Voluminous Petition and Supporting Exhibits Warrant Denial of Inter Partes Review

The Board denied institution of inter partes review of a digital rights management patent because the petition and supporting exhibits were too voluminous to permit a just, speedy, and inexpensive resolution of the proceeding. "The Director requires us to apply our trial rules 'to secure the just, speedy, and inexpensive resolution of every proceeding.' 37 C.F.R. § 42.1. No such proceeding could be secured with the record presented to us by Petitioner. . . . The [petitioner's expert's] declaration is 342 pages, includes voluminous information not relevant to this Petition, and contains numerous self-citations. The Petition includes sixty-one exhibits totaling 30,298 pages. Petitioner asserts that all exhibits are relied upon in the Petition. Fifty-one of the exhibits, however, are not cited in the Petition. The Office Patent Trial Practice Guide cautions that petitioners should 'avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.' The Petition widely misses that mark."

Petition for Inter Partes Review by Apple Inc., IPR2015-00356 (PTAB June 26, 2015, Order) (Perry, APJ)

Track Abuse of Process Decisions in the PTAB

The decision reported here is the latest in a series of PTAB decisions addressing accusations that hedge fund Hayman Credes Master Fund L.P. (under the name the Coalition for Affordable Drugs) has abused the IPR process by initiating IPRs against pharmaceutical companies while taking short positions on those companies’ stocks. The underlying motions cite 37 C.F.R. § 42.12 as a basis for imposing sanctions, including dismissal of the IPR proceedings. To track the PTAB’s rulings on the motions, click here, then click “create alert” at the bottom of the page.

PTAB Authorizes Motion for Additional Discovery Concerning Possible Abuse of Process by the Coalition for Affordable Drugs

The Board granted the patent owner's request to file a motion for additional discovery concerning possible abuse of process by two real parties in interest. "[The] Patent Owner requests two non-public offering documents for [two named funds] both of which have been identified as real parties-in-interest in these proceedings. Patent Owner asserts that the documents will disclose the mandates of the funds, which likely will provide details as to the purpose of funds. In particular, Patent Owner asserts that the stated mandates will further explain a principal purpose of the funds, which is to take short stock positions against pharmaceutical companies. Patent Owner contends that this information will support its position that the filings of the Petitions are an abuse of process or an improper use of the proceeding under 37 C.F.R. § 42.12. . . . In light of the narrowly tailored request for specific documents, we grant Patent Owner’s request and authorize the filing of a motion for additional discovery."

Petition for Inter Partes Review by Coalition For Affordable Drugs V LLC, IPR2015-01086 (PTAB June 25, 2015, Order) (Hulse, APJ)

Appeal Need Not be Independently Exceptional to Justify § 285 Attorney Fee Award

The court partially granted defendant's motion for supplemental attorneys fees under 35 U.S.C. § 285 for fees incurred defending plaintiff's appeal. "The Court previously determined that this case was exceptional. [Plaintiff] argues that this is insufficient to award fees for the appeal . . . . [W]hile it is true that an award of appellate fees is not automatic upon an unsuccessful appeal from a § 285 award, neither must the appeal be independently exceptional to justify such an award. . . . [Plaintiff] brought a meritless case and then extended that case, and [defendant's] defense costs, via the appeal. . . . [T]he Court awards Defendant its fees on appeal, because doing so is necessary to fully compensate Defendant for the defense of a meritless case. The Court does not find that the appeal was independently exceptional. To be clear, the Court is not here applying an automatic rule in which appellate fees must be granted if an exceptional case finding is affirmed on appeal . . . ."

Action Star Enterprise, Co. Ltd. v. KaiJet Technology International, Limited, et al, 2-12-cv-08074 (CACD June 24, 2015, Order) (O'Connell, J.)

Analytics: Create Your Own "Motion Success" Chart

Docket Navigator has a new feature available that makes it possible to create your own customized charts and graphs with just a few clicks! If you’ve ever wanted to create a chart showing how many motions of a certain type are granted in a specific court, or by a specific judge, that ability is here and within your reach.

Docket Navigator’s new Analytics Motion Success page will take your filters (motion type, court, judge, etc.) and create a chart that allows you to quickly and easily display and analyze your results. The chart will display the grant rates in both numbers and percentages, and it also links back to the underlying data so you can read the court orders yourself.

Sample search showing filters and the chart:

With Docket Navigator’s Motion Success chart, you don’t have to wait to have a PDF of the results sent to you. You can create your own PDF of the results on the fly, ready for sharing with your clients or litigation team in mere seconds!

Check out the video for more detailed instructions. If you are not a current Docket Navigator subscriber, email us to request a free password to try out the Analytics!

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Failure to Address Market Elasticity Supports Summary Judgment of No Lost Profits

The court granted defendant's motion for summary judgment that plaintiff was not entitled to lost profits damages because plaintiff did not address market elasticity. "In constructing a hypothetical 'but for' market for the purposes of a lost profits analysis, '[a]ll markets must respect the law of demand,' which counsels that 'consumers almost always purchase fewer units of a product at a higher price than at a lower price, possibly substituting other products.' The undisputed record shows that during the relevant period [plaintiff's] product prices were between 194% to 819% higher than [defendant's]. [Plaintiff's expert] nevertheless assumes that [plaintiff's] products are perfect substitutes for [defendant's] products, thereby allowing all [defendant's] sales to be attributed to [plaintiff]. Critically, he did no serious investigation . . . to evaluate the validity of his assumption. . . . [T]he Federal Circuit held that where the price disparity between the infringer’s products and the patentee’s products was only 73 percent, the disparity was enough to dispel the notion that the patentee would have been able to capture all of the infringer’s sales. . . . [T]he price disparity between [the parties'] products is far greater, and customer testimony is clear that price sensitivity was a key concern in choosing a product."

Good Technology Corporation et al v. MobileIron, Inc., 5-12-cv-05826 (CAND June 23, 2015, Order) (Grewal, M.J.)

Reasonable Royalty Methodologies Deemed Unreliable

Reasonable royalty experts are frequently challenged for applying unreliable methodologies. Successful challenges are less common. Since 2008, U.S. district courts have issued 198 orders on motions in limine and motions to strike reasonable royalty expert reports for applying unreliable methodologies. The courts completely denied 88, partially denied and partially granted 66, and completely granted 32.

To view the 32 granted orders, click here. To view all 198 orders, click here and remove the “Result of motion” filter shown at the top of the page. To limit the search result to a specific judge or court, add a filter shown on the left side of the page.