Counsel’s Ownership Stake in Plaintiff’s Subsidiary Did Not Require Disqualification for Damages Trial

The court denied defendant's motion to disqualify plaintiff's counsel for a new trial on damages based on the lawyer-witness ethics rule where plaintiff's counsel had acquired a 10% stake in plaintiff's subsidiary and the subsidiary's network administrator and paralegal performed work at counsel's direction. "[Plaintiff's counsel's] 10% stake in [plaintiff's subsidiary] is out of line with Connecticut rule of professional conduct 1.8(i). . . . However, the court concludes that this interest, along with other aspects of [counsel's] relationship with [plaintiff's subsidiary], while troubling, do not rise to the level of posing a significant risk of trial taint, especially given that the issue of damages is all that remains to be resolved."

WhitServe LLC v. Computer Packages, Inc. et al, 3-06-cv-01935 (CTD December 26, 2013, Order) (Covello, J.)

Discovery Dispute Typifies "Wasteful Dance Of Two Scorpions Armed With Word Processors"

The court granted in part defendant's motion to compel further interrogatory responses and documents. "Frankly, this motion and [plaintiff's] response typify the wasteful dance of two scorpions armed with word processors, a dance that tends to cast attorneys in disrepute and makes American patent litigation the slowest and most expensive in the world. You folks ought [to] talk cooperatively between yourselves."

Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corporation, 2-12-cv-02108 (TNWD December 5, 2013, Order) (Young, J.)

Claim Construction of Patents-in-Suit in Prior Litigation Precludes Further Construction Absent Convincing Argument

The court ordered the parties to submit additional briefing addressing whether claim construction of the patents-in-suit in a prior lawsuit precluded further construction of those claims. "[B]oth [patents-in-suit] were the subject of a previous patent infringement suit brought by [defendant] against [plaintiff] in this Court . . . . In [the prior lawsuit], the Court held a Markman hearing and, thereafter, set forth its construction of the disputed claim terms of the [patents-in-suit]. Neither party challenged the Court's construction of those terms when appealing its summary judgment decisions to the Federal Circuit. . . . [T]he parties now argue that many of those terms are 'disputed' in the present action. However, neither party's brief addresses or explains why issue preclusion (collateral estoppel) does not apply . . . . Instead, they apparently presume that the Court's previous constructions of [the patents-in-suit] are simply open to review. . . . [N]either party has explained to the Court why its original construction of the claim terms should be revisited at all. Such revision requires the assertion of a convincing argument against issue preclusion."

Ball Metal Beverage Container Corporation v. Crown Packaging Technology, Inc. et al, 3-12-cv-00033 (OHSD December 20, 2013, Order) (Rice, J.)

Plaintiff Counsel’s Pre-Litigation Meeting With Defendant No Basis for Disqualification

The court denied defendant's motion to disqualify plaintiff's counsel where counsel held a client representation meeting with defendant four years ago. "While [counsel] may have offered some initial impressions of the legal issues discussed, he was not called upon to formulate a legal strategy for [defendant] and is unlikely to have gained detailed knowledge of the pertinent facts and legal principles at issue in the instant litigation. As a result, the Court finds that [counsel's] relationship with [defendant] is attenuated and will not presume that he acquired confidential information material to the instant litigation."

IPVX Patent Holdings, Inc. v. 8x8, Inc., 4-13-cv-01707 (CAND December 19, 2013, Order) (Westmore, M.J.)

Deliberate Copying and Litigation Misconduct Warrant Treble Damages Award

Following a jury finding of willful infringement, the court granted plaintiff's motion for treble damages. "The Court finds that [the Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992)] factors favor the award of treble damages here. . . . As to the first Read factor [deliberate copying] . . . Defendants previously marketed Plaintiffs' patented device, and only began renting the infringing device after their business relationship with Plaintiff went sour. Moreover, Defendants' [accused products] came in the same sizes as Plaintiffs, and Defendants presented no design documents or other credible evidence suggesting that they attempted to design around the [patent-in-suit]. . . . Defendants' conduct during the course of this litigation further supports an award of treble damages. Prior to trial, Defendants were sanctioned multiple times by the magistrate for, inter alia, 'baseless' objections to discovery requests, 'deliberate effort[s]' to 'conceal' the infringing devices, failure to search for and produce relevant documents, false and misleading testimony . . . efforts to obstruct the depositions of third-party witnesses, and improper witness coaching."

Briese Lichttechnik Verttriebs GmbH v. Langton, et al, 1-09-cv-09790 (NYSD December 18, 2013, Order) (Conti, J.)

Finding the Litigation History of Judges in Patent Cases with Docket Navigator

With a single click, you can search for judges’ profiles in patent cases across all U.S. district courts: the ITC, the PTAB (IPR and CBM petitions), and the Court of Claims. Your results will include the following, with convenient links to the underlying court (or agency) documents:

• All cases asserting infringement of the patent
• All decisions addressing infringement, validity or enforceability of the patent
• All claim constructions by that judge
• All damages awards and injunctions involving patents by that judge

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Pre-Institution Settlement of IPR Precludes Joinder of Petition Time-Barred by 35 U.S.C. § 315(b)

The Board denied the petitioner's motion for leave to file a motion for joinder with a proceeding that settled one business day before the petitioner filed its petition in the instant proceeding. "Normally, a petition for inter partes review filed more than one year after the petitioner (or the petitioner’s real party-in interest or privy) is served with a complaint alleging infringement of the patent is barred. . . However, the one-year time bar does not apply to a request for joinder. . . This is an important consideration here, because [the petitioner] was served with a complaint asserting infringement of the [] patent more than one year before filing its petition. . . Thus, absent joinder of this proceeding with [another IPR], it appears that [the petitioner's] petition would be barred. . . The Board agrees with Patent Owner that [the petitioner] should not have delayed in filing its petition until after it learned of the settlement, allowing the one-year period under 35 U.S.C. § 315(b) to lapse. By doing so, [the petitioner] took a risk that the inter partes review proceeding would terminate prior to a decision on institution . . . We do not find persuasive [the petitioner's] arguments of prejudice. [The petitioner] made a litigation choice, and now must face the consequences. Because [it] delayed its filing, and [the other IPR] has been terminated, the joinder statute’s prerequisite of an instituted review cannot be met. [Petitioner's] request for joinder is, therefore, denied."

Petition for Inter Partes Review by Fifth Third Bank, IPR2014-00244 (PTAB December 17, 2013, Order) (Giannetti, APJ)