injunction cannot overcome [plaintiff's] showing. This is particularly true in light of the fact that (1) there was some evidence that [defendant] altered its design to make its product look more like [plaintiff's], and (2) [plaintiff] will be required to post a bond in the event that this injunction was wrongly issued."

Apple Inc. v. Samsung Electronics Co. Ltd., et. al., 5-11-cv-01846 (CAND June 26, 2012, Order) (Koh, J.).

Initial Rejection During Reexam Based on Withheld Reference Does Not Establish Materiality for Inequitable Conduct

Following an evidentiary hearing, the ALJ determined that one of complainant's polyimide film patents was not unenforceable for inequitable conduct where the withheld reference was not material. "[T]he brief description of [the Japanese prior art reference] in the specification was not a sufficient disclosure to the PTO. . . . [Complainant] did not provide a full copy of the reference, or any sort of translation of the reference, to the PTO. . . . Still, I do not find that [the reference] is material under the 'but-for' materiality standard. . . . Even though the examiner has issued an initial rejection of claim 1 in the reexamination based on the combination of [the Japanese reference and another], I do not find that this is conclusive evidence of materiality. This was only an initial rejection, and is in no way a final determination from the PTO. There is still a possibility that claim 1, as currently written, will be allowed over the combination of [the references]. Therefore, the initial rejection in reexamination is not sufficient evidence to demonstrate that the PTO would not have allowed the claims had it been aware of [the Japanese reference]."

Polyimide Films, Products Containing Same, and Related Methods, 337-TA-772 (ITC June 11, 2012, Order) (Rogers, ALJ).

Judge Posner Denies Injunction to Apple and Motorola Due to Failure of Proof as to Damages

Following the court's rulings in limine excluding the testimony of the parties' various damages experts and orders granting summary judgment as to the parties' claims for damages, the court also denied the parties' motions for injunctive relief. "The grant of an injunction is not an automatic or even a presumptive consequence of a finding of liability, either generally or in a patent case—in fact the Supreme Court has held that the standard for deciding whether to grant such relief in patent cases is the normal equity standard. eBay Inc. v. MercExchange, L.L.C., supra, 547 U.S. at 391–92; see also Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1351–52 (Fed. Cir. 2009). And that means, with immaterial exceptions, that the alternative of monetary relief must be inadequate. . . . [Here] neither party is entitled to an injunction. Neither has shown that damages would not be an adequate remedy. True, neither has presented sufficient evidence of damages to withstand summary judgment—but that is not because damages are impossible to calculate with reasonable certainty and are therefore an inadequate remedy; it’s because the parties have failed to present enough evidence to create a triable issue. They had an adequate legal remedy but failed to make a prima facie case of how much money, by way of such remedy, they are entitled to. That was a simple failure of proof."

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

Parties in Twelve “Serially” Filed Cases Ordered to Submit Comprehensive Briefing on Consolidation and Other Tools to Alleviate “Administrative Difficulties” Created by New Joinder Provision of AIA (35 U.S.C. § 299)

The court instructed the parties in 12 cases filed by the same plaintiff to be prepared to discuss at the Scheduling Conference (and to address in their Joint Case Management Statements) possible consolidation and other tools to alleviate the "administrative difficulties" caused by the new joinder provisions of the Leahy-Smith America Invents Act (to be codified at 35 U.S.C. § 299). "[I]n light of the new joinder provision . . . the Court has experienced an increase in 'serially' filed cases, i.e., separate cases involving the same patent(s) filed near in time naming different individual defendants. Such cases present administrative difficulties for the Court, and the above-captioned case(s) is such a case. As the Court considers how to most efficiently handle these cases, the parties should be prepared to provide input at the combined scheduling conference regarding, at a minimum, the following issues: (1) other than common patents, what factors (and facts) can create common issues regarding infringement, both generally and specifically to the above-captioned cases; (2) is consolidation for pretrial under Federal Rule of Civil Procedure 42 a viable and efficient means of alleviating the administrative difficulties of serially filed cases on the Court while still serving the interests of the parties; (3) if the Court consolidates such cases for pretrial, how should the individual trials be structured, e.g., validity trial with all defendants, followed by separate infringement trials; (4) what effect, if any, do pending 1404(a) motions for transfer have, and when and how should they be determined; (5) absent consolidation, what other tools can the Court and/or parties use to promote judicial efficiency and alleviate the administrative difficulties on the Court; and (6) whether these cases should proceed with the combined claim construction hearing already scheduled . . . or at a later date."

TQP Development, LLC v. Priceline.com, Inc., 2-12-cv-00054 (TXED June 21, 2012, Order) (Craven, M.J.).

Defendant Not Liable for Subsidiary’s Infringing Importation Absent Proof of Defendant’s Control Over Importation Activities

Following a bench trial, the court found that defendants did not infringe plaintiff's intraluminal stent graft patent under 35 U.S.C. § 271(g) because a nonparty foreign subsidiary of a defendant -- and not one of the named defendants -- imported the accused product. "[The nonparty subsidiary] appears to be a subsidiary of [a named defendant]. However, the exact structure of the company and control of divisions is something that was not argued by either party. . . . Since the evidence before the Court makes clear that [the nonparty foreign subsidiary] is the actual importer in this case, the question is whether one of the named defendants can be found to be vicariously or jointly liable because they 'controlled' or owned [the foreign subsidiary]. . . . [The evidence] support[s] the conclusion that [a named defendant] ‘controlled and directed’ [the foreign nonparty subsidiary] subassembly manufacturing of the [accused product]. However . . . it is not the manufacturer but the importer who is liable under [35 U.S.C. § 271(g)]. Thus, if the Court is to apply joint infringement or vicarious liability to Section 271(g) infringement, it appears it must also find evidence that [the named defendant] or one of the other named defendants, directed or controlled the actual importing activity of [the nonparty foreign subsidiary]. . . . The Court finds that the evidence submitted at trial is simply insufficient to support such a conclusion. [The nonparty foreign subsidiary] is the entity listed on all shipping contracts admitted during trial. If the Court were to draw a contrary conclusion and find that one of the named defendants 'directed or controlled' this importing/shipping activity, it would be a mere assumption."

W.L. Gore & Associates, Inc. v. Medtronic, Inc., et. al., 2-10-cv-00441 (VAED June 18, 2012, Order) (Davis, J.).

Inequitable Conduct Pleading Alleging False Statement by an Individual or “One or More” Unidentified Individuals is Insufficient to State a Claim

The court granted plaintiff's motion to dismiss defendant's inequitable conduct claims for failure to state a claim because the allegations concerning the identity of the person allegedly making false statements were too vague. "[Defendant's] allegations that [a certain individual] was [plaintiff's] 'officer or employee' and that he 'knew or should have known' of the prior sales and prior art fall short of concretely alleging that he actually knew of the invalidating information. These scant allegations are further diluted by the qualifiers that either [he], or 'one or more' of the other inventors, knew about the prior sales and art and their materiality. . . . Dropping [one individual's] name in the scrum of '[plaintiff's] personnel including at least [that individual] or one or more of the other individuals listed as an inventor' fails to meet the pleading standard for 'who' deceived the PTO."

XpertUniverse Inc. v. Cisco Systems Inc., 1-09-cv-00157 (DED June 19, 2012, Order) (Andrews, J.).