No Substantial Controversy for Declaratory Judgment Action Filed Simultaneously With Issuance of Patent

The court granted defendants' motion to dismiss plaintiff's declaratory relief action for lack of subject matter jurisdiction because plaintiff filed its lawsuit before defendants could have taken any action to enforce their patent rights. "Regardless of the precise sequence of events, or what filing date the complaint should be given, it is clear that [plaintiff] filed this action no later than virtually simultaneously with issuance of the patent. There is no indication that [defendant] did, or even could have, issued some implied or express enforcement threat so closely upon issuance of the patent such that it could be said to have taken any affirmative act to enforce its patent rights prior to the time the complaint was filed."

Danisco US, Inc. v. Novozymes A/S, et. al., 3-12-cv-04502 (CAND January 8, 2013, Order) (Seeborg, J.).

Enforcement of Subpoena for Google Source Code Approved

The ALJ granted complainant's motion to certify a request for judicial enforcement of deposition and document/source code subpoenas served upon a nonparty. "[T]he [ALJ] has entered a Protective Order and an Addendum. . . which already protect Nonparty's confidential business information and highly confidential source code. Nonparty's claim that it has withheld the requested discovery on the basis of insufficient protections is particularly unpersuasive here in light of Nonparty's failure to take action on its own behalf to timely quash or limit the subpoenas served on it or to seasonably seek some form of protective order itself upon receiving the subpoenas. . . . [T]he requested discovery appears to be sought for an appropriate purpose, is relevant, and appears reasonable in scope."

Consumer Electronics, Including Mobile Phones and Tablets, 337-TA-839 (ITC January 6, 2013, Order) (Gildea, ALJ).

Expert’s Application of Outdated Test for Design Patent Infringement Warrants Exclusion of Testimony

The court granted in part plaintiff's motion to exclude defendant's infringement and invalidity expert because the expert used the points of novelty test for design patent infringement that had been eliminated by the Federal Circuit. "[Defendant] concedes that [its expert] 'misstated part of the legal standard,' but argues that he actually applied the points of novelty test after applying the ordinary observer test, thus it was an additional basis for his opinion and can be ignored. . . . [Defendant's] argument that [its expert] considered a few 'novel features' as just a part of his analysis is not well taken, given the statement in his Rebuttal Report that he applied the 'points of novelty' test. . . . Because [his] opinion on infringement and invalidity are based on the 'points of novelty' test. . . which the Federal Circuit squarely rejected as a separate test [four years ago], [his] opinions in this respect are not appropriate and must be excluded."

Pacific Coast Marine Windshields Limited v. Malibu Boats, LLC, et. al., 6-12-cv-00033 (FLMD January 4, 2013, Order) (Baker, M.J.).

Emergency Stay Pending Reexam Rejected Because Action Closing Prosecution Was Not Final

The court denied defendant's emergency motion to stay pending an inter partes reexamination where the PTO issued an Action Closing Prosecution that rejected all claims of the patent-in-suit. "The Court believes that 'final' does not always have its plain and ordinary meaning at the USPTO. . . . An Action Closing Prosecution is far from a 'final' rejection. Here it is apparent that the reexamination proceedings in this matter are still very far from complete and the final outcome at the USPTO is at least several years away. It is hard for this Court to understand [defendant's] possible justification for asserting this Motion to be an 'emergency' when confronted with the practical realities of practice before the USPTO. . . ."

Portal Technologies v. Yahoo! Inc., 2-11-cv-00440 (TXED January 3, 2013, Order) (Gilstrap, J.).

Spoliation Renders Rambus DRAM Patents Unenforceable . . . Again

On remand after the Court of Appeals vacated the district judge's choice of sanction, the court again sanctioned defendant for spoliation of discovery documents and declared its DRAM patents-in-suit unenforceable. "[T]he deterrent effect of fees and costs or monetary sanctions would be insufficient; the temptation to destroy unfavorable evidence at the outset of high stakes litigation would overshadow the prospect of being sanctioned with paying fees and costs or other monetary sanctions. . . . The deterrent effect of an adverse jury instruction is 'limited in scope' because of the uncertainty as to whether a jury would draw an inference against the spoliator. . . . [An evidentiary sanction] would not be an appropriate remedial measure here because the nature of [defendant's] spoliation has made it impossible to know 'the precise contours of the destroyed materials.'. . . [T]he only appropriate sanction is to hold the patents-in-suit unenforceable against [plaintiff]. [Defendant's] destruction of evidence was of the worst type: intentional, widespread, advantage-seeking, and concealed. . . . Any lesser sanction would, in effect, reward [defendant] for the gamble it took by spoliating and tempt others to do the same."

Micron Technology v. Rambus Inc., 1-00-cv-00792 (DED January 2, 2013, Order) (Robinson, J.).

No privilege for “business decision about whether and when to unleash . . . patent attorney”

The court granted defendant's motion to compel plaintiff to produce four emails regarding the timing of an infringement claim, rejected plaintiff's claim of privilege, and awarded sanctions. "According to [plaintiff], notwithstanding the facts that no attorney was involved in the discussion, no attorney had provided any input, and in fact, no attorney even had been contacted yet, the discussion still is privileged, apparently because the non-lawyers are talking about talking to their lawyer. This is an alarmingly simplistic view of the privilege. . . . Four senior managers making a business decision about whether and when to unleash their patent attorney (plus a report that the call was made and a message left) doesn’t cut it. . . . Four executives agreeing that they will try to cast a cloud over [a manufacturer's] new launch by getting the patent attorneys involved is not attorney work product."

Out RAGE LLC v. New Archery Products Corporation, 3-11-cv-00701 (WIWD December 28, 2012, Order) (Crocker, M.J.).

Mischaracterization and Misapplication of Statute Did Not Warrant Award of Attorneys’ Fees

The court denied defendant's motion for attorneys' fees under 35 U.S.C. § 285 after the PTO and BPAI rejected the claims of the patent-in-suit as invalid because plaintiffs did not engage in litigation misconduct by mischaracterizing and misapplying a statute. "[T]he Court is deeply concerned that Plaintiffs, whether inadvertently or not, both misquoted the statute and erred in applying it to the factual situation of this case. Plaintiffs apologized and admitted their mistake. Plaintiffs also point to [another case] to illustrate that their mischaracterization is not utterly devoid of legal basis. . . . In light of Plaintiffs' reliance on the case law on the topic, the Court concludes that this one instance of mischaracterization, while troubling, is not enough to render the case exceptional."

E-Z-GO, et. al. v. Club Car, Inc., 1-09-cv-00119 (GASD December 27, 2012, Order) (Hall, J.).