PTAB to Apple: No Third or Fourth Bite at the Apple

September 16, 2014

In inter partes proceeding Apple Inc. v. Rensselaer Polytechnic Institute et al., IPR2014-00320, Petitioner Apple sought a second request for rehearing, before an expanded panel of the PTAB, on the Board's decision not to institute an inter partes review of RPI's U.S. Patent No. 7,177,798 ("the '778 Patent"). The Board held that Apple's request was unauthorized and therefore ordered it expunged from the record of the proceeding.

On January 3, 2014, Apple initially filed its IPR petition seeking invalidity of the '798 Patent based three pieces of prior art that Apple alleged anticipated and/or rendered obvious certain claims of the '798 Patent. On April 17, 2014, RPI filed its preliminary response asserting that the Board should deny the petition just as it denied Apple's first petition for inter partes review of the '798 Patent. In its preliminary response, RPI asserted that the Board already considered (and rejected) the same grounds and prior art that Apple now relies on in the second petition. Accordingly, RPI argued that the second petition should be denied because "[t]he Board denied the first petition [which included the same prior art asserted in the second petition] as to all challenged claims because Apple failed to establish that it would prevail in showing that even a single claim of the '798 Patent is unpatentable."

RPI also argued that Apple was time barred under § 315(b) because the "Petition was filed more than one year after Apple was served with a complaint alleging infringement of the '798 Patent." Specifically, RPI refuted Apple's claim that the first lawsuit was a nullity because it was dismissed without prejudice and therefore did not start the one-year clock running under § 315(b):

Apple was served with a complaint alleging infringement of the '798 Patent on October 23, 2012 ("Dynamic I," filed October 19, 2012). Dynamic I was dismissed under the "consolidation" provision of Rule 42 of the Federal Rules of Civil Procedure through a court-ordered coordination of two related cases: Dynamic I, filed by Dynamic Advances LLC, the exclusive licensee of the '798 Patent, and Dynamic ll, jointly filed by Dynamic Advances and Rensselaer Polytechnic Institute ("RPI"). Through the Rule 42 order, the entirety of Dynamic I's nine months of litigation--and the parties' postures in that litigation--was incorporated into Dynamic II. Because of this court-ordered incorporation, the parties in Dynamic II are encumbered by the proceedings of Dynamic I--they did not resume their pre-Dynamic I positions when Dynamic I was dismissed. And Apple cannot establish the grounds for avoiding the one-year statutory bar through its joinder motion because there is no IPR proceeding for Apple to join.

Continue reading "PTAB to Apple: No Third or Fourth Bite at the Apple" »

Motion to Dismiss Granted Where Patent Claimed Unpatentable Subject Matter

September 15, 2014

Amazon.com ("Amazon") filed a motion to dismiss Tuxis Technologies, LLC's ("Tuxis") complaint for failure to state a claim. Tuxis alleged infringement of the 6,055,513 ("the '513 patent") against Amazon. As explained by the district court, the '513 patent relates to a method of upselling. The term "upsell" is defined in the patent to be "an offer or provision of a good or service which is selected for offer to the customer and differs from the good or service for which the primary contact was made." The patentee defined "real time" as "during the course of the communication initiated with the primary transaction or primary interaction."

Amazon moved to dismiss, asserting that the '513 patent's claims are invalid because they do not claim patent-eligible subject matter under 35 U.S.C. § 101. After analyzing the recent case law on section 101 of the Patent Act, including Alice Corp., the district court found that "[i]n applying the framework set out above, it is clear that the claim 1 of the '513 patent is drawn to unpatentable subject matter. It claims the fundamental concept of upselling--a marketing technique as old as the field itself. While the additional limitations of the claim do narrow its scope, they are insufficient to save it from invalidity."

Continue reading "Motion to Dismiss Granted Where Patent Claimed Unpatentable Subject Matter" »

IPR Proceedings Filed Eight Months Apart Is Too Long to Permit Joinder

September 11, 2014

In the Macronix International Co., Ltd. et al. v. Spansion LLC, the PTAB denied Petitioner's motion for joinder under Section 315(c). On November 8, 2013, the Petitioner filed a petition for inter partes review of U.S. Patent No. 7,151,027 ("the '027 patent"), which was later granted on May 8, 2014. Subsequently, on June 4, 2014, the Petitioner filed a second petition for inter partes review of the '027 patent. At that time, the Petitioner also moved to join the two IPR proceedings and proposed a revised schedule in the event its motion for joinder was granted.

The Board explained the factors establishing entitlement to joinder:

As the moving party, Petitioner has the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15, 4 (Apr. 24, 2013).

In support of its motion, the Petitioner argued that joining the cases would only have a minimal impact on the Patent Owner because (1) the Petitioner was relying on the same declarant in both IPRs, (2) both petitions rely on the same piece of prior art as the primary reference, (3) the prior art in the later IPR proceeding already should have been considered by the Patent Owner because the same prior art was asserted in a co-pending ITC investigation, and (4) the proposed revised schedule would add only 7 weeks to the existing schedule, resulting in moving the date for oral argument from January 13, 2015 to March 3, 2015.

The Patent Owner opposed on the grounds that the later IPR petition raises numerous substantive issues that are not present in the first proceeding and it would be prejudiced by the proposed revised schedule, stating that the date for oral argument would have to be extended at least until April 7, 2015.

Under these circumstances, the Board determined that joinder would have a "significant adverse impact on [its] ability to complete the existing proceeding in a timely manner, which weighs against granting the motion for joinder:"

The Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding, and has the discretion to join or not join proceedings to ensure that objective is met. 37 C.F.R. §§ 42.1(b), 42.122. Case IPR2014-00108 was filed more than eight months ago and is already well underway, with Patent Owner having cross-examined Petitioner's Declarant and filed its response, and Petitioner's reply being due on October 6, 2014. See IPR2014-00108, Paper 17. Joinder at this stage would require a lengthy delay in the ongoing review. Further, Patent Owner objects to Petitioner's proposed revised schedule if joinder is permitted. See Paper 10. Nevertheless, while this proceeding is not being joined with Case IPR2014-00108, we will attempt to schedule both proceedings to maximize efficiencies and to complete both in a timely manner.

Because the Petitioner could not show that the issues raised in the second IPR petition could not be resolved in a joined proceeding without substantially affecting the scheduling the first IPR proceeding, the Board held that Petitioner had not satisfied its burden of proof that it was entitled to the requested relief.

**********
It is noteworthy that even in instances where two IPR proceedings involve the same patent and rely on the same declarant and much of the same prior art, the Board will not exercise its discretion to join the proceedings if joinder jeopardizes the Board's ability to secure the just, speedy, and inexpensive resolution of each proceeding.

Macronix International Co., Ltd. et al. v. Spansion LLC, Case IPR2014-00898, Paper 15 (Rice, A.P.J.).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. 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.

Motion for Summary Judgment Based on Apple License as Defense Denied Where Apple Products Were Not Used to Satisfy Any Claim Element

September 10, 2014

In this patent infringement action between Personal Audio ("Personal Audio") and Togi Entertainment, Inc. ("Togi"), the defendants filed a motion for summary judgment based on a license defense. They requested summary judgment "to the extent Plaintiff's claims involve Apple software, products, systems, or services, all of which were previously licensed by Plaintiff under Section 2.2 of the Apple License."

Continue reading "Motion for Summary Judgment Based on Apple License as Defense Denied Where Apple Products Were Not Used to Satisfy Any Claim Element" »

PTAB's Guidelines for Foreign Language Depositions

September 9, 2014

In the Ariosa Diagnostics v. ISIS Innovation Limited inter partes review, the PTAB set for the guidelines for taking depositions in a foreign language as required by 37 C.F.R. § 42.53(c). In addition to the requirement of 42.53(c) that the party calling the witness must initiate a conference with the Board at least five days before the deposition, the Board directed the parties to the following guidelines:

In the guidelines below, "party" refers to the party proffering the witness, and "opponent" refers to the party cross-examining the witness.

1. The party proffering the witness is responsible for providing a "first interpreter" who can interpret using a consecutive mode of interpretation.

2. At least five (5) business days before the cross-examination deposition, the party shall provide to the opponent the name, business address, business telephone number, e-mail address, and resume of the first interpreter.

3. The opponent may engage the services at the counsel table of a "second
interpreter."

4. At least five (5) business days before the cross-examination deposition, the opponent shall provide to the party the name, business address, business telephone number, e-mail address, and resume of the second interpreter.

5. The consecutive mode of interpretation shall be used.

6. If the second interpreter has a disagreement with the first interpreter regarding the interpretation of the question and/or the answer, the second interpreter should inform counsel by note. If counsel desires to raise the disagreement on the record, the second interpreter, using the consecutive mode, will be allowed to interpret the question for the witness, as well as the witness' answer to the second interpreter's interpretation of the question.

7. If there is a disagreement as to interpretation, and the first and second interpreter cannot work out a mutually agreeable interpretation, an objection should be made on the record, and the first and second interpreter should specify on the record what they believe to be the correct interpretation.

8. In such an event, the Board will determine which interpretation, if any, is to be accorded more weight.

9. Collateral attacks with respect to the qualifications of any interpreter, or the manner in which any question or answer was interpreted, shall not be allowed after the conclusion of the deposition.

10. Copies of any documents which an interpreter will be required to "sight translate" at the deposition shall be provided to the interpreter no later than three days before the deposition is to take place. Failure to timely provide the documents may result in their exclusion from evidence. Unless agreed to by both parties, the interpreter shall not reveal to opposing counsel the nature of any document so provided.

11. If, at any time during the deposition, the interpreter is unable to interpret or translate a word, expression, or special term, the interpreter shall, on the record, advise the parties of the issue.

12. An individual may not serve simultaneously as both an attorney for a party and as an interpreter.

In a subsequent decision, in response to being informed that the parties agreed that experts would be deposed in Mexico City, the Board expressed concern about the proper swearing in of the witnesses. The Petitioner informed the Board that the appropriate consular official would swear in the witnesses. The Board then addressed four additional issues raised by the parties concerning the use of translators.

First, the Board stated that voir dire of the interpreter(s) was not required, but could be performed by the parties should they have concerns about the interpreter's qualifications that could not be resolved in advance of the deposition. However, the Board emphasized that such voir dire should be the exception and not the rule. The Board further stated that it will not entertain any objections to a translator's qualification at the time of the deposition that could have been resolved in advance.

Second, the Board reiterated the requirement that the parties provide the other party the name, business address, business telephone number, e-mail addresses, and resume of the first interpreter in order to resolve any concerns about the choice of interpreter in advance of the depiction.

Third, the Board stated that, in accordance with Guideline 30 set forth in Interference No. 104,539 (Paper 54), "[a]t the request of an interpreter, the party and opponent shall provide the interpreter with an opportunity to converse with the witness. Counsel for the party or opponent may inquire on voir dire as to any conversation between the witness and the interpreter." Finally, the Board held that the first interpreter could be used to prepare the witness, but that opposing counsel cannot inquire into the substance of the preparation:

The Board has determined that the same interpreter may be used in the deposition and to prepare the witness, as opposing counsel will have a check interpreter, and thus will have the opportunity to raise any issues as to the interpretation of the question or the witness' answer. We do not think it appropriate that inquiries of the interpreter as to what occurred during the preparation of the witness be allowed, as such inquiries touch on issues of privilege, and perhaps other issues. We do think it is appropriate, however, to permit [Patent Owner] to inquire only as to the fact of whether the interpreter was involved in preparing the witness.

**********
In these decisions the Board has set forth specific procedures regarding the examination of witnesses using a translator. Not surprisingly, many of these procedures, including the use of check translators, are commonly are used in litigation.

Ariosa Diagnostics v. ISIS Innovation Limited, Case IPR2012-00022, Papers 55 and 67 (Green, A.P.J.).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. 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.

Court Rejects Exhibit Lists and Objections That Would "Require a Judge to Shovel Through Steaming Mounds of Objections" and Orders Objections Waived

September 8, 2014

As this patent infringement action headed to trial, the district court scolded both parties for their exhibit lists and, in particular, the objections to the exhibit lists. The district court explained that "Affinity has submitted a 39 page list of 979 exhibits. Out of the first 360 exhibits Ford objected to no less than 250, at which point the court stopped counting, although it appears that the percentage of objections is about the same for the remaining 607 exhibits. Even better, the objections are not actually stated and do not refer to specific portions of any exhibit. Instead Ford uses a code consisting of 16 symbols."

The district court then criticized Ford's "secret decoder ring" of objections. "Ford did provide a version of a 'secret decoder ring' so the court could discern, for example, that exhibits marked 'BT' were objected to on the ground that they were 'Admissible for Bench Trial Only,' an objection not listed in the Federal Rules of Evidence. However, most of the exhibits were marked with multiple symbols, requiring repeated references to the 'code.' For example, Plaintiffs Exhibits 174 through 228 were all marked ' R, P, H.'"

Continue reading "Court Rejects Exhibit Lists and Objections That Would "Require a Judge to Shovel Through Steaming Mounds of Objections" and Orders Objections Waived" »

Withholding A Court's Order From the USPTO in A Co-Pending Reexamination May Render A Patent Unenforceable in Litigation

September 5, 2014

In Masimo Corporation v. Philips Electronic North America Corporation, et al., the Philips Defendants moved for leave to amend their answer to add a defense of inequitable conduct based on Masimo's alleged inequitable conduct during the ex parte reexamination of the patent-in-suit. Masimo opposed the amendment on the grounds that it was futile and unduly prejudicial. As summarized below, the Court sided with Philips and allowed the amendment and related discovery.

After setting forth the good cause standard for leave to amend after a deadline in the scheduling order, the Court recited the substantive elements of inequitable conduct required to plead this defense:

"(l) an individual associated with the filing and prosecution of a patent application made an affirmative misrepresentation of a material fact, failed to disclose material information, or submitted false material information; and (2) the individual did so with a specific intent to deceive the PTO." Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009). "[I]n pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO." Id. at 1327. Generally, the materiality required to establish inequitable conduct is "but-for materiality." Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1291 (Fed. Cir. 2011). As for the intent prong, Rule 9(b) states that "[m]alice, intent, knowledge, and other conditions of mind of a person may be averred generally." The relevant "conditions of mind" for inequitable conduct include: "(l) knowledge of the withheld material information or of the falsity of the material misrepresentation, and (2) specific intent to deceive the PTO." Exergen, 575 F.3d at 1327.

In its amended answer, Philips alleged that Masimo's representatives "each failed on several occasions to inform the PTO that the interpretation of the asserted claims of the '984 patent Masimo urged the PTO to adopt had been rejected by this Court, including: (i) when Magistrate Judge Thynge issued her Report & Recommendation ("R&R") regarding summary judgment, (ii) when the PTO issued its Notice of Intent to Issue Reexamination Certificate ("NIRC") based on that rejected construction, and (iii) when the undersigned District Judge issued his Summary Judgment Opinion and Order ("SJ Order") adopting the magistrate's R&R."

Continue reading "Withholding A Court's Order From the USPTO in A Co-Pending Reexamination May Render A Patent Unenforceable in Litigation" »

Sanctions Awarded for "Train Wreck of a Deposition" Where Witness Was Evasive and Counsel Made Inappropriate Objections

September 4, 2014

In this patent infringement action between MAG Aerospace Industries, Inc. ("MAG") and B/E Aerospace, Inc. ("B/E"), MAG filed an ex parte motion as a result of conduct during a deposition. The court began its analysis of the motion by reminding the parties that "[a] deposition is a judicial proceeding that should be conducted with the solemnity and decorum befitting its importance. Lawyers participating in depositions should comport themselves in a professional and dignified manner."

The court went on to state that "[w]hen lawyers behave otherwise, it reflects poorly on the entire judicial process. The purpose of a deposition is for a witness to provide testimony under oath. The testimony may or may not be admissible at trial; nonetheless, the opposing party is entitled to ascertain the witness's knowledge, as imperfect and imprecise as that knowledge may be."

Continue reading "Sanctions Awarded for "Train Wreck of a Deposition" Where Witness Was Evasive and Counsel Made Inappropriate Objections" »

Prior Denial of IPR Petitions Dooms Litigation Stay Based On "Second Round" of Petitions Under the Totality of the Circumstances Standard

September 3, 2014

In CTP Innovations, LLC v. Solo Printing, Case No. 1:14-cv-21499-UU, the Court denied, without prejudice, Defendant's motion to stay the litigation pending the inter partes review of the two patents-in-suit.

In its motion to stay, the Defendant argued the traditional factors considered by court favored a stay, including that the USPTO's analysis will simplify the issues in litigation because third party petitions have challenged all claims of the asserted patents, that the case was in its earliest stages having just been filed a little over two months ago, and that there would be no prejudice to the plaintiff because, as a non-practicing entity, it does not compete in the marketplace with the Defendant and thus any infringement, if proven, could be adequately remedied by monetary damages.

In its opposition to the stay, the Plaintiff explained that the totality of the circumstances must be considered, including that only seven months earlier the PTAB denied a third party's petitions to review the patents-in-suit. The Plaintiff explained that under similar circumstances other courts have denied stays. The Plaintiff also argued that a stay of 6 to 18 months would prejudice its ability to prosecute its claims. Finally, the Plaintiff argued that the likelihood the PTO would grant the IPR petitions was low because they were based on invalidity grounds and prior art that was the same, or substantially similar to, those in the initial, rejected IPR petitions.

In siding with the Plaintiff, the Court agreed that, in addition to the traditional factors, it must consider the totality of the circumstances:

"Courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion" of a USPTO administrative proceeding. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (internal citation omitted). The party asking for a stay must set forth the reasons why a stay should be granted. Landis v. N. Am. Co., 299 U.S. 248, 255 (1936). "A stay pending an administrative proceeding is not automatic; rather, it must be based upon the circumstances of the individual case before the court. . . . In deciding whether to stay a given action, courts frequently consider three factors: (1) whether the stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simply the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set. The court's inquiry is not limited to these three factors-the totality of the circumstances governs." Automatic Mfg. Sys. v. Primera Tech., Inc., No. 6:12-cv-1727, 2013 WL 1969247, at *1 (M.D. Fla. May 13, 2013) (internal citations omitted).

The Court then determined that a stay was not warranted because "all that is pending before the PTO is a petition for inter partes review proceedings." The Court relied on the facts that the PTAB previously denied petitions for inter partes review of the patents-in-suit and that "the petition alone does not indicate any likelihood of success." Thus, a stay could "delay these proceedings for at least six months with little to show."

**********
This decision illustrates an example where the Court determined that a stay was not warranted under a totality of the circumstances, including the fact that the PTAB only recently had denied inter partes review of the patents-in-suit and that there was no indication that the PTAB would institute inter partes review based on the current petitions. However, by denying the motion without prejudice, the Court left open the possibility of revisiting the issue, presumably in the event that the PTAB grants the petitions and institutes review of the asserted claims of the patents-in-suit.
CTP Innovations, LLC v. Solo Printing, Case No. 1:14-cv-21499-UU (S.D. Fla. August 28, 2014) (J. Ungaro).

Apple v. Samsung: Samsung's Invalidity Challenge to Apple's Patents Denied Where Legal Theory Was Not Disclosed until after Trial

September 2, 2014

After the jury trial between Apple and Samsung, and shortly before the July 10, 2014 hearing on post-trial motions, Samsung requested leave to file supplemental briefing to argue that the asserted claims of two of Apple's patents were invalid under 35 U.S.C. § 101, in light of the Supreme Court's decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (June 19, 2014) ("Alice").

The district court permitted the filing of the supplemental briefing on the invalidity issued, but ultimately concluded that Samsung had not timely raised the invalidity issue. "The Court concludes in this case that Samsung could have--but failed to--preserve § 101 invalidity defenses, and that Samsung's request for the Court to adjudicate a legal theory that was disclosed after trial is untimely, regardless of the Supreme Court's intervening decision in Alice. Accordingly, the Court will not consider the merits of Samsung's § 101 arguments."

Continue reading "Apple v. Samsung: Samsung's Invalidity Challenge to Apple's Patents Denied Where Legal Theory Was Not Disclosed until after Trial" »

In an IPR Proceeding With Several Listed Petitioners, The Petitioners Must Speak With A Single Voice

August 27, 2014

In IPR2014-00954, the Patent Trial and Appeals Board ("PTAB") (A.P.J.s Petravick, Deshpande, and Clements) issued a decision regarding the proper identification of lead and backup counsel listed in the powers of attorneys in cases involving multiple parties constituting a single Petitioner. The Board explained:

According to 37 C.F.R. § 42.2, "Petitioner" means "the party filing a petition requesting that a trial be instituted." In circumstances not involving a motion for joinder or consolidation of separate proceedings, for each "petition" there is but a single party filing the petition, no matter how many companies are listed as petitioner or petitioners and how many companies are identified as real parties-in-interest. Thus, before the Board, the separate companies constitute and stand in the shoes of a single "Petitioner." Because the eleven companies constitute, collectively, a single party, they must speak with a single voice, both in writing and oral representation.
The Board then went on to address the fact that while the petition properly identified lead and backup counsel, the powers of attorney filed by the various real parties in interest were not consistent with that identification. In one instance, one party excluded certain identified lead and backup counsel while certain other powers of attorney filed by the other real parties in interest excluded other certain identified backup counsel. As a result the Board ordered the Petitioner to file updated powers of attorney consistent with the designation of lead and backup counsel set forth in the Petition.

**********
This decision addresses a procedural issue regarding inter partes review before the PTAB, but one that could have important implications. Companies agreeing to jointly file a petition for inter partes review must be mindful that, except in cases involving joinder or consolidation of separate proceedings, the Board will not allow each company listed as Petitioner or a real party in interest to be separately heard. Instead, the Board requires that the "Petitioner" speak with "a single voice" regardless of the number of real parties in interest. Thus, companies considering forming or joining a group to file an IPR should consider that one consequence of filing a petition as one of several real parties in interest is that they will not have the opportunity to be separately heard. 505 Games, Inc. et al. v. Babbage Holdings, Inc., Case IPR2014-00954 (Clements) (August 22, 2014), Paper 17.

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. 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.

Court Denies Summary Judgment Motion as Premature Prior to Markman Hearing

August 27, 2014

Pipeline Technologies Inc. ("Pipeline") filed a patent infringement action against Telog Instruments Inc. ("Telog"). Telog filed a motion for summary judgment, seeking summary judgment on the ground that the disputed claims of U.S. Patent 7,219,553 ('553 patent) are invalid for indefiniteness under 35 U.S.C. § 112(b).

Continue reading "Court Denies Summary Judgment Motion as Premature Prior to Markman Hearing" »

UGG: Default Judgment and Treble Damages Entered Against Defendant Where Defendant Failed to Participate in Discovery

August 26, 2014

Plaintiff Deckers Outdoor Corporation ("Plaintiff") alleged that Defendants Superstar International, Inc. and Sai Liu ("Defendants") produce, advertise, and sell products that infringe Plaintiff's design patents for UGG boots. The district court previously ruled that default judgment was appropriate, considering both the procedural requirements of Federal Rule of Civil Procedure 55(b) and the factors laid out in Eitel v. McCool, 782 F.2d 1470, 1471-72 (9th Cir. 1986). In the previous order, the district court left open what relief Plaintiff could recover.

The district court then addressed whether the Plaintiff should be entitled to treble damages. As explained by the district court, "[u]nder 35 U.S.C. § 284 ("Section 284"), when a Court finds that a patent has been infringed, 'the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.' One way damages may be measured under Section 284 is by the patentee's lost profits. Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009). The burden of proving damages is on the patentee. Id."

Continue reading "UGG: Default Judgment and Treble Damages Entered Against Defendant Where Defendant Failed to Participate in Discovery" »

District Court Grants Motion to Reconsider Summary Judgment Motion after Supreme Court's Decision in Limelight v. Akamai

August 20, 2014

In this patent infringement action, FedEx moved for reconsideration after the district court had denied its motion for summary judgment regarding the plaintiff's claim for inducing patent infringement. FedEx moved for reconsideration based on the Supreme Court's recent decision in Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014).

The district court first analyzed whether the motion to reconsider was procedurally proper. "Under Local Rule 7-18, a motion for reconsideration may be made on the following grounds only:

(a) a material difference in fact or law from that presented to the Court before such decision that in the exercise of reasonable diligence could not have been known to the party moving for reconsideration at the time of such decision, or (b) the emergence of new material facts or a change of law occurring after the time of such decision, or (c) a manifest showing of a failure to consider material facts presented to the Court before such decision. No motion for reconsideration shall in any manner repeat any oral or written argument made in support of or in opposition to the original motion."

Continue reading "District Court Grants Motion to Reconsider Summary Judgment Motion after Supreme Court's Decision in Limelight v. Akamai" »

Motion to Stay Pending Inter Partes Review Denied Where Plaintiff Had Prevailed in Previous Inter Partes Review

August 18, 2014

In this patent infringement case, Plaintiff, CTP Innovations, LLC ("CTP") sued V.G. Reed and Sons, Inc. ("Reed") to stop Reed's alleged infringement of two United States patents, which pertain to systems and methods of providing publishing and printing services by a communication network involving computer to plate technology.

Reed moved for a stay of the action pending a determination of an inter partes review ("IPR") before the Patent Trial and Appeal Board (the "PTAB"). In the motion, Reed asserted "that the stay is appropriate because the PTAB's resolution of invalidity issues regarding the two patents will simplify the instant action and no party will be prejudiced by the stay.

Continue reading "Motion to Stay Pending Inter Partes Review Denied Where Plaintiff Had Prevailed in Previous Inter Partes Review" »