Inequitable Conduct Pleading Alleging False Statement by an Individual or “One or More” Unidentified Individuals is Insufficient to State a Claim

The court granted plaintiff's motion to dismiss defendant's inequitable conduct claims for failure to state a claim because the allegations concerning the identity of the person allegedly making false statements were too vague. "[Defendant's] allegations that [a certain individual] was [plaintiff's] 'officer or employee' and that he 'knew or should have known' of the prior sales and prior art fall short of concretely alleging that he actually knew of the invalidating information. These scant allegations are further diluted by the qualifiers that either [he], or 'one or more' of the other inventors, knew about the prior sales and art and their materiality. . . . Dropping [one individual's] name in the scrum of '[plaintiff's] personnel including at least [that individual] or one or more of the other individuals listed as an inventor' fails to meet the pleading standard for 'who' deceived the PTO."

XpertUniverse Inc. v. Cisco Systems Inc., 1-09-cv-00157 (DED June 19, 2012, Order) (Andrews, J.).

Failure to Substantially Participate in Settlement Conference Warrants Sanctions Award

The court imposed sanctions for defendant's failure to substantially participate in a pre-claim construction settlement conference based on hourly rates of $375-$400. "The court will not award attorneys fees and costs incurred for the time spent preparing the confidential settlement memorandum or other preparation involving the client prior to the settlement conference. The court will, however, award attorneys fees for the time spent during the settlement conference, follow-up communications necessitated by [defendant's] failure to have an authorized representative present at the settlement conference, and preparation and time spent for the . . . follow-up status conference."

Aevoe Corp. v. Shenzhen Membrane Precise Electron Ltd., 2-12-cv-00054 (NVD June 15, 2012, Order) (Leen, M.J.).

Permanent Injunction Will Not Require Pre-Approval of Design-Around Products

Following a bench trial, the court rejected plaintiffs' motion for a provision in a permanent injunction requiring defendants to provide a new design-around product to plaintiffs' counsel for testing before introducing the product in the U.S. "[N]othing in the record demonstrates that this is an exceptional case which warrants extensive injunctive relief. In fact, the injunction orders are yet to be entered, and no evidence indicates that the Defendants will violate any proposed provisions."

MeadWestvaco Corporation, et. al. v. Rexam PLC, et. al., 1-10-cv-00511 (VAED June 12, 2012, Order) (Lee, J.).

Third-Party Seeking Carve-Out From General Exclusion Order Must Intervene Early in ITC Investigation

The ITC rejected a non-party's request to be carved out from a general exclusion order regarding complainant's GFCI patent. "[The non-party] has not presented a compelling reason to make such an exception. Moreover, [it] apparently knew about the present investigation as early as the institution phase, but chose not to intervene to protect its interests. Any burden imposed on [it] by remedial orders could have been avoided if [it] had participated in the present investigation and had presented meritorious defenses."

Ground Fault Circuit Interrupters and Products Containing Same, 337-TA-739 (ITC June 8, 2012, Order) (International Trade Commission).

Complete Bar on Use of Overseas Litigation Support Services for Confidential Information Rejected

The court rejected defendants' proposed protective order provision regarding transmission of protected information outside the U.S. "Defendants take issue with Plaintiff’s plan to outsource litigation services to overseas vendors. In support of a complete bar on overseas transmission, Defendants point to a situation in an unrelated case before Judge Everingham in this District where a security breach occurred at an overseas third party vendor potentially causing sensitive information to be leaked despite the existence of a protective order. . . . Although the Court is mindful of Defendants’ concerns regarding the disclosure of confidential or highly confidential information, it is not persuaded that one unfortunate incident that occurred in an unrelated case amounts to a 'clearly defined and serious harm' such that all transmission of confidential material outside of the United States should be forbidden."

EON Corp. IP Holdings, LLC v. Landis+Gyr Inc., et. al., 6-11-cv-00317 (TXED June 12, 2012, Order) (Love, M.J.).

Failure to Disclose Findings of Non-Binding Arbitration Panel Does Not Support Inequitable Conduct Claim

The court denied defendants' motion to amend their counterclaims to include an inequitable conduct claim based on plaintiff's alleged failure to disclose the findings of a non-binding arbitration panel. "[Defendant] argues that, during the [patent-in-suit] reexamination, [plaintiff] engaged in . . . misconduct, by taking positions before the PTO that conflicted with arbitration materials in [plaintiff's] possession, and by failing to disclose certain information, such as the fact that arbitration panels had rejected its contentions. . . . The information that [plaintiff] failed to disclose to the PTO was nothing more than the opinions of third parties, which had no legal or binding effect. We find no basis to conclude that [plaintiff] was obligated to disclose to the PTO the fact that these third parties disagreed with the arguments that [plaintiff] advocated before the PTO. . . . Nor do we agree with [defendants'] assertion that, just as failure to disclose ongoing related litigation is inequitable conduct, so too must [plaintiff's] failure to disclose the arbitration be inequitable conduct. Non-binding arbitration is distinguishable from litigation, on the basis that it lacks binding legal effect."

Kimberly-Clark Worldwide Inc. v. First Quality Products Inc., et. al., 1-09-cv-01685 (PAMD June 11, 2012, Order) (Caldwell, J.).

No Redaction for Confidential or Irrelevant Material

The ALJ granted in part complainants' motion to compel respondents to produce a revised privilege log where documents had been redacted for relevance and confidentiality. "[T]he [ALJ] finds that this practice conflicts with Commission Rule 210.30, which requires that parties produce documents as they are kept in the usual course of business. Redacting material from documents deprives the receiving party from viewing the responsive material in its proper context and creates the question of whether responsive material was removed. Furthermore, the Protective Order is in place to protect the confidential information in responsive, non-privileged documents, and thus Complainants’ argument that it redacted confidential material to protect third parties is unpersuasive."

Dynamic Random Access Memory & NAND Flash Memory Devices & Products Containing Same, 337-TA-803 (ITC June 4, 2012, Order) (Gildea, ALJ).