Failure to Apportion Damages on Claim-by-Claim Basis Does Not Render Expert’s Opinion Unreliable

The court denied defendant's motion to exclude the testimony of plaintiffs' damages expert regarding a reasonable royalty for failing to apportion damages on a claim-by-claim basis. "Plaintiffs [argue] that [the expert's] opinion is economically justified because he opines that infringing any of the asserted patents would 'have the same economic effect as infringing all of them.' In other words, Plaintiffs lose the same profit whether one patent claim in one patent is infringed, or whether multiple claims in multiple patents are infringed. . . . [T]o the extent that Defendant quarrels with certain factual assumptions made by [the expert] in failing to apportion damages on a claim-by-claim basis, those disputes go to the weight that his testimony should be given. . . . [His] reasonable royalty opinion need not be excluded simply because he did not apportion damages on a claim-by-claim basis."

Integra LifeSciences Corporation et al v. HyperBranch Medical Technology, Inc., 1-15-cv-00819 (DED April 16, 2018, Order) (Burke, MJ)

Huawei Prohibited From Enforcing Chinese Injunctions Against Standard Essential Patents

The court granted defendant Samsung's motion for an antisuit injunction prohibiting plaintiff Huawei from enforcing injunction orders issued by a Chinese court and found that the Chinese injunction orders would frustrate domestic policies. "⁠[Defendant] argues that allowing [plaintiffs] to enforce the Shenzhen Court’s injunction would frustrate specific domestic policies against injunctive relief on [standard essential patents] and general public policies against anticompetitive conduct and breaches of contract. The bulk of precedent supports its position. . . . There is a risk of inconsistent judgments if I were to find that [plaintiff] is not entitled to seek injunctive relief for its SEPs. In addition, in the absence of an antisuit injunction, [defendant] faces the risk of significant harm, not just in China, but with impacts percolating around the world. The Chinese injunctions would likely force it to accept [plaintiffs'] licensing terms, before any court has an opportunity to adjudicate the parties' breach of contract claims. Under these circumstances, the Shenzhen Order 'interfere[s] with 'equitable considerations' by compromising the court’s ability to reach a just result in the case before it free of external pressure on [Samsung] to enter into a 'holdup' settlement before the litigation is complete.'"

Huawei Technologies Co., Ltd. et al v. Samsung Electronics Co., Ltd. et al, 3-16-cv-02787 (CAND April 13, 2018, Order) (Orrick, USDJ)

Change in Primary Reference Does Not Alter Scope of IPR Estoppel as to Non-Instituted Prior Art Combinations

The court denied in part plaintiff's motion in limine to exclude certain obviousness theories due to IPR estoppel. "⁠[F]or the combinations that Defendant tried to raise in the IPR, but which the PTAB did not institute, Defendant may pursue the combinations at trial. For those combinations 'A in view of B' on which the PTAB did not institute, I would regard that as reasonably raising 'B in view of A' also, and thus I reject Plaintiff's assertions to the contrary. On this point, Plaintiff's motion is denied."

Nox Medical ehf v. Natus Neurology Inc., 1-15-cv-00709 (DED April 12, 2018, Order) (Andrews, USDJ)

Questions of Fact Concerning Inventive Concept Preclude Dismissal for Invalidity Under 35 U.S.C. § 101

The court denied without prejudice defendant's motion to dismiss because plaintiff sufficiently pleaded that the asserted claims of its data organization patent encompassed patentable subject matter and that the claims did not lack an inventive concept. "Plaintiff contends that the [patent] solves a computer-specific problem by asking 'when a version should be deleted, not when it can be deleted.'. . . The statements in the specification, the allegations in the FAC and the language of Claim 8 . . . show that the FAC sufficiently alleges that deleting data in response to the combination of a particular time stamp and a measureable characteristic, 'thereby to increase a capacity of said memory' shows an inventive concept to the claims. Whether this recitation reflects a protectable, inventive concept is a question of fact."

Sound View Innovations, LLC v. Hulu, LLC, 2-17-cv-04146 (CACD April 11, 2018, Order) (Kronstadt, USDJ)

$12.5 Million Infringement Verdict Remitted to $3.5 Million

Following a $12.5 million jury verdict for infringement of plaintiff's water system disinfectant patent, the court granted defendants' alternative motion for remittitur, subject to plaintiff's acceptance of a $3.5 million award, because the verdict was excessive. "Instead of apportioning its royalty claim based on a reasonable estimate of the value of the claimed technology, as is required, Plaintiff based its damages theory on the value to [defendants] of all of the chlorine dioxide it created. This theory inflated the damages Plaintiff was entitled to recover, because it included the chlorine dioxide [defendants] created through the use of a non-infringing and prior art technique. . . . [B]y adjusting the parties’ respective proposals by considering their methodological shortcomings, it is possible to ascertain the 'maximum amount sustainable by the proof.'. . . Balancing these two competing proposals, and considering the trial evidence in light of the apportionment analysis, the Court concludes that a remittitur to $3.5 million is appropriate. "

CH2O, Inc. v. Meras Engineering, Inc., 2-13-cv-08418 (CACD April 10, 2018, Order) (Kronstadt, USDJ)

Caller ID Patent Claims Invalid Under 35 U.S.C. § 101

The court granted defendants' motion to dismiss because the asserted claims of plaintiff’s caller ID patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "Plaintiff disputes that the purpose of the Claims is abstract. According to Plaintiff, the purpose is 'to indicate to a subscriber to both call waiting and caller ID, who is already engaged in a call, using an audible tone signal, the existence of an incoming call from a third party whose directory telephone number has been flagged private.' Even accepting this purpose as stated by Plaintiff, the Court finds it to be directed to an abstract idea. That the claims involve functionality of known telecommunications equipment does not detract from this finding."

Morris Reese v. Sprint Nextel Corporation et al, 2-13-cv-03811 (CACD April 9, 2018, Order) (Wright, USDJ)

Patent for Displaying Location-Relevant Communications On a Phone Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s patent for displaying location-relevant communications on a phone encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "⁠[T]he claims of the Asserted Patents are best characterized as directed to: refreshing location-relevant communication services on a phone’s display by obtaining a current location from a location server, selecting communication services using logic in a datastore, and refreshing the display. . . . [T]he claims at issue do more than simply state a result (i.e., display communication services according to current location); they also recite the way in which it is accomplished (i.e., using location retrieved from the location server and functions stored in the datastore). Accordingly, because the specific improvement to the technology of user interfaces claimed in [Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)] was not an abstract idea, the Court must conclude that the similarly specific improvement to user interfaces claimed here is also not an abstract idea."

Local Intelligence, LLC v. HTC America, Inc. et al, 5-17-cv-06437 (CAND April 6, 2018, Order) (Davila, USDJ)