Wednesday, August 22, 2018

Preliminary Injunction Denied, But Two-Day TRO Granted Precluding Launch of Generic Estrogen Patch

The court denied plaintiff's motion for a preliminary injunction but granted plaintiff's motion for a TRO precluding the launch of defendants' generic transdermal estrogen product. "Plaintiffs' motion is denied to the extent it seeks a PI, and granted to the limited extent that [defendant] is temporarily restrained from launching its Generic Product [for two days]. At that point this limited TRO will automatically expire unless additional relief, such as a stay pending appeal, is granted either by this Court or the Court of Appeals, relief this Court will only consider if [plaintiff] files a notice of appeal and an expedited motion for a stay no later than [tomorrow]."

Noven Pharmaceuticals, Inc. v. Mylan Technologies Inc. et al, 1-17-cv-01777 (DED August 20, 2018, Order) (Stark, USDJ)

Tuesday, August 21, 2018

Request for Attorney Fees of $1.3 Million Reduced to $100 Thousand Due to Heavily Redacted Billing Records

The court awarded defendant only $100,000 of its claimed $1.3 million in attorney fees under 35 U.S.C. § 285 because defendant failed to present sufficient evidence to support its fee claim. "No explanation is included as to nature of the tasks performed that [defendant] categorizes as exclusive to the defense of [one patent-in-suit], to which [defendant's] recovery is limited. The over 400 pages of invoices provided have been completely redacted of all narrative description of the work performed. . . . The Court is highly skeptical that the descriptive narratives of every single time entry by every single timekeeper in this case constituted an attorney-client privileged communication or work product. . . . The Court declines [defendant's] offer to provide the Court with the 400 plus pages of billing records unredacted in camera so the Court can review the individual entries and determine from the hundreds of pages the reasonableness of the work performed. . . . Measured by the pleadings and motions filed attributable to the [patent-at-issue], the Court, in its discretion, awards [defendant] $100,000.00."

IPS Group, Inc. v. Duncan Solutions, Inc., 3-15-cv-01526 (CASD August 17, 2018, Order) (Bencivengo, USDJ)

Monday, August 20, 2018

Prevailing Party’s Previously-Sanctioned Misconduct Weighs Heavily Against Award of Attorney Fees

Following remand, the court denied plaintiff's motion to reinstate its award of attorney fees under 35 U.S.C. § 285 because of plaintiff's own misconduct in seeking a TRO. "The Federal Circuit concluded not only that '⁠[plaintiff's] misconduct cannot be disregarded on the theory that failure to award fees is equivalent to double-sanctioning [plaintiff],' but also 'that [because] this misconduct has already been sanctioned[, it] should be weighed more heavily, rather than be excluded in the 35 U.S.C. § 285 analysis.' Defendants urge that '⁠[l]itigants who sanctionably lie do not deserve a fee award.' The Court sanctioned [plaintiff] for submitting [a] deceitful declaration in support of the TRO, 'without a colorable basis' and 'in bad faith, i.e., motivated by improper purposes such as harassment and delay.' Weighing this litigation misconduct more heavily, considering the Court's findings that [defendant's] noninfringement argument was not groundless and that its litigation strategy was reasonable, the Court finds that [defendant's] conduct did not warrant fee shifting as an exceptional case under either the Patent or Lanham Acts."

Romag Fasteners, Inc. v. Fossil, Inc., et al, 3-10-cv-01827 (CTD August 16, 2018, Order) (Arterton, USDJ)

Friday, August 17, 2018

Employee’s Home Office Qualifies as Regular and Established Place of Business

The court denied one defendant's motion to dismiss for improper venue because defendant had a regular and established place of business through an employee's home office in the forum. "⁠[One defendant's] New York employee's home office is not merely a 'sporadic' or isolated work environment. . . . [S]ales representatives 'contact[] a prospective customer at a potential customer's office' and 'take initial sales orders.'. . . Although [defendant] does not require sales people to live in their assigned territory, [it] admits that it 'tries to hire people living within their assigned sales territory,' one of which is New York. Indeed, [defendant's] job postings reveal that it seeks out territory managers for specific locations. . . . And . . . sales agents must contact potential customers at their offices and conduct trainings when [defendant's] products arrive. All of these tasks necessitate proximity to customers."

RegenLab USA LLC v. Estar Technologies Ltd. et al, 1-16-cv-08771 (NYSD August 15, 2018, Order) (Carter, Jr., USDJ)

Thursday, August 16, 2018

Unauthorized Amendment of Contentions Does Not Require Motion to Strike if the Issue is Clearly and Timely Raised by Letter

The court denied as moot defendant's motion to strike plaintiff's supplemental infringement contentions after plaintiff conceded the contentions should be withdrawn. "Except in response to the Court’s claim construction ruling, a plaintiff may only amend its infringement contentions with leave of Court, which requires a showing of good cause. [Plaintiff] never moved for such leave. . . . Thus, under the rules, [its] supplemental infringement contentions never had any operative effect, and [defendant's] motion was not technically necessary. . . . To be clear, however, accused infringers should not remain silent about 'amended' or 'supplemental' contentions served without a motion for leave and expect to avoid those contentions late in the proceeding. . . . But if the defendant has clearly and timely raised an issue with the plaintiff’s failure to seek leave -- as [defendant] did here by way of its [letter to plaintiff] -- the defendant need not then spend time moving to strike the 'amended' contentions."

Traxcell Technologies, LLC v. AT&T, Inc. et al, 2-17-cv-00718 (TXED August 14, 2018, Order) (Payne, MJ)

Wednesday, August 15, 2018

Plaintiff’s Controlling Shareholder Joined as Necessary Party for Potential Attorney Fees Liability

Following summary judgment, the court granted defendant's motion to join plaintiff's founder/inventor as a necessary party and pursue attorney fees against him under 35 U.S.C. § 285. "There is no evidence in the record that establishes that [plaintiff] currently has income or liquid assets. In fact, [the founder's] own declaration shows that [plaintiff] lacks sufficient financial resources. . . . Moreover, [defendant] provides evidence that [plaintiff] has not paid its fees and costs to its former counsel for over a year. . . . Given [the founder's] controlling shareholder power and his status as the only person from [plaintiff] who is involved in this litigation, the Court finds that [his] activities may potentially subject him to liability for attorneys’ fees and that he should be joined in this action."

Phigenix, Inc. v. Genentech, Inc., 5-15-cv-01238 (CAND August 13, 2018, Order) (Freeman, USDJ)

Tuesday, August 14, 2018

Jury Finding of Willful Infringement Does Not Satisfy Section 287 Notice Requirement

Following remand, the court granted defendant's motion for summary judgment to preclude plaintiff from seeking pre-suit damages and rejected plaintiff's argument that the jury's willful infringement finding satisfied plaintiff's obligation to establish actual notice. "⁠[Plaintiff] argues . . . that it meets it burden to show actual notice under Section 287 based on both the Court’s rulings and the jury’s findings of willful infringement. [Plaintiff] further points to evidence introduced at trial that [defendant] knew about the [patents-in-suit] and was aware internally about potential infringement. But the reading of the statute that [plaintiff] urges conflates the patentee-centered inquiry of notice under Section 287(a) with the infringer-centered inquiry of willfulness with regard to liability. . . . The jury’s finding of willfulness does not relieve [plaintiff] of its obligation to mark or notify -- neither of which [plaintiff] did prior to [filing suit]. "

Arctic Cat Inc. v. Bombardier Recreational Products Inc. et al, 0-14-cv-62369 (FLSD August 10, 2018, Order) (Bloom, USDJ)