District Court Precludes New Substitute Witness for Failure to Timely Disclose

March 2, 2017

As trial approached in this patent infringement action, the plaintiff, 511 Innovations, Inc., filed a motion to exclude a witness at trial, Tim Benner from testifying at trial. The motion asserted that the defendant, Samsung, "did not make any written disclosure of Dr. Tim Benner as a potential witness, or even a person with relevant knowledge, until January 23, 2017."

The disclosure occurred after the close of discovery and only a few weeks before the pretrial conference. In opposing the motion, Samsung explained that it planned to substitute Dr. Benner as its corporate representative at trial, in place of Joy McBeth.

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District Court Denies Request to Change Expert Date Based on Change in Defense Counsel

February 21, 2017

Plaintiff Genes Industry, Inc. ("Genes") filed a patent infringement action against Defendant Custom Blinds and Components, Inc. ("Custom"). The patent discloses a winding wheel for use on window coverings. Custom filed a motion to continue its expert report deadlines from November 28, 2016 to February 10, 2017, and to continue the expert discovery cut-off date from December 16, 2016 to May 17, 2017.

In reviewing the request, the district court noted that "Defendant retained a new counsel way back in early November and the Court ordered the attorney substitution on November 17, 2016. This was 11 days before Defendant's expert reports were due. Defendant's counsel states that it took significant time to review the case after receiving the file on November 19, 2016. For some reason, Defendant's counsel waited until just two days before Defendant's expert reports were due before attempting to enter a stipulation with Plaintiff's counsel to extend expert report deadlines. Plaintiff's counsel declined this attempt because the Court's previous order granting an extension of expert report deadlines had stated in capital letters that 'no further continuances [would] be granted without a further very strong showing of good cause.'"

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District Court Stays Case Pending Inter Partes Review After Non-Petitioning Defendant Agrees to be Bound by Estoppel Provisions

February 14, 2017

In a previous order, the district court granted a motion to stay pending Inter Partes Review ("IPR") but deferred ruling on the Motion to Stay with respect to EMC Corporation "until EMC Corporation has filed a Notice with the Court indicating whether it is bound by the statutory estoppel provisions of 35 U.S.C. § 315(e)."

Thereafter, EMC filed a Notice stating "if the Court stays the above-captioned litigation pending resolution of the inter partes reviews filed on the asserted patents then EMC agrees to be bound by the full statutory estoppel provisions of 35 U.S.C. § 315."

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District Court Excludes Damage Expert for Failure to Apportion But Gives Expert One More Opportunity to Supplement Report

February 7, 2017

In this patent infringement action, Plaid sought to exclude the entirety of the plaintiff's damage expert's, Robinson's, reasonable royalty analysis as based on an apportionment "plucked out of thin air." Yodlee opposed the motion and asserted that its apportionment methodology was justified by the facts of the case.

The district court began its analysis by noting that "[Ii infringement is shown, the jury will need to 'apportion the defendant's profits and the patentee's damages between the patented feature and the unpatented features using reliable and tangible evidence.' Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014) (internal quotation marks omitted). 'The essential requirement is that the ultimate reasonable royalty award must be based on the incremental value that the patented invention adds to the end product.' Id."

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District Court Denies Motion to Compel Inadvertently Produced Privileged Documents

January 31, 2017

In this patent infringement action, Teva inadvertently produced documents to Sunovion. Teva subsequently attempted to claw back the documents under the parties' protective order. Sunovion moved to compel the inadvertently produced documents.

In analyzing the motion to compel, the district court noted that it had "reviewed the parties' submissions, the Discovery Confidentiality Order (DCO), and, in particular, paragraphs 28 and 30 of the DCO." The district court further noted that "[t]hese paragraphs are applicable to the instant matter insofar as they refer to notice 'promptly after its discovery' and 'prompt remedial action' in the event of an inadvertent disclosure."

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District Court in the Eastern District of Texas Orders Retention and Production of Participants in Jury Research

January 24, 2017

In keeping with the standing order issued by Judge Gilstrap for jury trials that strongly discouraged jury research in the Eastern District of Texas, Magistrate Judge Love recently issued a similar order for patent case pending in the Eastern District of Texas.

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District Court Orders Production of Attorney-Client Communications Between Opinion Counsel and Trial Counsel Based on Advice of Counsel Defense

January 17, 2017

Plaintiff Krausz Industries Ltd. ("Krausz") filed a motion for an order compelling Defendants Smith-Blair, Inc. and Sensus USA, Inc. (collectively "Smith-Blair") to allow discovery into various attorney-client communications and work product related to an advice of counsel defense.

Although the parties agreed that raising an advice of counsel defense can result in a waiver of the attorney-client privilege and work product doctrine, the parties disagreed about the scope of the waiver. Smith-Blair asserted that any waiver should be limited to communications and related work product between Smith-Blair and its opinion counsel on the issue of noninfringement that occurred before litigation began.

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District Court Denies Motion to Withdraw Deemed Admissions

January 10, 2017

The plaintiff filed an ex parte application to be relieved of admissions that were deemed admitted for failure to respond.

In analyzing the ex parte application, the district court first concluded that the plaintiff had not justified the filing of an ex parte application rather than a noticed motion. "Plaintiff has not shown Plaintiff's 'case will be irreparably prejudiced if the underlying motion is heard according to regular noticed motion procedures.' Mission Power, 883 F. Supp. at 492. To the contrary, there is no mention anywhere in the Application or supporting declaration that there is any crisis or emergency warranting ex parte relief, nor does it appear to the Court that Plaintiff's case would be 'irreparably prejudiced' if the underlying motion were heard according to regular noticed motion procedures. Moreover, to the extent there is any crisis, Plaintiff has not shown it is 'without fault in creating the crisis that requires ex parte relief, or that the crisis occurred as a result of excusable neglect.' Id. "

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District Court Denies Motion to Stay Pending Ex Parte Reexamination Where Defendant Did Not Pursue Inter Partes Review

January 3, 2017

After filing an ex parte reexamination with the Patent Office, the defendant filed a motion to stay the action pending the ex parte reexamination.

In analyzing the request to stay the action, the district court noted that "[t]he decision of whether to stay this case during the potential ex parte reexamination is discretionary." The district court also explained that courts have inherent power to manage their dockets, including by ordering a stay during a patent reexamination. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). Other cases in this district have considered, in deciding whether to stay a case pending patent reexamination or review, "(1) whether discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party." Telemac Corp. v. Teledigital, Inc., 450 F. Supp. 2d 1107, 1111 (N.D. Cal. 2006); see In re Cygnus Telecomms. Tech., LLC, Patent Litig., 385 F. Supp. 2d 1022, 1023 (N.D. Cal. 2005).

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Personal Web v. IBM: IBM's Motion to Compel Documents from Privilege Log Denied Where Motion Was Filed After Discovery Cut-Off

December 29, 2016

In this patent infringement action, IBM filed a motion to compel production of certain documents that were withheld as privileged. IBM contend that time was of the essence when it filed its motion.

The district court was not persuaded by the urgency of the request or that time "was of the essence" because the motion was filed late. As explained by the district court, "IBM's urgency is belied by the fact that its request is late. Fact discovery closed November 18. Under Civil Local Rule 37-3, IBM's motion to compel discovery was due within 7 days after the fact discovery deadline. Yet IBM filed its discovery motion on December 13, more than two weeks late."

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Plaintiff Cannot Take Back Venue Admission in Patent Infringement Action

December 27, 2016

Plaintiff Ecojet, Inc. ("Ecojet") brought a patent infringement action against Defendant Luraco, Inc. ("Luraco") for infringement of U.S. Patent No. RE45,844 ("the '844 Patent"). After the litigation was pending for several months, Luraco filed a Motion for Leave to File a First Amended Answer regarding venue.

In its motion, Luraco asserted that even though it "originally admitted that venue is proper in this district, it has since determined that venue is improper." The district court explained that "Luraco's argument seems to be tied to its request for re-examination of the '844 Patent, but the actual basis for venue being improper is unclear from its Motion."

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District Court Rules That Claim Construction Requested For First Time During Trial Is Waived

December 22, 2016

During the trial, the plaintiff, Arthrex, requested that the district court construe the term "proximal end" in certain of the patent-in-suit, U.S. Patent No. 8,821,541 ("the '541 patent"). The district court determined that the request for a claim construction was way too late.

The district court began by noting that "Arthrex did not request construction of this term during claim construction, which occurred more than six months ago. Rather, Arthrex requested that the Court construe the term during the Jury Charge Conference-- the night before the last day of a five-day trial. " As explained by the district court, Arthrex based its request on trial testimony from Dr. Alexander Slocum, Defendants' infringement expert, concerning the plain and ordinary meaning of what he understood "proximal end" to mean. Arthrex then insisted that the district court was required to construe the term because Dr. Slocum's testimony raised a dispute regarding its meaning. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) ("When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.").

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Court Grants Motion to Dismiss for Lack of Case or Controversy Even Though Patent Holder Did Not Provide Covenant Not to Sue

December 20, 2016

Tech Pharmacy filed a patent infringement action against Defendant Alixa Rx LLC and Defendant Golden Gate National Senior Care LLC d/b/a Golden LivingCenters (collectively, "Defendants"). Tech Pharmacy subsequently filed its Second Amended Complaint to add the Fillmore Defendants as named defendants with respect to the misappropriation of trade secret, breach of contract, and related state tort claims.

In response, the Fillmore Defendants asserted counterclaims for declaratory judgment of invalidity, non-infringement, and inequitable conduct directed at Tech Pharmacy's patents. Tech Pharmacy then filed a motion to dismiss the declaratory judgment claims for lack of subject matter jurisdiction because Tech Pharmacy had not asserted the patent claims against the Fillmore Defendants.

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District Court Strikes Infringement Contentions Pursuant to Doctrine of Equivalents Because They Contained Blanket Assertions That Did Not Comply with the Local Patent Rules

December 15, 2016

The Defendants filed a motion to strike the Plaintiff's infringement contentions, including their contentions under the doctrine of equivalents ("DOE"), for failing to comply with the Local Patent Rules ("P.R."). The Defendants argued that the Plaintiff's contentions did not comply with P.R. 3-1(d) because the Plaintiff made "impermissible blanket assertions regarding infringement under the doctrine of equivalents."

P.R. 3-1(d) states that the infringement contentions must disclose"[w]hether each element of each asserted claim is claimed to be literally present or present under the doctrine of equivalents in the Accused Instrumentality."

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District Court Orders Plaintiff to Supplement Damage Information Provided in Federal Rule 26 Initial Disclosures Where Plaintiff Failed to Compute an Actual Damage Number

December 13, 2016

In this discovery dispute in a patent infringement action, Frontgate contended that Balsam Brands, Inc. ("Balsam") failed to adequately respond to an interrogatory seeking information about Balsam's damages. As explained by the district court, Balsam's response stated that it: (1) "intends to seek lost profits on the 1,662 Flip Trees that it did not sell during the 2015 Christmas season"; and (2) "intends to seek a reasonable royalty on all Inversion Trees sold by Defendants for which lost profits are not available." Balsam further responded that "historical data on Balsam's cost, sales, inventory, and pricing" was included in materials produced.

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