Lift of Lengthy Stay Pending IPR Warrants Addition of 494 New Accused Products​

The court granted plaintiffs' motion to amend their infringement contentions to add 494 accused products and 21 exemplary claim charts after a stay was lifted because defendant was not unduly prejudiced by the amendments. "[Defendant] has not described with any specificity how it would be prejudiced by having to defend against the additional claims in this action, without discovery deadlines or a trial date, as opposed to defending against the claims in a parallel action. Indeed, [defendant] may benefit from the efficiencies of defending against the allegations in a single action. . . . Plenty of time remains to address [plaintiff's] new theories, regardless of how disruptive they are. Addressing these claims in the same action is more efficient and likely less burdensome. . . . The Court does agree with [defendant] that '[t]here must be some reasonable cut-off date after which [the plaintiff] cannot further expand the case simply because [the defendant’s] product cycle has outpaced the resolution of this case.' But because of the lengthy stay of this litigation and the relatively early stage at which the parties find themselves procedurally, that 'reasonable cut-off date' will be the date of this order."

Advanced Micro Devices, Inc. et al v. LG Electronics, Inc. et al, 3-14-cv-01012 (CAND February 24, 2017, Order) (Illston, USDJ)

Statistics on District Court 12(b)(6) Motions under 35 USC 101

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Apportionment of Royalty Base Appropriate for Process Claims​

The court denied plaintiff's motion to exclude the testimony of defendant's damages expert regarding apportionment of the royalty base as unreliable and rejected plaintiff's argument that apportionment was inappropriate for process claims. "To the extent [plaintiff] argues [the expert's] opinions are unreliable because the asserted claims cover 'an entire process' rather than a multi-component product such that 'the EMVR, and the related line of cases' do not apply, such an argument misunderstands that apportionment is a fundamental concept in patent damages that is not limited to the EMVR context. This is because a 'key inquiry' in the reasonable royalty analysis 'is what it would have been worth to the [infringer], as it saw things at the time, to obtain the authority to use the patented technology, considering the benefits it would expect to receive from using the technology and the alternatives it might have pursued.'. . . [Plaintiff] cites no authority in support of its argument that apportionment of the royalty base is inappropriate where process claims, rather than multi-component product claims, are concerned."

Kaneka Corporation v. Zhejiang Medicine Co., Ltd. et al, 2-11-cv-02389 (CACD February 22, 2017, Order) (Otero, USDJ)

PMC Signal Processing Patents Not Ineligible Under 35 U.S.C. § 101

​ The magistrate judge recommended denying defendant's motion to dismiss on the ground that plaintiff’s signal processing patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "[Defendant] argues that the asserted claims of the [first] Patent are 'simply directed to a generic way of communicating information to determine which television program to display.' The Court disagrees. The [first patent's] claims are directed to overcoming problems specific to the distribution of streaming digital television programming and other digital content over computer networks. . . . [T]he claims of the [second] patent are directed at a receiver station that receives and processes signals. The particularized elements of those claims are similar to the claim elements in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)]. . . . [T]he [third patent's] claims address a specific technological problem rooted in signal transmission and processing. . . . Similarly, the [fourth patent's] claims are directed to a process of matching a 'signal processing scheme' to the variable format of a received digital signal to output television programming. Finally, the Court finds that the [fifth patent's] claims are directed to a method of handling information transmissions whose variable-length data must first be decoded before the data can be used to create video images. . . . The asserted claims recite patentable subject matter as defined by precedent interpreting § 101."

Personalized Media Communications, LLC v. Funai Electric Co., Ltd., 2-16-cv-00105 (TXED February 22, 2017, Order) (Payne, MJ)

Top Patent Classifications by District Court Determinations through 2016

Longer License Term Does Not Support Expert’s Increase in Royalty Rate

​ The court granted defendant's motion to exclude the testimony of plaintiff's damages expert regarding a royalty rate as unreliable for double-counting the duration of the rate. "[The expert] adjusts the hypothetical royalty rate upward by 5 cents to account for the fact that the hypothetical license would be 2.5 years longer than [a third party] license. However, he also opines that the hypothetical license would have resulted in a running royalty, as opposed to a lump sum. A running royalty supposes that the licensee will pay a per unit royalty. Without additional facts or testimony, a running royalty necessarily accounts for any longer duration through an increased royalty base. . . . There is simply no reliable support in the record for [plaintiff's] notion that [defendant] might pay more for earlier, guaranteed access to newer technology. In fact, such notion appears to be contradicted by other statements in [the expert's] report. . . . [T]he Court’s determination here that [the expert's] royalty rate improperly double counts is not a broader statement that Georgia-Pacific Factor 7 is per se inapplicable to a running royalty as a matter of law. . . . However, Plaintiff has not marshaled sufficient facts to show that such is the case here. . . . [A]ccordingly, [the expert] may not testify that an additional 2.5 years on the hypothetical license warrants an increase of 5 cents in his calculated running royalty."

Saint Lawrence Communications, LLC v. ZTE Corporation et al, 2-15-cv-00349 (TXED February 21, 2017, Order) (Gilstrap, USDJ)

New District Court Patent Cases through 2016

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The judges chart has been updated to reflect the actual number of cases per judge, rather than their percentage of the overall cases. Please note that district judges and magistrate judges are many times on the same cases, so there will be an overlap of those judges' cases. Therefore, the total number of cases will not equal the sum of each individual judge's cases.