Irreparable Harm to Losing Plaintiff Justifies Injunction Against Defendant Pending Appeal

Following a bench trial in which the court found the asserted patent invalid, the court granted plaintiff's motion to enjoin defendant from marketing or selling its accused drug product pending plaintiff's appeal, on the condition that plaintiff post a $10 million bond and move to expedite its appeal. "[Plaintiff] claims that it will succeed on the merits because this court erred in its application of the law with respect to motivations to combine the prior art and inherency. Although the court stands by its judgment, it recognizes that the case presents a close call. . . . The court is not persuaded [plaintiff] has demonstrated a 'strong' likelihood of success on appeal. . . . [Plaintiff] has, however, made a showing of a substantial case. Because . . . the balance of hardships tips strongly in its favor as well, this showing is sufficient. . . . [Plaintiff] has presented evidence that it would suffer more than just lost revenue. [Plaintiff] has also demonstrated that the lost revenue will likely force its entire branded division . . . to shut down. . . . In addition, there is evidence that were [defendant] to enter the market only to be required to exit again, the price erosion and revenue losses [plaintiff's product] would suffer would be impossible to reverse completely."

Par Pharmaceutical, Inc. et al v. TWi Pharmaceuticals, Inc., 1-11-cv-02466 (MDD August 12, 2014, Order) (Blake, J.)

No Summary Judgment Based on Late Disclosed Noninfringement Argument

The court denied defendant's motion for summary judgment of noninfringement of plaintiff's HVAC patent. "[Defendant] argues that it cannot be liable for direct infringement because it only sells individual HVAC units, not HVAC systems, and the [patent-in-suit] requires an HVAC system that is operational. . . . [I]t was not until 11:19 p.m. on the last day of fact discovery . . . that [defendant] added this contention as a defense, by supplementing its interrogatory response on non-infringement. . . . The parties are represented by highly regarded patent lawyers. How can it be that a fundamental contention - defendant does not sell the accused system - was not even identified by either party until the last minutes of fact discovery? Indeed, the record is bereft of all meaningful evidence relating to this issue, with [plaintiff] arguing that it had no notice of the contention and, therefore, no opportunity to pursue related discovery, and [defendant] arguing that it had no responsibility to give any more notice of its defense than it did because it is [plaintiff's] ultimate responsibility to prove direct infringement. . . . [Defendant] equivocated and failed to provide any evidence (like sales figures) that could have alerted [plaintiff] to the issue. [Defendant] did not play by the rules; therefore, it must suffer the consequences. [Defendant's] motion for summary judgment is denied in this regard. The court will address at the pretrial conference whether [defendant] will be precluded from presenting such a defense at trial."

Carrier Corporation v. Goodman Global Inc. et al, 1-12-cv-00930 (DED August 14, 2014, Order) (Robinson, J.)

Risk That Small Businesses Will be Discouraged from Enforcing Patent Rights Vital to Their Survival Weighs in Favor of Attorneys’ Fee Award

Following a jury verdict of patent infringement liability and reasonable royalty damages of about $65,000 against two defendants, the court granted plaintiff's motion for attorneys’ fees under 28 U.S.C. § 285. "[T]his case raises special concerns regarding compensation and deterrence of patent infringement. Although snap fasteners represent a minute portion of Defendants’ costs and profits, the [patent-in-suit] is Plaintiff’s primary business asset. Thus, there is a risk that plaintiffs similar to [this plaintiff] could be discouraged from bringing claims that may garner only small awards but are nonetheless vital to the survival of their businesses where defendants, as was the case here, aggressively pursue invalidity counterclaims in an attempt to prolong litigation and exponentially increase the cost and risk of pursuing a lawsuit."

Romag Fasteners, Inc. v. Fossil, Inc., et al, 3-10-cv-01827 (CTD August 14, 2014, Order) (Arterton, J.)

Litigation Counsel Not Barred from Participating in IPR as to Overlapping Issues

The court granted in part plaintiff's motion to allow its litigation counsel to participate in inter partes review filed by defendants involving the same claims and defenses, but litigation counsel could not participate in claim amendment or share defendants' confidential information with plaintiff's IPR counsel. "[E]ven if the protective orders did bar [plaintiff's litigation counsel] from participating in the inter partes review proceedings, the court would make an exception. . . . [Litigation counsel's] participation is limited to the issues before this court — questions of obviousness and prior art. Those issues need not implicate competitive decisionmaking or claim amendment. . . . [Plaintiff] would be at a significant disadvantage if [its litigation counsel] is not permitted to assist in the defense of [plaintiff's] patents against the same prior art raised in this litigation. . . . [Counsel] has developed extensive knowledge and expertise regarding those challenges. . . . Forcing [plaintiff's IPR counsel] to prepare from scratch the defense that [litigation counsel] has already prepared would be a waste of time and resources."

Endo Pharmaceuticals, Inc. et al v. Teva Pharmaceuticals USA, Inc. et al, 1-12-cv-08060 (NYSD August 13, 2014, Order) (Griesa, J.)

Expert’s “Yes and No” Answers to Leading Questions Insufficient to Support Invalidity Verdict

Following a jury trial which found plaintiff's call center system patent invalid, but did not specify a basis, the court granted plaintiff's motion for judgment as a matter of law as to defendant's written description and lack of enablement defense. "[Defendant's invalidity expert's] testimony consists of a series of 'yes' and 'no' answers to counsel’s leading questions, without providing any specific reason for giving such answers. While [the expert] did identify a page from the [patent-in-suit's] specification upon which he purportedly formed his opinion, he never explained how such evidence demonstrated that, to build a partitioned database, one skilled in the art would have to go through 'undue experimentation.' [The expert's] ipse dixit statements that the [patent-in-suit] failed the written description and enablement requirements cannot be sufficient to constitute clear and convincing evidence. Given that [the expert's] testimony is the only basis upon which Defendants attempted to invalidate the [patent-in-suit] under Section 112, the Court finds that no reasonable jury could have concluded that the [patent-in-suit] was invalid for lack of written description or for failing the enablement requirement."

Cassidian Communications, Inc. v. microDATA GIS, Inc. et al, 2-12-cv-00162 (TXED August 8, 2014, Order) (Gilstrap, J.)

Judge Dyk: Defendant’s Failure to Seek Summary Judgment Undermines Request for Attorneys’ Fees

Following a jury verdict of noninfringement and invalidity, the court denied defendant's motion for attorneys’ fees under 35 U.S.C. § 285. "[Defendant's] motion is primarily based on the fact that [plaintiff] made losing arguments. . . . [T]hat is not a ground for finding a case exceptional. Every case will have a loser. . . . [Plaintiff's] argument was certainly a weak one, but despite the alleged implausibility of [plaintiff's] position, [defendant] never sought summary judgment of non-infringement on the basis of the limitation at issue. This suggests that [defendant] did not always view [plaintiff's] infringement position as frivolous. There is little injustice in forcing [defendant] to bear its own attorney’s fees for defending a claim it did not challenge on summary judgment. Disposing of a frivolous claim on summary judgment would avoid a trial and have the effect of saving both parties a substantial portion of their litigation costs."

Stragent, LLC et al v. Intel Corporation, 6-11-cv-00421 (TXED August 6, 2014, Order) (Dyk, C.J.)

Attorneys’ Fee Award Stands Despite Reversal of Willfulness Finding

Following remand from an appeal which reversed the court's willfulness finding the court again granted plaintiff's motion for attorneys’ fees under 35 U.S.C. § 285. "The Court previously found this case exceptional under the now-overruled [Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014)] Federal Circuit approach. That ruling was based on [defendant's] behavior during litigation and the jury’s finding of wilfulness. On appeal, the wilfulness finding was reversed and the case remanded for a determination whether an award of attorneys’ fees was still merited. . . . [A]n award of fees is still appropriate because most of the underlying facts supporting an award of attorneys’ fees have no connection to the now-vacated wilfulness finding. . . . [Defendant] hid its infringement for years, provided false discovery responses, filed summary judgment papers even though it knew its product infringed, argued a never fully explained theory that [plaintiff] did not own the underlying patent, and during and after trial played semantic games regarding what its machines did and what functions were important to it and its customers. . . . In fact, either the substantive strength of many of [defendant's] litigating positions or the 'unreasonable manner in which the case was litigated' make this case stand out from others."

Integrated Technology Corporation v. Rudolph Technologies, Inc., et al, 2-06-cv-02182 (AZD August 8, 2014, Order) (Silver, J.)