After Claim Construction, District Court Allows Opposing Experts to Testify to Different Definitions of "Using" At Trial and the Jury Can Decide Who Had the Better Interpretation

July 1, 2015

The parties filed opposing motions against each side's expert witness over a dispute between the parties as to what the word "use" means. In its Markman order, the district court had construed the term "Internet Protocol network" ("an Internet Protocol network," "network utilizing at least one Internet Protocol," and "a network utilizing at least one Internet Protocol") to mean "an untrusted network using any protocol of the Internet Protocol Suite including at least one of IP, TCP/IP, UDP/IP, HTTP, and HTTP/IP. . . ."

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District Court Orders Transfer of Case During Claim Construction Briefing: Did the Transfer Stay the Briefing Deadlines?

June 29, 2015

Defendants LG Electronics Inc. and LG Electronics U.S.A., Inc. (collectively, "LG") filed a motion to clarify the district court's order transferring the case to the district of New Jersey, seeking a ruling that the court's deadlines were suspended in view of the transfer order. The district court had granted LG's motion to transfer on § 1404(a) convenience grounds.

Prior to the transfer order, the district court had entered a scheduling order that set a number of deadlines through trial, including a deadline for LG's Responsive Claim Construction brief. LG's motion asked the court to find that the transfer order suspended all pending deadlines.

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Court Denies "Emergency" Motion to Lift Temporary Stay Noting That Plaintiff "Is Palpably Irritated," But "That's Not Going to Cut It"

June 24, 2015

In this patent infringement action, Meyer Products LLC ("Meyer Products" or "defendant") filed a motion to stay the case pending an inter partes review. After the motion was filed, the court set a briefing schedule. As part of its standard operating procedure, the court entered a temporary stay of the proceeding until defendant's motion could be decided on the merits.

In the middle of the briefing schedule and before plaintiff's opposition to the motion for stay was due to be filed, plaintiff filed an "emergency" motion to lift the temporary stay.

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Emergency Motion to Stay Granted Where PTAB Issued Decision Invalidating All Asserted Claims

June 22, 2015

Defendants filed an emergency motion to stay the case pending an appeal of the PTAB's decision that invalidated all of the asserted claims in the patent-in-suit. Earlier in this case, Defendants had petitioned for inter partes review ("IPR") of all of the claims at issue in the patent. The PTAB granted review, and the Defendants subsequently moved for a stay pending completion of the IPR.

Although the court acknowledged that the IPR process had the potential to simplify issues for trial, the court determined "that a stay was not justified because the parties had made significant progress toward trial and a stay would deny the Plaintiff an expeditious resolution of its patent rights." As a result, the litigation and the IPR proceeded concurrently.

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District Court Stays Patent Infringement Action Pending Inter Partes Review Prior to Institution of Review by Patent Trial and Appeal Board

June 17, 2015

The plaintiff CRFD Research, Inc. ("CRFD") filed a patent infringement action defendants Dish Network Corporation, Dish DBS Corporation, Dish Network L.L.C., Echostar Corporation, and Echostar Technologies L.L.C. (collectively, "Dish Network"). CRFD also filed separate actions against defendants Hulu, LLC ("Hulu"), Netflix, Inc. ("Netflix"), and Spotify USA Inc. ("Spotify"). CRFD alleges that each of the above-captioned defendants infringe U.S. Patent No. 7,191,233 ("the '233 Patent").

Certain of the defendants, Hulu, Netflix, and Spotify, filed a petition for inter partes review ("IPR") of the '233 Patent with the Patent Trial and Appeal Board ("PTAB"). Those same defendants then filed a motion to stay the proceeding pending the review by the PTAB, even though the PTAB had not yet accepted the petition for hearing. Dish Network then filed a separate petition for IPR and also filed a motion to join the other defendants' Joint Motion to Stay.

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Case Dismissed After Claims Upon Which Lawsuit Was Initiated Were Cancelled During Re-Examination

June 15, 2015

Defendant Extended Disc North America, Inc. ("EDNA") filed a motion for summary judgment of non-infringement and invalidity, and, alternatively, a motion to dismiss against plaintiff Target Training International, Ltd.'s ("TTI"). TTI had filed its complaint for patent infringement against EDNA on September 17, 2010, alleging that EDNA directly infringed at least Claim 1 of the patent-in-suit by performing the methods claimed in the patent and by using or selling services that use the methods claimed in the patent.

Extended DISC International, Ltd. ("EDI") filed a request for ex parte reexamination of the patent-in-suit with the United States Patent & Trademark Office ("PTO"). EDNA moved to stay the case pending the outcome of the reexamination. The court initially denied the motion to stay. On January 6, 2012, the PTO issued a final office action rejecting all of the claims in the patent-in-suit. The court subsequently issued an order staying the case until the PTO concluded reexamination and a certificate of reexamination was issued.

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Retailer Permitted to Sell Existing Inventory after Preliminary Injunction Issued against Manufacturer

June 10, 2015

After the plaintiff Cordelia Lighting, Inc. ("Cordelia") obtained a preliminary injunction against Zhejiang Yankon Grp. ("Yankon"), Cordelia sought to add certain retailers to the injunction. Cordelia owns U.S. Patent No. 8,474,204 ("the '204 Patent"), which is entitled "Recessed LED Lighting Fixture" and describes a fixture designed to hold an LED light bulb. Cordelia alleged that Yankon infringed the '204 Patent by making and selling a product called the "Utilitec Pro LED Recessed Retrofit Downlight" Yankon sells these products to Lowe's Companies, Inc. and Lowe's Home Centers, LLC ("Lowe's").

In its effort to add Lowe's to the injunction, Cordelia argued that Cordelia first argued that Lowe's should be enjoined because it is in "active concert or participation" with Yankon. The district court explained that "[s]ignificant to the analysis here, '[a]ctions that aid and abet in violating the injunction must occur after the injunction is imposed for the purposes of Rule 65(d)(2)(C).' Blockowicz v. Williams, 630 F.3d 563, 568 (7th Cir. 2010). It is undisputed that Yankon manufactures the Accused Products in China and then sells them to Lowe's, freight on board, in China. (See Declaration of Stephen Lobbin, Doc. No. 107-1, Ex. E (Deposition of Kevin Zhao at 36:15¬37:2).) In other words, once Yankon sells a unit of product to Lowe's, Yankon receives payment and no longer has any involvement with the end sales of the products to consumers. The Injunction Order prevents Yankon from making, selling, or importing the Accused Products. (Injunction Order at 14.) To be properly subject to the Injunction Order, Lowe's would have to aid or abet, or be a privy to, Yankon taking such actions. But, Lowe's fulfills neither requirement; it is hoping to sell off its own accumulated inventory of the Accused Products. Lowe's has already purchased this inventory, and is not continuing to purchase Accused Products from Yankon (which would clearly constitute a violation of the Injunction Order).

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Claw Back of Privileged Documents Fails Where Defendants Had Used the Documents in Depositions, Expert Reports and in Briefs without Objection

June 8, 2015

Defendants filed a motion to compel Adaptix to re-produce documents that Adaptix had clawed back on the grounds of privilege. Adaptix had early produced the documents in several productions. The Defendants argued in the motion that even if Adaptix could demonstrate the documents are privileged, Adaptix waived the privilege because Defendants had notified Adaptix that they were relying on the documents at least nine months before Adaptix sent its clawback letter. Defendants pointed out that they had relied on information disclosed in the documents in depositions, expert reports, and briefing, all without any objection from Adaptix.

In response, Adaptix asserted that its data vendor erroneously produced the documents to Defendants without Adaptix knowledge even though they had been properly tagged as privileged. Adaptix also asserted that the documents fell within the protections of the attorney client work product doctrine because they pertained to testing that was performed for purposes of litigation at the direction of Adaptix's attorneys. Adaptix then argued that it was only in March of 2015 that it "eventually realized the error of Defendants' access to the documents at issue and promptly sent a letter clawing them back."

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District Court Denies Section 101 Challenge to Patent Validity Where Claims Described a Specialized System

June 3, 2015

Defendant Murphy USA Inc. ("Murphy") filed a motion for summary judgment of invalidity as to certain claim U.S. Patent No. 6,076,071 ("the '071 Patent") and one claim of U.S. Patent No. 6,513,016 ("the '016 Patent") on the grounds that the patents are directed to non-patentable subject matter under 35 U.S.C § 101. In its motion, Murphy contended that "[t]he Asserted Claims, directed to an 'automated product pricing system,' cover nothing more than the abstract idea of changing prices from a central location using known electronic components, and are not patent-eligible under § 101." Murphy also presented a chart of one of the claims to demonstrate why each discrete claimed "principle" is purportedly accomplished in a conventional manner.

The district court began its analysis by noting that"[p]atent claims enjoy a presumption of validity. 35 U.S.C. § 282. Beyond listing the claimed elements in a column entitled 'Abstract Commercial Principle,' Defendant has failed to articulate convincingly why it believes the 'automated product pricing system' of the Asserted Claims is considered abstract under the law. By evaluating Claim 24 of the '071 Patent as a whole, the court concludes the Asserted Claims are not abstract under the law."

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Supreme Court's Decision in Teva Does Not Require Federal Circuit to Review Immaterial or Improper Fact-Finding under a Clear Error Standard

June 1, 2015

After an appeal to the Federal Circuit, Defendant Arthrex, Inc. ("Arthrex") filed a motion to reopen the judgment under FRCP 60(b). Arthrex premised its motion on the argument that the judgment should be reopened in light of the Supreme Court's recent holding in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).

Plaintiffs Smith & Nephew, Inc. and John Hayhurst (collectively "S&N") had appealed the district court's decision to grant Arthrex's motion for judgment as a matter of law. As set forth by the district court, under the case law in effect at the time of the appellate decision, the Federal Circuit reviewed all aspects of the district court's claim construction de novo. The Federal Circuit ultimately reversed the decision granting Arthrex's motion for judgment as a matter of law.

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Cascades v. Samsung: Court Denies Motion to Compel Deposition of Trial Counsel but Grants Request to Produce Fee Agreement

May 28, 2015

Defendant Samsung Electronics Co. ("Samsung") filed a motion to compel plaintiff Cascades Computer Innovation, LLC ("Cascades") to produce additional documents and to require its trial counsel to appear for a deposition. Samsung moved to compel the deposition of Cascade's trial counsel based on the argument that Cascades's principal, Anthony Brown, had communicated with the trial counsel (Mr. Niro) regarding licensing and settlement negotiations.

The district court agreed that "[b]ased on the record before the Court, it is clear that Mr. Niro discussed with Brown facts and strategy for Brown's use during licensing and settlement negotiations and also suggested appropriate outcomes." But the district court found that this was not surprising as "[ll]awyers representing clients involved in contract or settlement negotiations do that every day. Doing so does not make the lawyer a witness in resulting litigation."

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Farstone v. Apple: With "far too many disputes," Court orders face-to-face meet and confer to resolve motion to compel

May 27, 2015

Apple filed a motion to compel discovery from Farstone Technology, Inc. ("Farstone") by way of a Joint Stipulation as required by the court's local rules. After the court reviewed the joint stipulation, it found that there were significant problems and that too many disputes remained for the court to resolve.

As a result, the court concluded that the meet and confer process had failed that the parties had not complied with Local Rule 37-1. "After reading the Joint Stipulation, the Court cannot but conclude that the meet and confer process has failed. There are far too many disputed issues. Both sides are not being as reasonable and flexible as they should be and as the Local Rules contemplate. Specifically, Local Rule 37-1 requires counsel to 'confer in a good faith effort to eliminate the necessity for hearing the motion or to eliminate as many of the disputes as possible.' (Emphasis added.)"

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No Vacation in Florida: Court Orders Notice of Vacation Designation Stricken

May 20, 2015

In this patent infringement action between Natural Chemistry LP and Orenda Technologies, Inc. ("Orenda"), Orenda's counsel filed a notice of vacation designation, which the district court characterized as a notice of unavailability.

In considering the notice, the district court began by noting that "[t]he rules of this Court do not provide for filing a Notice of Unavailability as a method to avoid abiding by deadlines and schedules established by the Court or to extend the time for responding to motions."

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PTAB Rejects Samsung's Bid to Join Its Own Previously Initiated IPR Proceeding As An Unjustified "Second Bite At The Apple"

May 19, 2015

In IPR2015-00821, Petitioner Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., sought to join its Petition with a recently initiated IPR proceeding involving the same patent, parties, and counsel. The patent at issue, U.S. Patent No. 8,532,641, is directed to a music enabled communication system. Specifically, Petitioner requested inter partes review of claims 1-3, 5-7, 9, and 10 of the '641 patent using two new references, Ushiroda and Bork, in combination with references Ito, Haartsen, Rydbeck, Nokia, and Galensky, previously relied upon in IPR2014-01181. Pet. 14-46; Motion for Joinder 2-3. The Petitioner conceded that, absent joinder, the institution of inter partes review would be barred under 35 U.S.C. § 315(b) because the petition was filed more than 1 year after the date on which it had been served with a complaint alleging infringement of the '641 patent.

As explained below, the Board exercised its discretion to deny the Petitioner's motion finding that Petitioner had not provided sufficient justification for the delay in asserting the new grounds of invalidity in the current petition. As such, the Petition was merely an attempt for the Petitioner to obtain a "second bite at the apple," which runs contrary to the Board's mandate to provide just, speedy, and an inexpensive resolution of the proceedings under 37 C.F.R. § 42.1(b).

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District Court Orders Submission of Expert Reports on Damages to Determine Proper Usage of Entire Market Value Rule

May 18, 2015

Invista North America S.A. R.L. ("Invistia") filed a patent infringement action against M&G USA Corporation ("M&G"). As the case progressed toward trial, both parties exchanged expert reports on damages, which implicated the entire market value rule.

As explained by the Federal Circuit, the entire market value rule is derived from Supreme Court precedent requiring that the patentee 'must in every case give evidence tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and unpatented features, and such evidence must be reliable and tangible, and not conjectural or speculative.' Astrazeneca AB v. Apotex Corp., --- F.3d. ---, 2015 WL 1529181 at *11 (Fed. Cir. April 7, 2015).

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