No Deposition of In-House Litigation Counsel

The court granted defendant's motion for protective order to preclude the deposition of its in-house litigation counsel. "[The deponent], though in-house counsel, is unquestionably an active member of [defendant's] litigation team in both the trade dress case and in this patent litigation, and [plaintiff's] request to take her deposition invokes the [Eighth Circuit's] concern of protecting against the discovery of trial or litigation strategy. . . . Information related to the indemnity emails is arguably both relevant and non privileged. However, [plaintiff] failed to prove that no other means exist to obtain the information, and that such information is crucial to its preparation of the case. . . . Further, permitting the deposition of [defense counsel] would require navigating an invisible line between her dealings with business affairs and her role as litigation counsel, and would risk exposing [defendant's] litigation strategy in this case."

McAirlaids, Inc. v. Kimberly-Clark Corporation et al, 7-13-cv-00193 (VAWD October 29, 2014, Order) (Ballou, M.J.)

Novelty Irrelevant to Unpatentability Analysis

The court granted defendant's motion for judgment on the pleadings that plaintiff's event photograph processing patents were invalid for unpatentable subject matter and rejected plaintiff's novelty argument. "The patents in suit merely implement basic computer technology to perform the same process, with computer systems automating much of the work previously done manually: matching the photographs to participants and making the photographs available in a relatively undesirable (low-resolution or watermarked) form for inspection and ordering. . . . [M]oving the selection and ordering of event photographs onto a computer server cannot transform this practice into a patentable invention. . . . [Plaintiff] argues, although 'it may seem commonplace now to search for event photographs on the internet . . . prior to [plaintiff] doing it for sporting event photography [15 years ago], it simply had not been done.' But this is of no moment. 'The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.'”

Peter H. Wolf v. Capstone Photography, Inc. et al, 2-13-cv-09573 (CACD October 28, 2014, Order) (Snyder, J.)

Correction of Obvious Error Saves Patent Claim From Indefiniteness

The court denied defendant's motion for summary judgment that plaintiff's wireless communication patent was invalid as indefinite and granted plaintiff's motion to correct an obvious error in the patent. "During prosecution of [a patent-in-suit] the patent examiner corrected the phrase 'subscribers' to 'subcarriers' in claim 7 to avoid the absurdity of a cellular system where 'subscriber units' are 'allocated' to themselves. Recognizing a similar, but uncorrected, problem in another claim, Plaintiff . . . now asks this court to complete the task. . . . Neither party disputes that the term 'subscriber units' as used in claim 18 is nonsensical because the [patent-in-suit] concerns only the allocation of subcarriers, not subscriber units. . . . Rather than suggesting a different construction, the prosecution history reinforces the conclusion that 'subcarriers' is the only reasonable construction of claim 18’s reference to 'subscriber units.'. . . While [plaintiff] could have and perhaps should have acted more promptly, Defendants cite no case limiting judicial correction under the present circumstances."

Adaptix, Inc. v. Apple, Inc. et al, 5-13-cv-01777 (CAND October 27, 2014, Order) (Grewal, M.J.)

Damages Expert May Not Testify From Memory Concerning Past Transactions Without Producing Documentation

The court granted defendant's motion to exclude the testimony of plaintiff's expert regarding a reasonable royalty because his opinion was based on licenses not produced in discovery and the expert was not permitted to testify about the unproduced licenses from memory. "[I]t is undisputed that [plaintiff's expert] is unable to produce copies of the 'Swiss' and 'Italian' licenses referenced in paragraph 55 of his expert report, or any other licenses to which he more generally refers. . . . [The expert] seeks to testify about the royalty rates paid, or being paid, by certain third-parties, but is unable to produce copies of the licensing agreements to which he refers. . . . [Plaintiff] presents no authority to this court that would allow [its expert] to testify about the terms of the 'Swiss' and 'Italian' licenses without producing copies of them to [defendant], in contravention of the general rule that all supporting facts and data be produced with the expert report."

Ravo et al v. Covidien PLC, 2-11-cv-01637 (PAWD October 24, 2014, Order) (Conti, J.)

Bad Faith Infringement Suit Warrants Doubling of Attorneys’ Fee Award

Following judgment on the pleadings that plaintiff's decision-making patent was invalid as claiming unpatentable subject matter, the court granted defendant's motion for attorneys’ fees under 35 U.S.C. § 285 and doubled the amount of attorneys' fees as a deterrent. "While the primary goal of Section 285 is to compensate parties who have been forced to defend against frivolous and unwarranted suits, it also serves as a deterrent against such litigation. The instigation of a lawsuit brought in bad faith against a defendant causes a severe injury to the defendant that cannot fully be compensated. . . . This litigation was resolved on the merits because this defendant has the financial ability to resist the plaintiff’s pressure and because it chose to fund a defense in court rather than pay an unwarranted, less expensive licensing fee. It appears that none of the other defendants sued by [plaintiff] made that choice. As a result, but for [defendant's] financial resources and resolve, [plaintiff's] predatory behavior would likely have proceeded unchecked. Any award in this action must be substantial enough to deter [plaintiff] from pursuing baseless claims in the manner [plaintiff] used in this case."

Lumen View Technology LLC v. Findthebest.com, Inc., 1-13-cv-03599 (NYSD October 23, 2014, Order) (Cote, J.)

Post-Fact Discovery Amendments to Infringement and Invalidity Contentions Stricken

The court granted defendant's motion to strike plaintiff's amended infringement and invalidity contentions served after the close of discovery. "[Plaintiff] cannot avoid the boundaries of its timely infringement contentions by not disclosing the substance of its doctrine of equivalents and structural equivalents contentions until its Corrected Opening Expert Report. . . . [Defendant] would be prejudiced by allowing [plaintiff] to proceed on its untimely contentions, which would likely lead to loss of the current trial date and the necessity for additional expensive discovery, and could potentially require additional claim construction proceedings. . . . [W]hile the Court does not find [plaintiff] acted in bad faith, it did willfully proceed on timing in conflict with the Court's scheduling order for fact discovery. . . . [W]hile [plaintiff] will lose some 'critical' evidence, it may proceed on its timely-filed contentions."

Fairchild Semiconductor Corporation, et al v. Power Integrations Inc., 1-12-cv-00540 (DED October 22, 2014, Order) (Stark, J.)

Domestic Contract For Foreign Manufacture and Delivery Not An Infringing Act

The court granted defendants' motion for summary judgment of noninfringement of plaintiff's image sensor patents because the accused wafers were not sold in the U.S. "[A]t most, the evidence shows that [defendants'] entities engaged in conduct amounting to domestic contracts for foreign sales — that is, contracts executed in the United States but contemplating strictly foreign manufacture and delivery. Such conduct does not constitute direct infringement because the accused wafers are manufactured and sold outside the United States. . . . In light of the strong presumption that United States patent law does not operate extraterritorially, the Court finds that the place of manufacture and the location of the contemplated sales (i.e., Taiwan) are determinative of direct infringement liability. . . . . Even if the Court accepts [plaintiff's] position that [defendants] negotiated and executed contracts for the sale of the accused wafers in the United States, the contracts contemplated delivery and performance abroad."

Ziptronix, Inc. v. Omnivision Technologies, Inc., et al, 4-10-cv-05525 (CAND October 21, 2014, Order) (Armstrong, J.)