Court Ordered Deadlines Are Final -- Not Preliminary -- Unless Otherwise Noted

The court granted defendant's motion to strike plaintiff's supplemental infringement contentions and rejected plaintiff's argument that the court's "Scheduling Order never describes the deadline as a 'final' deadline." "Here, [plaintiff] rested on a false presumption – namely that court-issued deadlines are 'preliminary' unless otherwise indicated. The opposite is the case. . . . The Court does not find reason to recast discovery as a period when the parties are free to locate new infringement contentions, potentially delaying for an untold duration the ultimate trial. Furthermore, if [plaintiff] believed that there was 'good cause' to modify the Schedule Order, it could have moved the Court to do so – a road that [plaintiff] did not take."

Motorola Mobility, Inc. v. Apple, Inc., 1-10-cv-23580 (FLSD December 6, 2011, Order) (Ungaro, J.)

Damages Expert's Apportionment of Damages on Patent-by-Patent Basis Precludes Later Apportionment on Claim-by-Claim Basis

The court tentatively granted defendant's motion to preclude plaintiff's damages expert from apportioning a patent-in-suit’s value on a claim-by-claim basis where the expert conducted a patent-by-patent analysis. "The prior order made clear that a claim-by-claim analysis of damages was preferable: 'determining the date of first infringement requires a claim-by-claim analysis'. . . . [T]his is necessary to get the correct timeline to calculate past damages. Second, some of the asserted claims might be less valuable, or easier to design around. . . . Third, this is necessary to calculate future damages if [defendant] designs around some claims but not others. . . . Fourth, the jury may find liability on some claims but not others. . . . And fifth, some claims may be rejected by the USPTO on reexamination. . . . [Plaintiff] does not deny that [it's damages expert] treats each patent as an indivisible whole. Therefore, [the expert] is tentatively precluded from apportioning an asserted patent’s value among its claims at trial. Furthermore, this tentative order holds that the jury will be instructed that if they find any asserted claim not infringed, they may assume that the noninfringed claim represented the full value of that patent."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND December 6, 2011, Order) (Alsup, J.)

Participation in Patent Pilot Program and Adoption of Local Patent Rules Are Irrelevant to Venue Analysis

The court granted defendant's motion to transfer venue despite plaintiff's argument that the current forum had local patent rules and was participating in the Patent Pilot Program. "This district’s participation in the Patent Pilot Program is not relevant here. This case was randomly assigned to us, and we did not decline to accept it. Similarly, the existence of our local patent rules does not affect our analysis because there is no indication that they would reduce the length of time it would take to resolve this particular case."

Pinpoint Incorporated v. Groupon, Inc., et al., 1-11-cv-05597 (ILND December 5, 2011, Order) (Grady, J.)

"Facts Outside the Pleadings" May be Used to Show Sufficiency of Patent Infringement Claim Even After Iqbal and Twombly

Defendant's motion to dismiss for failure to state a claim was denied even though the court found that the complaint itself failed to state a claim for infringement. "[Plaintiff] asserts that during a course of correspondence both before and after the complaint was filed, [it] gave [defendant] a claim chart detailing how a specific . . . latch infringed the [patent-in-suit]. Because [defendant] is on notice of [plaintiff's] more detailed allegations regarding [its] alleged infringement, [plaintiff] asserts that its bare-bones complaint is sufficient to state a claim. . . . [T]he Seventh Circuit has recently made clear that, even after Iqbal and Twombly, plaintiffs may still suggest facts outside of the pleadings to show that their complaints should not be dismissed, so long as those facts are consistent with the complaint. Accordingly . . . the court finds that [plaintiff] has pled sufficient factual material to state a plausible claim – that is, sufficient to put the defendant on notice of a plausible claim against it – and, therefore, the complaint should not be dismissed for failure to state a claim."

Illinois Tool Works Inc v. Elektromanufaktur Zangenstein Hanauer GmbH & Co. KGaA, 2-11-cv-00262 (WIED November 30, 2011, Order) (Stadtmueller, J.)

Former Magistrate Judge Everingham's Consulting With Plaintiff Does Not Require Recusal If Such Consulting is Unknown to the Presiding Judge

The court denied defendants' motion to recuse under a local rule requiring recusal when a former judge of the district appears as counsel, but only because plaintiff withdrew its "notice of affiliation" (announcing that a former magistrate judge would be consulting with plaintiff on the case) and agreed to screen the former magistrate judge from the case. "While consulting with a client does not constitute an actual appearance on behalf of that client, the filing of a Notice of Affiliation with the Court has the same effect of advising the Court that the former colleague is involved in the case and raises the same concerns that a formal appearance would. Put simply, by filing the notice and informing the Court of [the former magistrate's] potential involvement in the case, such notice has the same potential for creating an appearance of impropriety as an actual appearance. Again, it is the filing of the Notice that creates the potential appearance of impropriety which would trigger recusal in this case, not the actual consulting. . . . [Plaintiff] has continually screened [the former magistrate judge] from this case, has agreed to withdraw the Notice of Affiliation and to continue screening him from the case. Accordingly, there is no basis for recusal and the motion is denied."

JuxtaComm-Texas Software, LLC v. Axway, Inc., et. al., 6-10-cv-00011 (TXED December 1, 2011, Order) (Davis, J.)

Willful Infringement Warrants Only $500,000 Enhancement Over $22.35 Million Verdict

On remand, the court reconsidered its earlier denial of plaintiff's motion for enhanced damages and instead awarded plaintiff $500,000 on the jury's award of $22.35 million. "On appeal in this case, the Federal Circuit held, in light of its intervening opinion in i4i Limited Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010), that this Court had misapplied [In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007)] Specifically, the Federal Circuit said that 'Seagate did not change the application of the Read factors with respect to enhancement of damages' for willful infringement. . . . Only two factors — the infringer’s investigation into the infringement allegations (factor 2) and the infringer’s size and financial condition (factor 4) — weigh in favor of awarding enhanced damages. On balance, the Court finds that [defendant] should be penalized by an award of $500,000 in enhanced damages. . . . [T]he Court notes that the disparity between this award and the jury’s compensatory-damages award reflects not just that the Court’s enhanced-damages award is relatively small, but also that the compensatory-damages award was extremely generous."

Spectralytics, Inc. v. Cordis Corporation, 0-05-cv-01464 (MND November 30, 2011, Order) (Schiltz, J.)

No Infringement Where Purchase Orders Were Received in the U.S. but "Performance and the Passing of Legal Title Occurred Internationally"

The court denied plaintiff's motion to compel defendant to produce sales information regarding products that were not shipped to the U.S. "'[T]he reach of section 271(a) is limited to infringing activities that occur within the United States.' [Plaintiff's] position that [defendant's] receipt of its purchase orders in California should control contradicts Federal Circuit precedent. . . . Here, the allegedly infringing products that are ordered by foreign customers were manufactured outside the United States, and distributed to customers outside of the United States. Both performance and the passing of legal title occurred internationally. Accordingly, the sales of the allegedly infringing products to foreign customers fall outside the scope of U.S. patent laws."

Internet Machines LLC v. Alienware Corporation, et. al., 6-10-cv-00023 (TXED November 29, 2011, Order) (Schneider, J.)