District Court Denies Unopposed Request to Seal Exhibits Where Only Justification for Sealing Was That Parties Designated the Documents Confidential under the Protective Order

March 25, 2015

Defendant Ericsson filed an unopposed motion for leave to file its motion to strike certain paragraphs of a supplemental expert report for the plaintiff under seal. Although the request was unopposed, the district court evaluated whether it was appropriate to seal the motion and accompanying exhibits. In the motion, Ericsson argued that the motion to strike refers to, quotes from, and attaches exhibits which are designated, contain, and constitute protected material under the Protective Order.

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Expert Is Not Permitted to Testify to Alternate Hypothetical Negotiation Dates Where No Hypothetical Negotiation Was Conducted for those Alternate Dates

March 23, 2015

After the parties submitted expert reports in this patent infringement action, Ford objected to Eagle Harbor's damage expert's expected testimony and demonstratives. Ford objected to Eagle Harbor's evidence because it involved multiple dates of possible infringement and the damage expert only calculated his royalty rate based on one possible date of first infringement.

As the district court explained, "[i]n his report, Mr. Wagner provides that, for the alleged infringement by Ford's SYNC system, 'the hypothetical negotiation date is on or around 2007 Q2.' . . . Mr. Wagner's trial exhibits, however, disclose three other possible dates for the date of first infringement. . . . These additional dates are based on the issuance of two of the continuation patents--the '739 Patent and the '119 Patent--and the possibility that Eagle Harbor's damages may be limited for failure to mark. The new dates are March 23, 2010, August 17, 2010, and August 23, 2011. Mr. Wagner did not provide a hypothetical negotiation for any of these new dates."

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Patent Misuse and Patent Exhaustion Asserted as Stand Alone Claims Dismissed for Failure to State a Claim

March 18, 2015

Continental Automotive GmbH and Continental Automotive Systems, Inc. (collectively "Continental") filed a multi-claim lawsuit against iBiquity Digital Corporation ("iBiquity"), which asserted causes of action for patent exhaustion (Count I), patent misuse (Count II), declaratory judgment of patent rights (Count III), as well as several state law claims. iBiquity moved to dismiss Counts I, II, and III, arguing that patent exhaustion (Count I) and patent misuse (Count II) do not arise under federal patent law because they are not proper independent claims but, rather, are defenses to an anticipated patent infringement suit. iBiquity also contended that Continental's claim seeking a declaratory judgment of patent rights (Count III) does not arise under federal patent law because it is merely a state law breach of contract claim in disguise, seeking to interpret a license agreement.

The district court began its analysis with the patent exhaustion and patent misuse claims. "iBiquity argues that the claims are merely defenses and not affirmative causes of action and, as such, they do not 'arise under' federal patent law. Def.'s Mem. Supp. Mot. Dismiss 6-8. Continental responds that this argument is irrelevant '[b]ecause subject matter jurisdiction in a declaratory judgment action is based on the claims that could be brought by the declaratory judgment defendant, rather than the declaratory judgment plaintiff.' Pl.'s Resp. Mot. Dismiss 5. Moreover, Continental asserts that patent misuse may be asserted as an affirmative claim. Id."

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District Court Denies Motion to Stay Pending Ex Parte Reexamination Where Defendant Was Competitor of Plaintiff and Chose Ex Parte Reexamination over Inter Partes Reexamination

March 16, 2015

Plaintiff Ecolab Inc. ("Ecolab") filed a patent infringement action alleging that Gurtler infringed Ecolab's patent for "SANITIZING LAUNDRY SOUR," United States Patent No. 6,262,013 (the "'013 Patent"). Gurtler subsequently filed a Request for Ex Parte Reexamination of the '013 Patent. Gurtler then filed a motion to stay and the United States Patent and Trademark Office ("PTO") granted Gurtler's Request for Ex Parte Reexamination of all claims of the '013 Patent.

In support of its motion to stay and lack of prejudice to Gurtler, Gurtler argued that Ecolab tactically delayed serving its complaint for four months, which demonstrates that "time is not of the essence" to Ecolab. Additionally, Gurtler argued that because the case was in the early stages of discovery, there was no prejudice to Ecolab. Ecolab argued it will be unduly prejudiced because it is one of Gurtler's direct competitors, its ability to litigate its claims will suffer, and because Gurtler delayed in seeking reexamination.

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District Court Denies Motion to Stay Pending Ex parte Reexamination Where Defendant Was Competitor of Plaintiff and Chose Ex Parte Reexamination over Inter Partes Reexamination

March 11, 2015

Plaintiff Ecolab Inc. ("Ecolab") filed a patent infringement action alleging that Gurtler infringed Ecolab's patent for "SANITIZING LAUNDRY SOUR," United States Patent No. 6,262,013 (the "'013 Patent"). Gurtler subsequently filed a Request for Ex Parte Reexamination of the '013 Patent. Gurtler then filed a motion to stay and the United States Patent and Trademark Office ("PTO") granted Gurtler's Request for Ex Parte Reexamination of all claims of the '013 Patent.

In support of its motion to stay and lack of prejudice to Gurtler, Gurtler argued that Ecolab tactically delayed serving its complaint for four months, which demonstrates that "time is not of the essence" to Ecolab. Additionally, Gurtler argued that because the case was in the early stages of discovery, there was no prejudice to Ecolab. Ecolab argued it will be unduly prejudiced because it is one of Gurtler's direct competitors, its ability to litigate its claims will suffer, and because Gurtler delayed in seeking reexamination.

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District Court Agrees to Stay Action Pending Inter Partes Review ("IPR") But Only if Defendants Agreed to Be Bound by Estoppel Provisions Even if They Withdraw from the IPR

March 9, 2015

After the defendants moved to stay a patent infringement action pending an IPR, the district court analyzed the impact of a potential withdrawal of petitioners from the IPR. The district court began its analysis with the understanding that this was a contingency that might not occur. "The contingency of a PTAB decision after IPR petitioner withdrawal would arise only if all IPR petitioners were to withdraw. I have no idea whether this is at all likely. Nor do I have a basis to speculate upon the reasons why a PTAB petitioner may choose to withdraw after the case has progressed to the point at which a written decision would be appropriate."

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District Court Declines to Stay Proceeding Pending Inter Partes Review Where Plaintiff and Defendant Were Direct Competitors

March 4, 2015

Card-Monroe Corp. ("CMC") manufactures tufting machines and equipment. CMC holds several patents that pertain to its machines and equipment. Tuftco Corp. ("Tuftco") is a competitor of CMC, which also engages in the manufacture and sale of tufting machines. CMC filed a patent infringement action against Tuftco, and Tuftco subsequently filed a Petition for Inter Partes Review ("IPR") of the patent-in-suit. Tuftco then filed a Motion to Stay Pending Inter Partes Review of Proceedings.

In their briefs on the motion to stay, the parties disagreed as to whether CMC would be unduly prejudiced by a stay of these proceedings. Tuftco argued that the "only potential basis for a claim of undue prejudice is the delay inherent to any stay of proceedings," but CMC claimed that it would be prejudiced if the district court stayed these proceedings because the parties are direct competitors.

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Even after Jury Trial and Final Judgment in Favor of Patent Owner, Collateral Estoppel of Invalidity from a Subsequent, Other Proceeding Applies

March 2, 2015

The plaintiff, U.S. Ethernet Innovations, LLC ("USEI"), filed a patent infringement action against several defendants in the Eastern District of Texas. The district court then transferred the cases to the Northern District of California. While litigation in the Northern District of California proceeded, USEI filed another patent infringement case against Texas Instruments Incorporated ("TI").

The TI case then proceeded with two jury trials. The first jury returned a verdict finding that the patents-in-suit ("Early Transmit Patents") were not invalid. The second jury found that TI infringed the asserted claims of U.S. Patent No 5,434,872 and awarded USEI $3,000,000.00 in damages. After the district court rejected TI's equitable defense of laches, the district court entered a Final Judgment in the case, but the Final Judgment "specifically noted that the Court was still considering the issues raised in the parties' post-verdict briefing."

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Three Strikes and You are Out: District Court Grants Summary Judgment on Lack of Standing, No Infringement and Invalidates the Patent

February 26, 2015

Plaintiff NOV filed a patent infringement action asserting that defendant Omron had infringed NOV's patent (U.S. Patent No. 5,474,142 or the '142 Patent). Specifically, NOV alleged Omron's oil rig automation control system has an automatic driller function that infringes one or more claims of the '142 Patent.

After years of litigation, Omron filed dispositive motions asserting lack of standing, no infringement and invalidity of the '142 Patent. The district court first found that NOV had no standing to assert the patent as the owner of the patent had only "agreed to assign" the patent. "In sum, the prevailing Federal Circuit case law makes clear the "agrees to assign" language in the ACA was not a present assignment. The ACA further indicates Varco, L.P. was to issue a separate assignment document, but there is no such piece of paper. Because NOV is unable to show the ACA was a present assignment of assets, the Court finds, on this ground alone, NOV has failed to satisfy its burden of proving ownership and, consequently, standing to sue."

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District Court Denies Motion in Limine Seeking to Preclude Advice of Counsel Defense Even Though Plaintiff Was not Able to Obtain Information about the Defense During Discovery

February 24, 2015

The Plaintiff filed a motion in limine seeking the district court to preclude the Defendant from offering at trial any testimony regarding the Defendant's opinion of counsel defense that was not disclosed during discovery. As explained by the district court, the Plaintiff also alleged that the Defendant selectively produced certain documents pertaining to the Defendant's opinion of counsel defense and instructed witnesses not to testify on matters concerning the Defendant's investigation into the Plaintiff's allegations of patent infringement and theft of trade secrets.

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District Court Denies Motion to Lift Stay Pending Inter Partes Review Even Where Plaintiff Agreed to Not Pursue Claims That Were Subject to Review

February 19, 2015

Barco filed a patent infringement action in September 2011 against Defendants Eizo Nanao Corporation and Eizo Nanao Technologies, Inc. ("Eizo"), alleging that Eizo infringed various claims in U.S. Patent No. 7,639,849 (the '849 patent). After Barco filed a reissue application with the United States Patent and Trademark Office (the "PTO"), in which it added seventy-eight new claims to the original thirty-seven claims of the '849 patent, the district court stayed the action.

Eizo subsequently filed an inter partes reexamination, seeking to reexamine the original thirty-seven claims of the '849 patent and the district court continued the stay even though the patent was reissued by the PTO as RE43,707 (the '707 patent), because the inter partes reexamination proceedings initiated by Eizo were still pending before the PTO.

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Rosebud v. Adobe: District Court Grants Summary Judgment of No Remedies Where Plaintiff Could Not Prove Actual Notice of Patent Application

February 17, 2015

Rosebud filed a patent infringement action Adobe and Adobe moved for summary judgment arguing that Rosebud had no remedy for its patent against Adobe. Adobe based its summary judgment motion on the argument that the patent-in-suit did not issue until after Adobe's accused product was discontinued.

As set out by the district court, the parties did not dispute that the accused feature of Adobe's product (Collaborate Live) was discontinued and could not have been used after January 2013. As the '280 patent issued on November 5, 2013, Rosebud could not recover post-issuance damages. Instead, Rosebud sought to recover provisional remedies under 35 U.S.C. ยง 154(d), based on the publication of the '280 patent application on December 29, 2011, which requires the defendant to have actual knowledge of the published patent application.

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Court Denies Motion to Stay Pending New Inter Partes Review ("IPR") Denied Where PTO Had Previously Declined to Institute an IPR on Asserted Claims and Trial Was Rapidly Approaching

February 11, 2015

The defendant, Samsung, had previously filed IPRs on several of plaintiff's patents, which were granted and denied in part. After the plaintiff reduced its asserted claims to those that the PTO had declined to institute review, Samsung filed an additional IPR to challenging the asserted claims and moved to stay pending the new IPR.

In requesting the stay, Samsung argued that "the IPRs will address the validity of all asserted claims of the patents-in-suit" and "[c]onsidering the current status and likely disposition of each USPTO proceeding for the patents in suit, there is strong possibility that nearly all of Rembrandt's infringement allegations will be moot." The district court observed that the "simplification offered by Defendants is not likely based on the recent denials of IPR institutions."

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Court Continues Stay Pending Inter Partes Review Even Though PTO Declined to Institute Review on Patent

February 9, 2015

The district court had previously stayed the patent infringement action between Nidec Motor Corporation and Broad Ocean Motor pending the PTO's decision on whether to institute an inter partes review on three of the patents-in-suit. After the PTO declined to institute review on one of the patents, the plaintiff moved to lift the stay on that patent.

As explained by the district court, "the parties notified the Court that, on January 21, 2015, the United States Patent and Trademark Office ("PTO") instituted Inter Partes Review ("IPR") against the '895 and '349 Patents but it denied institution against the '970 Patent. The parties state that they met and conferred on January 26, 2015, but the parties did not agree as to whether the Court should lift the stay at this time with respect to the '970 Patent."

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District Court Grants Stay Before The PTO Institutes An IPR

February 6, 2015

In MLC Intellectual Property, LLC v. Micron Technology, Inc., Case No. 14-cv-3657 (N.D. Cal.), MLC filed its lawsuit on August 12, 2014, accusing Micron of infringing U.S. Patent No. 5,764,571 ("the '571 patent"). On October 15, 2014, Micron answered the complaint and asserted counterclaims for declaratory judgment of non-infringement and invalidity of the '571 patent. At the initial case management conference on November 21, 2014, the Court set a further case management conference for March 20, 2015, the tutorial hearing for June 10, 2015, and the claim construction hearing for June 17, 2015.

On December 24, 2014, Micron filed a petition for inter partes review ("IPR") at the U.S. Patent and Trademark Office ("PTO"), challenging the patentability of at least each asserted claim of the '571 patent. The PTO accorded the IPR petition a filing date of December 24, 2014, and thus the PTO must issue a decision on whether to institute the IPR no later than June 24, 2015. On December 29, 2014, Micron filed its motion to stay pending the IPR. In its motion, Micron sought a stay through a final written decision of the IPR including any appeals to the Federal Circuit. MCL partially opposed only the portion of the stay beyond the final written decision of the PTO rather than after all appeals have been exhausted. MCL also argued that the case should not be stayed at this time until after the claim construction was completed.

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