Defendant's Agreement to Temporarily Discontinue Infringing Conduct Warrants Grant of Stay Pending Reexamination

Defendant's motion to stay pending inter partes reexamination was granted. "Turning to undue prejudice, the Court finds [plaintiff's] complaints substantially mitigated by [defendant's] agreement to 'no longer make, use, offer to sell, sell, import or distribute any [of the allegedly infringing] products in the United States, until the earlier of: (a) the date on which the [Patent] Examiner issues a Right of Appeal Notice . . . In the pending Reexamination, or (b) . . . 3 years away, a period longer than the average time between the filing of a reexamination request and issuance of a reexamination certificate.'"

TDY Industries Inc. v. Ingersoll Cutting Tool Co., 2-10-cv-00790 (PAWD October 7, 2010, Order) (Bissoon, M.J.)

Technical Expert may not Testify as to Conception Date

Plaintiffs' motion in limine to preclude testimony by defendants' technical expert regarding the date of conception was denied in part. "[Defendants' expert] may testify regarding the evolution of [plaintiffs'] patent applications’ description of the invention. . . . He may not, however, speculate in light of this evolution as to when the idea for the latter use actually was first conceived."

Bone Care International LLC et al v. Pentech Pharmaceuticals, Inc., 1-08-cv-01083 (ILND October 1, 2010 Memorandum Opinion & Order) (Dow, J.)

Product Capable of Infringing Use did not Infringe Absent Proof of Specific Instances of Such Use

The court granted defendant's motion for summary judgment that its gift card did not infringe plaintiff's patent which claimed a method of performing anonymous online purchases. "[Plaintiff] has not adduced any evidence of direct infringement, such as evidence that gift card recipients actually have used the phrases on defendants’ gift cards to make purchases. This is important because, as the Court of Appeals for the Federal Circuit recently instructed, '[u]nless the claim language only requires the capacity to perform a particular claim element . . . it is not enough to simply show that a product is capable of infringement; the patent owner must show evidence of specific instances of direct infringement.'. . . [Plaintiff's] only evidence of infringement is testimony from its expert that the accused gift cards can be used in an infringing manner, not that gift card recipients used or were aware that they could use the accused cards in this way."

PrivaCash, Inc. v. American Express Co. et al., 3-09-cv-00391 (WIWD October 5, 2010, Order) (Crocker, M.J.)

Manufacturer of Electronic Voting Systems did not Infringe Method Claims Requiring Action by End User Voters

The court granted in part defendant's motion for summary judgment of noninfringement as to claims reciting a method of voting that included steps that could only be performed by the end user voters. "The terms of the claims themselves indicate that a voter performs [certain steps]. In fact, these claims specifically state that the steps are to be performed 'by the voter.' . . . The only evidence in the record directly indicating that [defendant] controls the voters’ actions is the instruction the Accused Systems provide the voters regarding use of the Accused Systems. However, in [Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008)] the Federal Circuit determined that instructing users on the use of an online auction method constituted insufficient evidence of control to establish any theory of infringement. Moreover, [plaintiff] has identified no legal theory under which [defendant] might be held vicariously liable for the actions of the voters."

Voter Verified, Inc. v. Election Systems & Software, Inc., 6-09-cv-01969 (FLMD September 29, 2010, Order) (Fawsett, J.)

Software Providers do not Infringe Method Claims Requiring Action by End Users

Defendants who provided website services and software for use with cell phones were granted summary judgment of noninfringement because plaintiff could not establish joint infringement as to certain method claims requiring actions by end users. "Defendants argue that because they have no control or power of direction over end-users, the relationship between end-users and Defendants is arms-length at most, and that end-users (and not the Defendants) are responsible for performing at least some of the claims in the Patent. The Court agrees. First, the 'originating user sending a paging signal' element of the claims is performed by the end-users, and no evidence has been presented that Defendants controlled or directed the end-users in their performance of this activity. Second, the 'designating a page receiving country' element requires user conduct (either by the originating user or the receiving user), and Defendants do not control the users in their performance of this element."

Technology Patents LLC v. Deutsche Telekom AG et al., 8-07-cv-03012 (MDD September 29, 2010, Memorandum Opinion) (Williams, J.)

Judge Davis Questions Whether Litigating Venue Disputes is in Clients' Best Interest

In granting defendants' motion to transfer venue, the court questioned whether the expense of litigating venue is generally in the clients' best interests. "Motions to transfer in patent cases have become almost common place. Often, defendants merely seek to move the litigation to their home district under the assumption that since the plaintiff chose the forum where the case was filed, it cannot be a 'good' venue for the defendant. The transfer issue becomes almost a separate litigation within the case, with discovery being taken and hundreds of thousands of dollars being spent to litigate the issue. Each side seeks to identify every possible witness and document in the United States that might support their position, the vast majority of whom will not be deposed, called to testify, or offered at trial. The Court has serious questions over whether such a fight is in a client’s best interest."

ON Semiconductor Corp. et al v. Hynix Semiconductor Inc et al., 6-09-cv-00390 (TXED September 30, 2010, Memorandum Opinion & Order) (Davis, J.)

Unmanned Office in Eastern District of Texas does not Impact Venue Analysis

In denying defendants' motions to transfer venue, the court gave no weight to plaintiff's office in the local venue. "While [plaintiff] does have an office in Tyler, Texas where its documents are kept, the Court gives no weight to this fact as it appears that the documents are kept there solely to influence the Court’s venue analysis. There is no indication in the briefing that [plaintiff] has employees at this office or conducts business from this office."

EMG Technology, LLC v. Apple, Inc., 6-08-cv-00447 (TXED September 28, 2010, Memorandum Opinion & Order) (Davis, J.)