“Overreaching” Expert Report Stricken With no Opportunity to Amend

The court granted defendant's motion to strike the report of plaintiff's damages expert for improperly relying on the entire market value rule and denied plaintiff the opportunity to submit an amended report. "Over the course of many years and more than a dozen patent trials, the undersigned judge has concluded that giving a second bite simply encourages overreaching on the first bite (by both sides). . . . [T]he trial date is only four days away and the parties and the Court have built their calendars around that date. To start over with a new royalty analysis would impose prejudice on the defense as well and disrupt the Court’s calendar, which is burdened with other trials set far into the future. Possibly, plaintiff can cobble together a royalty case based on other disclosed witnesses and evidence. Possibly not. If not, it is a problem clearly of plaintiff’s own overreaching and it will not be allowed a second bite at the apple."

Network Protection Sciences, LLC v. Juniper Networks, Inc., et. al., 3-12-cv-01106 (CAND September 26, 2013, Order) (Alsup, J.)

Representative Claim Charts Deemed Insufficient Absent Proof That Charted Products are Representative

The court granted defendant's motion to compel further infringement contentions because plaintiff failed to show that claim charts for 7 accused products were representative of all 101 accused products. "[Defendant] argues that [plaintiff's] representative claim charts are insufficient because they identify the allegedly infringing features of only 7 of the 101 products accused of infringement, and fail to explain why these 7 products are representative. . . . [Plaintiff] has failed to show how the seven claim charts are representative of the Accused Instrumentalities as a whole. In its infringement contentions, it merely states its belief that these products are infringing, without providing any support for its belief. . . . While the Court is sensitive to [plaintiff's] concerns about the expense of reverse engineering over 100 products, it must provide more evidence to show that these products are representative."

Bluestone Innovations Texas LLC v. Epistar Corp., et. al., 3-12-cv-00059 (CAND September 25, 2013, Order) (Illston, J.)

Tardy Request for Profitability Discovery Via 30(b)(6) Deposition Denied

The court denied defendants' motion to compel plaintiff to produce a 30(b)(6) witness for deposition regarding profitability and license agreements. "Defendants contend that profitability is relevant to commercial success, which is a secondary indication of obviousness. . . . While the Court agrees that profitability is at least marginally relevant to the commercial success analysis in the present case, discovery of such information through Rule 30(b)(6) deposition testimony would be unduly burdensome at this stage of the case. Defendants allowed more than a year to elapse prior to filing the present application. Moreover, Defendants did not seek such information in written discovery, further compounding the burden on [plaintiff]."

Warner Chilcott Company, LLC v. Mylan Inc., et. al., 3-11-cv-06844 (NJD September 24, 2013, Order) (Arpert, M.J.)

Remittitur Denied and JMOL of Willfulness Granted on $1.17 Billion Verdict

Following a $1.169 billion jury verdict, the court denied defendant’s motion for new trial or remittitur and granted plaintiff’s motion for a finding of willful infringement. "The evidence at trial clearly and convincingly shows that [defendant] had knowledge of the patents-in-suit at the time of infringement by [11 years ago] and that the very people who designed the Accused Technology knew of the patents. . . . Despite knowing about the patents-in-suit . . . [defendant] made little effort to determine whether it was infringing these patents. [Defendant's engineers] all state that they decided not to read the patent claims, even though email correspondence indicates that both were aware that [plaintiff's employee] had patented his algorithm. If believed, this behavior is a clear sign they disregarded a high likelihood of infringement. . . . [Defendant] is in its current predicament because it deliberately undertook a series of strategic risks. It took the risk of incorporating technology into its products that it knew might have been covered by [plaintiff's] Patents. . . . Its trial team took the risk of taking this case to trial, despite repeated efforts to mediate this case, and knowing full well the size of the possible award. . . . Now, [defendant] looks to the courts to relieve it from the damages award it faces from taking those risks. . . . [I]t is the undersigned’s impression as a Judge and former trial lawyer that [defendant's] bad facts and even worse litigation strategy were fatal to its cause. . . . [Plaintiff] presented three extremely qualified and competent experts, each of whom did an excellent job explaining their opinions and pointing the jury to the factual proof underlying their opinions. On the other hand, [defendant] focused on attacking [plaintiff's] witnesses instead of presenting a cohesive defense based on its witnesses.”

Carnegie Mellon University v. Marvell Technology Group, Ltd., et. al., 2-09-cv-00290 (PAWD September 23, 2013, Order) (Fischer, J.)

Withdrawing Claims Does Not Divest Court of Jurisdiction to Grant Summary Judgment of Noninfringement

The court granted defendant's motion for summary judgment of noninfringement as to plaintiff's on-line services patents where plaintiff dropped the asserted claims of that patent. "[Plaintiff] earlier dropped the asserted claims of the [previously asserted patent] and now provides no theories of infringement related to [that patent]. Thus, [plaintiff] cannot meet its evidentiary burden. [Plaintiff] argues that the Court cannot grant summary judgment over unasserted claims because the Court does not have jurisdiction over claims that have been voluntarily withdrawn. The parties have failed to come to an agreement regarding a stipulation of dismissal of the [patent-in-suit's] claims, so the Court believes it still has jurisdiction over claims relating to this patent. As there is no evidence to support a finding of infringement of the [patent], the Court will grant summary judgment of non-infringement."

Personalized User Model LLP v. Google Inc., 1-09-cv-00525 (DED September 20, 2013, Order) (Stark, M.J.)

Nebraska AG’s Cease & Desist Order Does Not Preclude Counsel from Representing Plaintiff in Federal Litigation

The court granted in part plaintiff's motion for a preliminary injunction to prevent defense counsel from enforcing a cease and desist order issued by the Nebraska Attorney General prohibiting plaintiff's counsel "from initiating new patent infringement enforcement efforts within the State of Nebraska." "During the hearing, the Court questioned counsel for the Nebraska Attorney General. Counsel conceded that this court has complete and exclusive jurisdiction over patent cases. He further conceded that the cease and desist order is not intended to keep [plaintiff's counsel] from representing [plaintiff] in this case or a case in any other jurisdiction. He also agreed that [plaintiff's counsel] can pursue any of the prospective infringers that have already been identified and can file suit against any newly identified potential infringers. Counsel for the Nebraska Attorney General stated that the cease and desist order only prohibits [plaintiff's counsel] from sending out letters to potential new infringers. With these concessions, the Court will rule that [plaintiff's counsel] can file an appearance in this case or any other federal cases without running the risk of violating the State of Nebraska Attorney General’s cease and desist order. Further, [plaintiff's counsel] may proceed to prosecute their cases, including all discovery, as it would in any other lawsuit." The court stated that a later order would address "whether this court has jurisdiction to determine the constitutionality of the cease and desist order."

Activision TV, Inc. v. Pinnacle Bancorp, Inc., 8-13-cv-00215 (NED September 19, 2013, Order) (Bataillon, J.)

Despite Non-Public Nature of Operating Room, Surgical Procedure May Qualify as Public Use

The court denied plaintiff's motion for summary judgment that its nerve stimulation patents were not invalid due to public use under 35 U.S.C. § 102(b) based on surgical procedures. "[Defendant] admits that 'medical procedures' are 'inherently non-public.' As a matter of common sense, an operating room is not in the 'public domain' and freely accessible, unlike the hospital itself. But the fact that an actor practices a method alleged to be an invalidating prior use within the confines of an operating room does not necessarily mean the method was not 'accessible to the public.'. . . [A]lthough there is no evidence that non-hospital staff or patients knew of or observed the rapid pacing, [defendant] may be able to show by clear and convincing evidence that the procedures were publicly accessible and not limited by an obligation of confidentiality to the cardiologists. [Plaintiff] does not prove that these individuals were under any obligation of confidentiality, whether implied, express, or ethically imposed."

Medtronic Inc. v. Edwards Lifesciences Corporation, et. al., 8-12-cv-00327 (CACD September 17, 2013, Order) (Selna, J.)