February 2012 Archives

Brandeis University's Patent Infringement Case Over Cookies Crumbles Against Multiple Defendants and the Court Transfers All the Crums to Another District

February 29, 2012

Plaintiff Brandeis University ("Brandeis") alleged that it was the owner of the patents-in-suit and plaintiff GFA Brands, Inc. ("GFA") alleged that it was the exclusive licensee of the patents-in-suit. Plaintiffs asserted that the defendants infringed the patents by making, using, selling or importing various products such as cookies, cookie dough and spreads. A number of the defendants moved to transfer or sever.

With respect to the motions to sever, some of the defendants asserted that the joinder violated Fed.R.Civ.P. 20. Although most of the parties agreed that there were common questions of fact and law, the question remained whether plaintiffs' claims against the different defendants arose out of the same transaction, occurrence or series of transactions or occurrences.

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Round Rock Loses Motion to Dismiss for Lack of Personal Jurisdiction in its Battle with SanDisk: SanDisk Corporation v. Round Rock Research

February 27, 2012

SanDisk Corporation ("SanDisk") brought a declaratory relief action seeking a declaration that its products do not infringe certain patents held by Round Rock Research and that the patents were invalid. Round Rock moved to dismiss for lack of personal jurisdiction, contending that its conduct in sending letters to SanDisk in California demanding licensing negotiations were insufficient for the assertion of personal jurisdiction.

According to the district court, Round Rock is a technology research and licensing company that holds thousands of patents and pending patent applications. Round Rock does not manufacture or market products utilizing its patented inventions but instead seeks licensing agreements from parties who do make and sell such products, or pursues litigation against them when it deems it necessary to do so.

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Even Though Claims Did Not Satisfy Machine-or-Transformation Test, Patent Not Held Ineligible Because the Claims Were Not Directed to an Abstract Idea

February 24, 2012

Defendants filed a motion for summary judgment asserting that all claims of the patent-in-suit was invalid under 35 U.S.C. ยง 101 because the claims did not satisfy the machine-or-transformation test and otherwise disclosed an abstract idea. The patent-in-suit is directed to a method for computing Current Procedural Technology ("CPT") from documents generated by physicians. CPT codes are a system of codes developed by the American Medical Association ("AMA") in conjunction with the Health Care Financing Administration.

The CPT codes provide a uniform language, which facilitates patient billing. The invention allows a CPT code to be calculated based on the documentation process that occurs during the physician-patient meeting. During the meeting, the computer prompts the physician with a list from which the physician chooses particular descriptions that best characterize the patient's status. All of the claims involve a process for determining CPT codes based on information that is gathered during the physician-patient meeting.

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The Battle over Android, Oracle v. Google: Oracle Is Ordered to Produce Witnesses for Deposition Because of an Unfortunate Typo

February 22, 2012

Oracle continues to experience trouble with its damage expert report in the ongoing battle over the Android Operating System. In its third attempt to prepare an appropriate damage report, Oracle's expert apparently consulted with a number of Java engineers employed by Sun (now Oracle). He consulted with the engineers in order to rank the importance of the intellectual property in the 2006 license bundle, which he used to support his analysis.

Google sought to depose these Java engineers. Oracle opposed the request and argued that only one person who consulted with the expert, Dr. Mark Reinhold, should be deposed. Oracle asserted that only Dr. Reinhold provided information to the Oracle expert and the language in the report that he consulted with "other Java engineers" was unfortunately the result of a "drafting error." Oracle explained that these other Java engineers only assisted Dr. Reinhold and did not directly speak with the expert and are not expected to testify at trial.

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Defendant's Motion for Leave to Amend Invalidity Contentions Denied Where Defendant Failed to Show Good Cause for Amendment Based on Court Declining to Construe Certain Claims

February 20, 2012

Defendant Farpointe Data ("Farpointe") served invalidity contentions on HID Global that identified twenty-two prior art patents, as well as many devices and publications that Farpointe alleges constitute prior art. After the invalidity contentions were served, the parties exchanged claim construction positions and a claim construction hearing was held later in the year. The district court followed HID Global's recommendation and declined to construe some of the claims presented by the parties, which Farpointe argued caused it to revisit the invalidity contentions. As a result, Farpointe sought to add four patents and two HID Global products to the invalidity contentions.

The district court noted that it was following the Local Patent Rules from the Northern District of California and under Patent Local Rule 3-6, a party may amend its preliminary contentions "only by order of the Court upon a timely showing of good cause." The party seeking to amend its contentions bears the burden of establishing due diligence and must show "that it was diligent in moving to amendment of the invalidity contentions and diligent in discovering the basis for the proposed amendment."

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When Plaintiffs Exit Market and Are No Longer Direct Competitor of Defendants Stay Pending Reexamination Is Justified as Plaintiffs Can No Longer Show Prejudice: Wyeth v. Abbott Laboratories

February 17, 2012

In this patent action, Defendants filed a renewed motion to the stay the proceedings pending an inter partes reexamination of the patents-in-suit. The district court had previously denied a similar motion over a year earlier. In the renewed motion, the Defendants contended that circumstances had changed since the district court's earlier decision and new factors weighed in favor of staying the action pending the reexamination.

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Court Grows Tired of Apple and Samsung's Repeated Motions to Shorten Time: Apple v. Samsung

February 15, 2012

Samsung moved to shorten time for briefing and a hearing on a motion pertaining to an expert witness, while just a few days earlier Apple had filed a motion to shorten time on its motion relating to the production of foreign-language and other documents in advance of depositions. The court noted that a little more than two weeks earlier, both parties moved to shorten time on a total of nine discovery motions and in the past four months, the parties submitted eighteen discovery motions, all on shortened time.

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Owner of 9-1-1 Network's Motion to Compel Supplemental Infringement Contentions Denied

February 13, 2012

Plant Equipment ("Plant") filed a patent infringement action against Intrado over a patent that describes a system and method for routing incoming calls through the use of a central data manager over a wide network to multiple call centers having multiple remote terminals. Intrado provides technology for the 9-1-1 call infrastructure that delivers millions of emergency calls each year throughout the United States. Plant accused Intrado's 9-1-1 network, called the Intelligent Emergency Network of infringing the Plant patent.

Plant served infringement contentions, which it supplemented a few weeks later at Intrado's request. Intrado, still not satisfied with the infringement contentions, filed a motion to compel Plant to produce infringement contentions that comply with the Eastern District of Texas' Local Patent Rule 3-1. Intrado asserted that the Plant contentions merely parroted claim language and used block quotes without specifying components or structures, failed to consistently point to the same structure for one claim limitation ("remote terminal structures") and failed to explain how customized installations could infringe and explain how such infringement occurs.

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The Battle Over Android, Oracle v. Google: Google Is Ordered to "Stand and Deliver" or Withdraw Its Patent Marking Defense

February 10, 2012

In a previous ruling in the ongoing lawsuit between Oracle and Google over Android, the district court denied Google's motion for partial summary judgment on a defense of patent marking. In that ruling, the district court expressed concern that disputes over whether Oracle or Sun products practiced the asserted claims (and therefore required patent marking) might devolve into an infringement analysis at trial. Accordingly, in order to streamline the issues for trial, the district court required the parties to agree upon a procedure to identify and stipulate to Oracle or Sun products that practiced the asserted claims, which the parties did in a stipulation filed with the district court.

Under the first step of the procedure, Oracle submitted a list of Oracle and Sun products that practiced each of the asserted patents, the supporting source-code citations for each product, and a summary of testimony that it intended to elicit at trial in support of the identifications. In the next step, Google was required to identify any other Oracle products that Google contended practiced any of the 26 asserted claims and identify any products that Oracle listed which Google contended did not practice the claims. Google was also required to explain why.

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Inventor's Toy Glider Infringement Action Crashes to the Ground When Plaintiff Fails to Refute Evidence on Summary Judgment

February 8, 2012

Plaintiff was the inventor of a toy glider and was issued a patent in 1992. Plaintiff formed a partnership called Wingers Co. After forming Wingers, Plaintiff then sent a letter to the defendant introducing the toy glider and ultimately an agreement was entered into between Allied (the defendant), Wingers Co. and Plaintiff (the "License Agreement") in 1993.

Under the License Agreement, plaintiff granted Allied an exclusive license "thereby permitting and designating Allied to be the sole and exclusive manufacturer, distributors and marketing company of Wingers, and any and all derivative toy products thereof." In exchange, Allied agreed to pay royalties.

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Judge Posner Grants Motorola's Summary Judgment Motion of Non-Infringement for Android: Apple v. Motorola

February 6, 2012

In Apple's patent infringement action against Motorola, Apple claimed that certain Motorola devices running the Android operating system infringe two of its network component patents. Motorola moved for summary judgment.

According to the district court, "Claim 1 of the '486 patent describes 'replaceable...component's]' in a layered computing system. (The '852 patent incorporates the replaceable component system of '486 by reference at 13:22-44, and my interpretation of the terms applies equally to both patents' claims.) The use of replaceable components promotes program flexibility and facilitates customization because replaceability enables the user to alter functionality customization because replaceability enables the user to alter functionality within a given program. The prior art was 'application-based,' which meant that users had to accept an application's functionality as is or not use it at all."

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Court Orders Depositions in Taiwan to Overcome Procedural Obstacles in Japan

February 3, 2012

Plaintiff Gerber Scientific International ("Gerber") filed a patent infringement action against Roland DGA Corporation ("Roland"), asserting that Roland infringed Gerber's patent covering a method and apparatus for computerized graphic production. Roland filed a motion for protective order with respect to the depositions of three of its Japanese employees and its president.

In its motion for protective order, Roland argued that the depositions of its three Japanese employees should take place in Japan and that the deposition of its president should not take place at all because he is a senior executive with no unique or specialized knowledge relevant to the case. With respect to the employees in Japan, Roland argued that witnesses should be deposed near their residence or their place of business and both parties could equally bear the costs, as such Gerber could not satisfy its burden of proving that circumstances exist that warrant taking the depositions in the United States.

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Taser's Contempt Motion Denied Where Colorable Differences Existed Between Infringing Product and Newly Accused Product

February 1, 2012

After the district court found that defendant's electronic control device literally infringed certain claims of a patent owned by Taser and denied defendant's summary judgment motion on defendant's claims of invalidity and unenforceability, Taser filed a motion for contempt and an application for an order to show cause. In its motion, Taser asserted that Karbon Arms had purchased defendant's assets as part of an insolvency proceeding and that Karbon Arms was producing the Karbon MPID which was essentially the same as the enjoined product sold by defendant.

The district court then noted that "[i]n order to enforce an injunction in a patent case, the party seeking to do so 'must prove both that the newly accused product is not more than colorably different from the product found to infringe and that the newly accused product actually infringes.' TiVo Inc. v. EchoStar, 646 F.3d 869, 882 (Fed. Cir. 2011) (en banc)." To apply the "more than colorable differences" test, the court must first compare the features that were found infringing to the corresponding feature of the newly accused products. If the court finds that only colorable differences exist, then the court must determine whether the newly accused product infringes the relevant claims.

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