Case Should not be Streamlined by "Assigning an Arbitrary Limit on the Number of Asserted Claims"

The court denied defendants' motion to limit the number of claims and patents asserted by plaintiff. "Initially, [plaintiff] asserted infringement of 361 claims from 16 patents. The parties reached an agreement whereby [plaintiff] reduced its asserted claims to 90 claims from 14 patents. At present, there are 56 claim terms in dispute. Defendants contend that this is an unmanageable number of claims and claim terms, and that the Court should limit the number of claims and claim terms that may be asserted by [plaintiff], that a day-long Markman hearing is necessary, and that additional pages of claim construction briefing should be permitted. The Court agrees that this case will need to be streamlined prior to trial, but assigning an arbitrary limit on the number of asserted claims or deciding which claims are duplicative is not the way to get there at this stage of the case. Instead, the parties should brief the claim terms that are the most likely to lead to a narrowing of the case once the terms are construed. The claim construction hearing will last no longer than three hours, and the ordinary page limits for briefing will apply."

Microunity Systems Engineering Inc v. Acer Inc et al, 2-10-cv-00091 (TXED June 7, 2012, Order) (Payne, M.J.).

Regardless of Prejudice, No Amendment of Prior Art Statement Absent a Showing of Diligence as to Individual References

The ALJ denied respondents' motion to amend their notice of prior art to add 14 references for lack of diligence. "ITC investigations are fast paced, and the [ALJ] requires that the parties solidify their positions early. . . . The [ALJ's] precedent makes clear that although prejudice may be a factor, this inquiry primarily turns on the party's reasons for supplementation, namely, the party's diligence. . . . Respondents argue here that the proposed prior art references are obscure, yet provide no specific facts with respect to the individual references to explain how that is the case. . . . At best, Respondents seem to argue that the score of references they wish to add were hidden in plain sight."

Dynamic Random Access Memory & NAND Flash Memory Devices & Products Containing Same, 337-TA-803 (ITC June 5, 2012, Order) (Gildea, ALJ).

Representing Opposing Party for Eighteen Years Including Four ITC Investigations Did Not Disqualify Counsel Absent Proof of Substantial Relationship

The ALJ denied respondents' motion to disqualify complainants' counsel even though counsel had represented respondents for nearly 18 years, including at least four ITC investigations. "[Respondent] offers only conclusory assertions that the technology involved in those previous Investigations is substantially related to the technology at issue in the present Investigation. . . . In contrast, [complainant] has provided a detailed analysis of those previous Investigations that raises serious doubts about the conclusion asserted by [respondent]. . . . This finding is further supported by the substantial amount of time that has elapsed between [counsel's] previous representation of [respondents] at the ITC and this Investigation. . . . The [ALJ] finds that any potential prejudice caused by [counsel's] previous representation of [respondents] will be mitigated by the ethical screen implemented."

Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same, 337-TA-803 (ITC June 5, 2012, Order) (Gildea, ALJ).

Production of Source Code Limited to "Infringing Functions"

The court denied in part plaintiff’s motion to compel defendant to produce a complete copy of the source code included in each of its accused products, because plaintiff did not demonstrate need of such a broad production. However, the court granted plaintiff’s motion to compel the production of source code related to the allegedly infringing functions of defendant’s accused products. "[Plaintiff] has not demonstrated the necessity of ‘fully understand[ing] the operation of [defendant’s] products’ as opposed to understanding the portion [of defendant’s source code] that is covered by its infringement claims. Given the sensitivity of source code, the court is not inclined to order broad disclosure absent a more specific showing."

Nazomi Communications Inc v. Samsung Telecommunications Inc et al, 5-10-cv-05545 (CAND June 1, 2012, Order) (Whyte, J.).

Evidence of Past ITC Determinations Involving Patents-in-Suit Excluded

The court granted defendants' motion in limine to preclude evidence of ITC investigations to which defendants were not parties. "[Defendant's] motion to preclude reference to prior ITC litigations involving [two patents-in-suit] (and to which [defendant] was not a party) is granted. The ITC's determinations are irrelevant and likely to prejudice the jury."

Apple, Inc. v. Motorola, Inc., et. al., 1-11-cv-08540 (ILND May 31, 2012, Order) (Posner, C.J.).

Congratulatory Statements do not Create Implied License

Following a jury verdict of noninfringement, the court found that defendant's implied license defense was not supported by the evidence. "An implied license requires a finding of an affirmative grant of consent or permission. Though rare, consent can be inferred from a course of conduct between parties. . . . [Defendant's] equitable defenses rest primarily on a . . . blog post by [plaintiff's] CEO congratulating [defendant] on the release of Android, as well as similar positive statements by [plaintiff's] executives thereafter. Congratulatory statements do not fall under the narrow circumstances proscribed by our court of appeals. Even if [defendant] understood [plaintiffs'] conduct to condone use of the [patented technology] packages, the 'course of conduct' must be assessed for an affirmative grant of such consent. None is apparent from the evidence [defendant] presented here. . . . Furthermore, from the present record it would be impossible to determine the scope of any implied license. Under [defendant's] theory, infringement is excused as to any aspect of Android because the whole of the platform was generally applauded by [plaintiff]. Such a finding is not supported by precedent. The parties negotiated for a real license but the talks collapsed and no license was given. It would be most bizarre to somehow find an implied license in this scenario."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND May 31, 2012, Order) (Alsup, J.).

Settlement does not Justify Vacating Summary Judgment of Noninfringement

The court denied the parties' motion to reopen judgment and vacate its prior summary judgment rulings of infringement following the parties' settlement. "It is not my practice to withdraw opinions on request of counsel. Not only is it impractical to do so in an electronic world, but it suggests that the opinion is the property of the parties, which it is not. Because the parties have failed to explain why the judgment should be vacated or the summary judgment opinion should be withdrawn, I am denying the motion."

EMD Crop Bioscience Inc. v. Becker Underwood, Inc., 3-10-cv-00283 (WIWD May 30, 2012, Order) (Crabb, J.).