Halo Does Not Disturb Jury Finding of Willfulness​

Following a jury trial, the court denied defendants' motion for judgment as a matter of law that they did not willfully infringe plaintiff's patents in light of the Supreme Court's intervening decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016). "[T]he jury found that [plaintiff] had proven by clear and convincing evidence that Defendants willfully infringed the asserted claims. . . . [A]fter the jury returned a verdict, but before final judgment, the Supreme Court determined that the Federal Circuit’s two-part test for enhanced damages was inconsistent with 35 U.S.C. § 284, repealing [In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007)]. . . . By returning a verdict of willful infringement, the jury found that Defendants acted 'recklessly' . . . and that they 'actually knew or should have known that [their] actions constituted an unjustifiably high risk of infringement of a valid patent.'. . . Because the jury’s finding was made under the higher clear and convincing standard, the Court upholds the verdict and moves to the next stage of the enhancement inquiry."

NobelBiz, Inc. v. Global Connect, LLC, 6-12-cv-00244 (TXED October 27, 2016, Order) (Schroeder, USDJ)

Judge Clark Issues Pretrial Order Precluding Social Media Contact With Jury Pool​

The court issued a pretrial order prohibiting counsel and the parties or their agents from contacting potential jurors. "In order to assist counsel in preparation for voir dire, the court intends to provide a list of potential jurors that will form the venire in this case a few days prior to the start of trial. . . . All attorneys, parties, and their respective employees and agents, including jury consultants, are prohibited from personally or through another sending an access request to the electronic social media platform of any juror or potential juror, including for example a Facebook friend request or an Instagram request to 'Follow' that juror. Other forms of ESM include LinkedIn, Twitter, and Instagram. . . . All attorneys, parties, and their respective employees and agents, including jury consultants, are prohibited from conducting or causing another to conduct any type of investigation by which a juror or potential juror may become aware that his or her ESM is being reviewed or scanned. . . . This of course requires that any individual using ESM to investigate jurors review the terms and conditions, including privacy features, which change frequently, as well as his or her own network settings before investigating jurors on such platforms."

Barry v. Medtronic, Inc., 1-14-cv-00104 (TXED October 26, 2016, Order) (Clark, USDJ)

Attorney's Former Representation of Plaintiff Justifies Disqualification of Defense Counsel​

The court granted plaintiffs' motion to disqualify defense counsel because of the appearance of impropriety. "The current configuration of counsel presents an inescapable appearance of impropriety. . . . The attorney in question worked for 186.7 hours on [plaintiffs'] patent infringement claims and in representing it before the patent office. . . . For over seventeen months during the pendency of this proceeding, the attorney's biographic pages on [defense counsel's] website listed his representation of [plaintiffs] . . . as one of the major accomplishments of his career. How could the plaintiff or an impartial and objective outside observer ignore such a patent appearance of impropriety? . . . [T]he Court finds there is no evidence to suggest that there has been an improper exchange of privileged information. However, such a factual finding does not outweigh the appearance of impropriety. . . . The growth of multi-jurisdictional practice by law firms coupled with the increased mobility of practicing attorneys places added pressure upon law firms to deal with the issues raised in these Motions. However, the traditional and well founded concept of the appearance of impropriety cannot yield to the added expense and inconvenience inherent in the enforcement of longstanding ethical concepts. Judges themselves must not only avoid the appearance of impropriety but also instruct juries to do the same. No less should be expected of the attorneys who practice before the bar of this Court. "

Audio MPEG, Inc. et al v. Dell, Inc., et al, 2-15-cv-00073 (VAED October 25, 2016, Order) (Morgan, SJ)

Coalition for Affordable Drugs Succeeds in Invalidating Gattex Patent Claims​

In a final written decision, the Board found claims of a patent directed to a stabilized formulation of GLP-2 unpatentable under 35 U.S.C. § 103(a). "That the inventors of the ’866 patent discovered that a particular GLP- 2 analog performs best with a certain combination of amino acid and sugar, namely histidine and mannitol, does not persuade us by itself that the subject matter of the claims of the ’866 patent is nonobvious. The preponderance of evidence of record shows that the identification of the optimal sugar and amino acid to add to a formulation for stability purposes was nothing more than routine experimentation. Here, in addition to the disclosures of [a 1999 journal paper] and [U.S. patent '216], we credit the testimony of [petitioner's declarant] and his analysis of publications authored by [patent owner's expert] that describe 'rational' design choices for excipients in lyophilized protein formulations in order to optimize the formulation. . . .Thus, we are not persuaded that this is a case where there were 'numerous parameters' to try so as to support a conclusion of nonobviousness. . . . [T]he use of histidine and mannitol in protein formulation was disclosed in the prior art and the experimentation needed to confirm the successful application with GLP-2 analogs was 'nothing more than [the] routine application of a well-known problem-solving strategy, . . . "the work of a skilled [artisan], not of an inventor."'"

Petition for Inter Partes Review by Coalition for Affordable Drugs II, LLC, IPR2015-01093 (PTAB October 21, 2016, Order) (Snedden, APJ)

Delivery Notification Patent Ineligible Under 35 U.S.C. § 101​

The court denied plaintiff's motion to reconsider an earlier order granting defendant's motion for judgment on the pleadings that plaintiff’s delivery notification system patent encompassed unpatentable subject matter. "[Plaintiff] argues that the Court engaged in impermissible hindsight bias 'by viewing the [patent] in light of the ubiquity of wireless messaging technology today,' instead of determining whether the limitations in the patent were well understood, routine, or conventional in the art in 1996, when the patent was filed. . . . [Plaintiff] misreads and mischaracterizes the Court’s holding that [plaintiff] has 'patented a method of delivery notification that is the equivalent of a method implemented ‘through a computer’ or ‘over the internet.’'. . . . The Court is permitted to take note of 'fundamental economic concepts and technological developments' when making a § 101 determination, observes that sending wireless page messages was well-known in 1996. . . . The patent sets forth steps by which conventional technologies (wireless paging systems) do conventional things (relay data and send messages through, in essence, a communications center) to achieve an abstract aim: notifying a customer if and when their package has been delivered."

Mobile Telecommunications Technologies, LLC v. United Parcel Service, Inc., 1-12-cv-03222 (GAND October 21, 2016, Order) (Totenberg, USDJ)

CEO’s Indirect Financial Interest in Litigation Does Not Preclude Expert Testimony​

The court denied defendant's motion to preclude plaintiff's CEO from providing expert testimony due to his financial stake in the case. "[Defendant] moves to preclude [plaintiff's CEO] from testifying as an expert witness, based on his 'blatant and direct financial interest in the outcome of this case.'. . . [Defendant] analogizes this situation to one in which a retained expert will receive greater compensation depending on the outcome of a case, a situation in which some courts preclude experts from testifying. . . . [Defendant's] clever argument has some appeal, but ultimately fails. . . . Any recovery in this case will initially go to [plaintiff], not [its CEO]. . . . In the end, the Court concludes that [the CEO's] indirect financial interest in the outcome of the litigation . . . can be handled appropriately on cross-examination."

Andover Healthcare, Inc. v. 3M Company, 1-13-cv-00843 (DED October 20, 2016, Order) (Stark, USDJ)

Upon Reconsideration, Electric Power Group Renders Fleet Monitoring and Tracking Patent Invalid Under 35 U.S.C. § 101​

Following the recent Federal Court decision in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the court reconsidered an earlier order that denied defendant's motion to dismiss because the asserted claims of one of plaintiff’s machine communication system patents encompassed unpatentable subject matter and, upon reconsideration, found that the claims lacked an inventive concept. "Most recently, the Federal Circuit, in Electric Power Group, has clarified that 'enumerating types of information and information sources' will not turn an abstract idea into one that is patent-eligible. In this case, the fact that the scope of the [patent] is limited to freight assets provides no inventive concept. Moreover, the [patent] does not require any components that could be considered an 'advance over conventional computer and network technology.'. . . Additionally, while in its initial assessment of the [patent], the Court expressly relied on 'the specialized monitoring features described in [the patent], coupled with the format translation,' Electric Power Group is clear that identifying parameters for monitoring does not constitute an inventive concept. . . . [T]he claimed invention does not solve a problem deeply rooted in the context of 'computer networks.' The issue of incompatibility in communication has existed as long as language itself."

ORBCOMM, Inc. v. CalAmp Corp., 3-16-cv-00208 (VAED October 19, 2016, Order) (Hudson, USDJ)