Patent Lawyer Blog

Plaintiff, The Sliding Door Company ("Sliding Door"), brought an action for patent infringement against KLS Doors, LLC ("KLS Doors") alleging infringement of a patent for a sliding door system. KLS Doors filed a counterclaim for declaratory judgment for, among other things, that it did not infringe the patent and that the patent was invalid. Sliding Door moved to dismiss several of the counterclaims, including the counterclaims for declaratory judgment for non-infringement and invalidity.

As explained by the district court, Plaintiff created a "sliding door systems that provides a smooth and quiet glide with a safety mechanism and design flexibility. (Compl. ¶ 9). Plaintiff manufactures and sells sliding doors incorporating this patented technology including room dividers, closet doors, office partitions, and wall slide doors. (Compl., ¶10). On January 19, 2010, U.S. Patent No. 7,647,729 B2 (the "729 Patent") was issued by the United States Patent and Trademark Office ("USPTO") for "Sliding Door System" with Plaintiff as the assignee of the 729 Patent (Compl., ¶¶ 13-14). Plaintiff's Sliding door System features a distinctive appearance that identify to customers that the origin of the product lies with Plaintiff and allow for unique and non-functional decorative panel arrangement options. (Compl., ¶¶ 19, 21)."

Defendant Universal Remote Control, Inc. ("Universal Remote") filed a motion to stay a patent infringement action filed by Universal Electronics, Inc. ("Universal Electronics") pending an Inter Partes Review in the United States Patent and Trademark Office ("PTO"). Universal Remote and Universal Electronics are competitors in the universal remote control business.

Prior to the Markman hearing, Universal Remote filed a notice of intent to file petitions for Inter Partes Review, notifying the Court that it was preparing to file a motion to stay the case pending the outcome of the PTO proceedings. Before the motion to stay was filed, the district court held the Markman hearing and issued its claim construction order.

Plaintiff Nano-Second Technology filed a patent infringement action against Dynaflex International, GForce Corporation, d/b/a/ DFX Sports & Fitness. As part of the patent infringement action, Nano-Second alleged "that Defendants have infringed upon its '311 Patent by selling, importing, making, offering, or using wrists exercisers ("Accused Products") that fall within the scope of the claims of the '311 Patent. First Amended Complaint "FAC" ¶ 12. Further, Plaintiff alleges that these unpatented Accused Products and their packaging are marked with the patent number of the '311 Patent without Plaintiff's consent. Id. ¶¶ 21, 41. Plaintiff claims that in addition to falsely marking their Accused Products and infringing Plaintiff's patent, Defendants have contacted Plaintiff's potential and existing customers misrepresenting that they own the '311 Patent. Id. ¶ 25."

The defendants moved for partial summary judgment, including asserting that the period of damages available for plaintiff did not begin until the plaintiff acquired the patent. "Defendants assert that Plaintiff cannot seek damages for patent infringement that occurred before September 10, 2010, because plaintiff did not have legal title to the '311 Patent before that date."

James R. Taylor ("Taylor") filed a patent infringement action against Taylor Made Inc. ("Taylor Made"). Taylor Made filed a motion to dismiss the action on the ground that Taylor did not have standing to maintain the patent infringement action because Taylor's ex-wife had not been made a party to the lawsuit and she had an ownership interest in the asserted patent.

As explained by the district court, "[t]he Plaintiff and Ms. Taylor were married on February 14, 1987. Dkt. 24-1. The Plaintiff subsequently obtained the Patent on September 15, 1998 for a storm drainage conduit plug and sealing band. Dkt. 1. The Plaintiff and Ms. Taylor obtained a Final Judgment of Dissolution of Marriage (A "Divorce Settlement") from a Florida state court on March 7, 2011. Dkt. 24-1; see also In re the Marriage of James R. Taylor and Mary Louisa Taylor, Case No. 2006-Dr-10057-NC. The Divorce settlement subjects the Taylors' marital assets to equitable distribution, in so doing notes that the primary assets of the marriage are three United States patents, specifically: (1) '5,224,514/July 6, 1993;" (2) "5,316,045/May 31, 1994;" and (3)[5], 806566/September 15, 1998."

In this ITC proceeding, the Respondents filed a motion for leave to file motions for summary determination after the deadline for filing motions for summary determination set by the procedural schedule. Respondents asserted that good cause existed for granting the motion because it would efficiently resolve all of the issues in the Investigation and that Complainants infringement contentions indicated they would be relying on expert testimony to prove their infringement claims.

Respondents asserted that the expert report only provided conclusory assertions regarding infringement under the Respondents' and Staff's proposed construction of the claim terms. Respondents asserted that good cause existed to grant the motion based on their reliance and Complainants' expert's failure to address Respondents' and Staff's proposed constructions.

Promega Corporation ("Promega") filed a patent infringement action against Life Technologies Corporation ("Life Technologies"), among others, over four patents pertaining to a type of DNA testing called "multiplex amplification of shorten tandem repeat loci." Prior to trial, the district court determined that two of the defendants sell testing kits that met limitations for one or more claims in patents that Promega owns. At trial, a question remained as to whether the defendants were engaging in acts prohibited by the Patent Act because many of the accused products were manufactured and sold in foreign countries.

At trial, Promega asserted that under Section 271 of the Patent Act the defendants foreign sales of infringing products violated the Patent Act because a substantial portion of the components of the accused products were supplied from the United States. Promega asked the jury to find that all of defendants' sales met the requirements of Section 271. The jury agreed with plaintiff and awarded more than $50 million in damages.

Plaintiff Unwired Planet ("UP") filed a patent infringement action against Apple asserting over 247 claims in ten different patents. Apple filed a motion to limit the number of claims. In the motion, Apple asserted that UP had included approximately 80% of the total number of claims in the patents. Apple asserted that if the claims were not narrowed, then the case would be unmanageable and would unfairly burden Apple.

As justification for its motion, Apple also pointed to the parties' prior litigation history in 2011 at the International Trade Commission. As explained by Apple, UP accused the same products in this case, the iPhone, the iPad and the iPod Touch, in the ITC action. Therefore, Apple assert, UP should know how the products work, what they do, and should have an adequate understanding of the case to narrow the claims. Apple argued that the asserted claims should be reduced to fifty or sixty claims.

Wednesday, May 22, 2013
1:00pm - 2:00pm

The America Invents Act:
Litigation in the Patent Office
How to Take Advantage of the New Inter Partes Review Process

The America Invents Act includes a new inter partes review procedure that takes the place of the old inter partes reexamination. This new litigation component is likely to drastically alter the strategy and potential outcomes from the old reexamination process. This webinar will explore how to best use this new procedure to your advantage.

Click here to register for the webinar.

Speakers

Stanley M. Gibson | Chairman, Patent Litigation Group
Stan Gibson is an experienced trial lawyer, who has focused on high-stakes cases involving complicated technology and bet-the-company cases in the entertainment industry. He is the Chairman of JMBM's Patent Litigation Group and the publisher of the Patent Lawyer Blog. The media frequently calls upon Stan to explain the significance of court decisions, and he has been quoted by the Wall Street Journal, Financial Times, Forbes, Bloomberg BusinessWeek, New York Times, Los Angeles Times, Thompson Reuters, American Lawyer, National Law Journal, ABA Journal, Los Angeles Daily Journal and other publications.

Gregory S. Cordrey | Partner
Greg focuses his practice on patent litigation as well as civil litigation involving complex technology. He has litigated patent cases throughout the U.S., with extensive experience in the Central and Northern Districts of California, and the Eastern District of Texas. In addition, Greg has practiced before the Federal Circuit and the United States Patent and Trademark Office as a registered patent attorney with experience in patent reexamination proceedings. Greg also has extensive experience with patent licensing, including successfully negotiating a wide range of license agreements, particularly with Fortune 500 companies, and advising regarding IP strategy.

Date and Time

Wednesday, May 22, 2013
1:00pm - 2:00pm

Place

Online, via GoToWebinar.com.

Cost

There is no charge for this program.

RSVP

Click here to register for the webinar.

Questions?

Contact Doreen Filice at 310.201.3589 or DFilice@jmbm.com if you have any questions.

This activity has been approved for one hour of Minimum Continuing Legal Education credit by the State Bar of California. Jeffer Mangels Butler & Mitchell LLP cerifies that his activity conforms to the standards for approved education activities prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education.

The University of Illinois filed a patent infringement action against Micron Technology. During the litigation, Micron sent an email to a number of individuals, which included many professors at the University of Illinois in the engineering department. A part of the email stated that "[b]ecause Micron remains a defendant in a patent infringement lawsuit that UIUC filed against Micron in Federal court in Illinois on December 5, 2011, effective immediately, Micron will no longer recruit UIUC students for open positions at any of Micron's world-wide facilities." The email also stated that Micron will withhold funding from the University by suspending scholarships and professor research.

The University of Illinois moved for an injunction to bar Micron from sending further communications that it characterized as harassing and meant to coerce it into settling its patent litigation lawsuit. Micron asserted that the motion should be denied and that the University should be sanctioned for filing the motion.

Potter Voice filed a patent infringement action against Apple, Google, HTC, Sony, LG, Motorola, ZTE, Kyocera, Sharp, Huawei, Pantech, Research in Motion, Microsoft and Nokia. Many of the defendants filed several motions to dismiss pursuant to Fed.R.Civ.P. 12(b)(6).

After addressing the pleading standard for determining a Rule 12(b)(6) motion and denying certain motions without prejudice based on severance and transfer issues, the district court turned to the allegations of induced infringement. As explained by the district court, "[e]ach of the defendants who filed a motion to dismiss argues that the allegations in the plaintiff's complaint are not sufficient to state a claim for inducement of
infringement. To allege induced infringement, the plaintiff must allege direct infringement by another, knowing inducement of that infringement by the defendant, and the defendant's specific intent to encourage another's infringement. Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1363 (Fed. Cir. 2012). In addition, the plaintiff must allege that the defendant had knowledge of the plaintiff's patent. Global-Tech Appliances, Inc. v. SEB S.A., ___ U.S. ___, ___, 131 S. Ct. 2060, 2068-69 (2011). "The requirement that the alleged infringer knew or should have known his actions would induce actual infringement necessarily includes the requirement that he or she knew of the patent." DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006)."

As the litigation between Motorola and Apple rages on throughout the country, one judge has had enough of an ever increasing number of claims and patents asserted by both companies. As explained by the district court, "[b]oth Apple and Motorola greatly expanded the scope of this patent litigation by, among other things, supplementing patent infringement and invalidity contentions."

As part of these supplemental infringement and invalidity contentions, the asserted claims and patents dramatically increased. "The litigation now includes over 180 claims asserted from the 12 patents, and the parties dispute the meaning of over 100 terms from those claims."

Volterra Semiconductor ("Volterra") filed a motion to prevent Primarion from offering evidence regarding the subjective prong of the Seagate test on willful infringement. See In re Seagate Technology, LLC 497 F.3d 1360 (Fed. Cir. 2007). As explained by the district court, "Volterra argues that Primarion's Seventh Supplemental Responses to Volterra's Interrogatory No. 7 demonstrate that the willfulness witnesses identified by Primarion (Sandro Cerato, Arun Mittal and Ken Ostrom) may offer testimony at trial that Primarion's decision to continue to market and produce infringing devises after receiving Volterra's cease and desist letter was based, in part, on an investigation undertaken by counsel."

Based on this interrogatory response, Volterra contended that Primarion was seeking to use the privilege as both a sword and a shield by presenting evidence of counsel's investigation to show that it took the cease and desist letter seriously, while also asserting the attorney client privilege to block any discovery as to the investigation.

In this ITC investigation, Respondents Yantai Zhenghai Magnetic Material Co., Ltd., Anhui Earth-Panda Advance Magnetic Material Co., Ltd., and Ningbo Jinji Strong Magnetic Material Co., Ltd. (collectively, "Manufacturing Respondents") moved to compel discovery responses from Complainants Hitachi Metals, Ltd., and Hitachi Metals North Carolina, Ltd. (Collectively, "Hitachi Metals").

The motion was based on the Manufacturing Respondents argument that Hitachi was improperly asserting privilege regarding the pre-filing investigation conducted by Kroll Advisory Solutions.

Princeton Digital Image Corporation ("PDIC") filed several patent infringement actions against Hewlett-Packard, Fujifilm, Xerox, Facebook and Ricoh, among others. The Defendants moved to dismiss the complaint for lack of standing. The case is based on two patents for digital image processing technology in cameras, computers and other devices. In May 2009, a predecessor to PDIC purchased the patents from GE.

The following four decisions were reported in patent cases pending in the Central District of California for the period of March 18 through March 29, 2013.

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com/a>.