September 2012 Archives

Promega Wins $50 Million Jury Verdict -- and the Court Takes It Away Because Promega Did Not Show That Infringing Products Were Made or Sold in the United States or Imported into the United States

September 27, 2012

Plaintiff Promega Corporation ("Promega") filed an action against Life Technologies Corporation, Applied Biosystems, LLC and Invitrogen IP Holdings, Inc. for infringing and inducing infringement of five patents pertaining to copying of sequences of a DNA strand. In a previous licensing agreement, Life Technologies and Applied Biosystems were permitted to sell the Promega patented products within certain fields. Promega asserted that the defendants were making and selling the products into unpermitted fields, such as clinical diagnostics, clinical research and research markets. The jury agreed with Promega and awarded more than $50 million in damages.

Promega filed a motion to enhance damages, for attorneys and costs and a permanent injunction. The defendants filed a motion asserting that they were entitled to judgment in their favor based on their equitable defenses and also because Promega failed to prove its affirmative case.

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Apple v. Samsung: Preliminary Injunction Stays in Effect Despite Jury Verdict Finding of Non-Infringement of Galaxy Tab 10.1

September 25, 2012

Before the patent trial between Apple and Samsung began, the district court issued a preliminary injunction against Samsung from making, using, offering to sell, or selling within the United States, or importing into the United States, Samsung's Galaxy Tab 10.1 tablet computer. This preliminary injunction issued based on a finding that Apple was likely to prevail on its claim of infringement of Apple's design patent, U.S. Design Patent No. D504,889 (the "D'889 patent). Samsung immediately filed a notice of appeal of the preliminary injunction motion and the appeal remains pending before the Federal Circuit.

After the jury trial, in which Apple accused many Samsung products, including the Galaxy Tab 10.1, of infringement, the jury found that the Galaxy Tab 10.1 did not infringe the D'889 patent. Samsung then filed a motion to dissolve the preliminary injunction and to retain the $2.6 million bond that Apple had posted pending determination of damages suffered by Samsung as a result of the injunction.

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Recommendation to Grant Summary Judgment in Favor of Fox and Other Studio Defendants Where Studios Were Selling Products That Incorporated a Process from a Domestic Manufacturer

September 21, 2012

Patent Harbor filed a patent infringement action against Twentieth Century Fox Home Entertainment ("Fox") and other studios, such as The Weinstein Company LLC, Warner Bros. Entertainment Inc., Home Box Office, Inc., and Buena Vista Home Entertainment, Inc. (collectively the "Studio Defendants"). The Studio Defendants allegedly infringed the patent by the use of authoring of scene selection menus included in DVDs and Blu-ray discs. The patent-in-suit describes an improvement to an interactive video system capable of displaying content based on video.

Claim 6 of the patent-in-suit states: "A method for assembling content addressable video, comprising: storing, in addressable memory, a plurality of [frames] of video data in storage locations having addresses, each frame defining a video image having a content for display; storing tags in memory for [frames] of video data in the plurality, the tags indicating the contents of the video images defined by the associated [frames]; executing program steps which assemble and display a content video image in response to the tags, the content video image including positions indicating the content of corresponding [frames] of video data in the plurality; and executing program steps which associate the positions in the content video image with addresses of storage locations storing corresponding frames of video data."

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Federal Circuit Holds That Party Seeking Declaratory Judgment of Non-Infringement Bears the Burden to Prove Non-Infringement

September 20, 2012

The U.S. Court of Appeals for the Federal Circuit vacated and remanded a Delaware court's finding that Medtronic Inc. did not infringe Boston Scientific patents relating to cardiac rhythm therapy (CRT) devices known as implantable cardioverter defibrillators (ICDs). Medtronic, Inc. v. Boston Scientific Corp., No. 2011-1313 (Fed. Cir. September 18, 2012). The Federal Circuit found that the lower court had improperly placed the burden of showing non-infringement on the patent owner instead of on the declaratory judgment plaintiff-licensee.

The patents at issue (RE38,119 and RE39,897) were owned by Mirowski Family Ventures LLC (MFV) and exclusively licensed to Guidant Corp., which was acquired by Boston Scientific Inc. Medtronic had a sublicense to the '119 patent, which allowed it to challenge its validity, enforceability and scope via a declaratory judgment action. As per the sublicense, Medtronic began paying royalties. It also challenged the patent's validity. A Litigation Tolling Agreement (LTA) was entered, which stayed litigation and called for MFV to identify Medtronic products that it believed were covered by the '119 patent. Under the LTA, if Medtronic disagreed with the list of patented products it had the right to retain the license but was required to seek declaratory relief of non-infringement in the United States District Court for the District of Delaware. The fact that Medtronic remained a licensee meant that MFV could not counterclaim for patent infringement. Medtronic did disagree with MFV's listing of patented products, thus giving rise to the lower court action.

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ESPN Loses Affirmative Defenses and Invalidity Counterclaim on Motion to Dismiss But Court Recognizes Unfairness in Allowing "Bare-Bones" Infringement Complaint While Prohibiting Defendants from Pleading Affirmative Defenses with Brevity

September 19, 2012

PageMelding filed a patent infringement action against ESPN asserting a patent that enables internet service and content providers to form mutually beneficial collaborations where website content is customized in accordance with those collaborations. PageMelding asserted that examples of infringement include, but are not limited to, ESPN3 and WatchESPN websites.

After several attempts to amend after motions to dismiss, PageMelding ultimately succeeded in filing an operative complaint. ESPN then filed an answer with twelve affirmative defenses and two counterclaims, one for a declaration of non-infringement and another for invalidity of the patent-in-suit. PageMelding then filed a motion to dismiss the counterclaims on the ground that they failed to state any facts that would put plaintiff on notice of the basis of the claims and to strike the affirmative defenses because they lacked any factual allegations and were wholly conclusory.

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Court Strikes Demand for Jury Trial Where Claims at Issue Focused Solely on Validity of Patents

September 17, 2012

Plaintiff Abbott Laboratories and Abbott Biotechnology Limited ("Abbott") filed a declaratory judgment action that defendant's patent was invalid. After the defendant demand a jury trial, Abbott moved to strike the defendant's demand for a jury trial on the issue of patent validity.

As the district court explained, "[t]he parties agree that whether a Seventh Amendment right to a jury trial arises here is governed by Tull v. United States, 48 U.S. 412 (1987), which "turns on whether the case 'is more similar to cases that were tried in courts of law than to suits tried in courts of equity or admiralty' in 1791," when the Seventh Amendment was adopted. Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1339 (Fed. Cir. 2001) (quoting Tull, 481 U.S. at 417)). A right to a jury trial arises only if a case is more similar to those that were tried in courts of law. Id. This inquiry requires a two-part evaluation of (1) the nature of the action; and (2) the nature of the remedy sought. See id. (citing Tull, 481 U.S. at 417-18)). In this analysis, "the nature of the remedy is more important than that of the action." Id. (citing Chauffeurs, Local No. 391 v. Terry, 494 U.S. 558, 565 (1990); Tull, 481 U.S. at 417, 421))."

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Motion to Dismiss Patent Infringement Complaint Granted Where Complaint Used the Phrase "At Least" to Claim More Than Products Identified in Complaint

September 14, 2012

Radiation Stabilization Solutions ("RSS") filed a patent infringement action against Varian Medical Systems, Inc. ("Varian") and several hospitals. The hospitals moved to dismiss the complaint on the ground that the allegations were inadequate under Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).

RSS is the exclusive licensee of the patent-in-suit, which is entitled "Systems to Stabilize an Irradiated Internal Target." The Hospital Defendants are each health care facilities operating in the Chicago area. According to the district court, "RSS alleges, with no factual support or context, that each of the Defendants directly and/or indirectly infringes the [patent-in-suit] because the Defendants either use, offer for sale, sell, import, or induce others to use, offer, sell, or import systems that use Image Guided Radiation Therapy (IGRT)."

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Counterclaim for Invalidity Dismissed Even Though It Complied with Form 18 Because It Contained Conclusory Allegations

September 12, 2012

Plaintiff Wisconsin Technology Venture Group, LLC ("Wisconsin Technology") contended that Fatwallet, Inc. ("Fatwallet") infringed its patent pertaining to Internet technology. Fatwallet filed several affirmative defenses, as well as counterclaims for invalidity and non-infringement of the patent-in-suit. Wisconsin Technology moved to dismiss the counterclaims under Fed.R.Civ.P. 12(b)(6) for defendant's failure to comply with the pleading standards set forth in Fed.R.Civ. P. 8 and the Supreme Court's decisions in Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009), and Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).

The district court granted the motion with respect to the counterclaim of invalidity for failing to allege facts sufficient to satisfy the pleading requirements of Rule 8 for that claim, but denied the motion with respect to the counterclaim for noninfringement. As stated by the district court, "Defendant's only allegations in support of its counterclaim for noninfringement are that "[plaintiff] asserts in this action that [defendant] is liable for infringement of the '418 patent," and that defendant "is not infringing, has not infringed, and is not liable for any infringement of the '418 patent. . . ." Dft.'s Ans. & Counterclaim, dkt. #5, ¶¶ 34-34. With respect to its invalidity counterclaim, defendant alleges that "[t]he '418 patent is invalid for failure to meet one or more of the conditions of patentability specified in Title 35, U.S.C., or the rules, regulations, and law related thereto, including, without limitation, in 35 U.S.C. §§ 101, 102, 103, and/or 112." Id. at ¶ 38. Plaintiff contends that these allegations fail to satisfy the applicable pleadings standards because they are wholly conclusory and provide no factual details about why defendant believes its products are not infringing and why it believes plaintiff's patents are invalid."

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Imperium v. Apple: Seventy-Four Products Added Against Apple on Motion for Leave to Amend Infringement Contentions Even Though Trial Set for April 2013

September 10, 2012

Plaintiff Imperium (IP) Holdings, Inc. ("Imperium") filed a patent infringement action accusing eight defendants of infringing several patents. With respect to Apple, Imperium asserted that Apple infringed all of the patents-in-suit and listed the iPhone 3G, specifically. Imperium subsequently provided detailed claim charts setting forth Imperium's theory of infringement in relation to an exemplary device and also identified other devices with image sensors and image processors believed to infringe the asserted claims of the patents in suit in the same or substantially similar manner.

Imperium later moved for leave to amend its infringement contentions to add 74 additional products. In support of this motion, Imperium asserted, according to the district court, "[o]n May 25, 2012, Plaintiff contracted with UBM Techlnsights to obtain access to its Information Retrieval Insights System ("IRIS") for a sum of twenty-five thousand dollars ($25,000). IRIS could provide the identity of the image sensors and processors that are incorporated into many, but not all, of Defendants' devices. Upon receiving access to IRIS, Imperium immediately began utilizing IRIS to identify the image sensors in Defendants' products. Through IRIS, Plaintiff identified 74 additional products containing image sensors and/or image processors manufactured, used, sold, offered for sale, and/or imported by Defendants that Plaintiff asserts infringe the patents-in-suit in the same manner as the products previously identified."

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WiFi "Sniffing" Ruled Not a Violation of the Wiretap Act Where Patent Holder Sought to Collect Information That Was Available over Public WiFi Networks

September 7, 2012

Innovatio IP Ventures, LLC ("Innovatio") filed patent infringement actions against various hotels, coffee shops, restaurants and supermarkets for the use of wireless Internet technology located throughout the United States. Innovatio filed a motion for entry of a protocol for collection of electronic evidence and a preliminary ruling on the admissibility of the collected evidence.

As explained by the district court, "Innovatio has been using commercially-available Wi-Fi network analyzers to collect information about the Wireless Network Users' allegedly infringing Wi-Fi networks. (Dkt. No. 329, at 2.) That process, which is known in the industry as 'sniffing,' requires Innovatio's technicians to enter the Wireless Network Users' premises during business hours with a laptop computer and a Riverbed AirPcap Nx packet capture adapter (or a similar device). (Id.) The packet capture adapter can intercept data packets that are traveling wirelessly between the Wi-Fi router provided by the Wireless Network Users and any devices that may be communicating with it, such as a customer's laptop, smartphone, or tablet computer. Innovatio then uses Wireshark network packet analyzer software to analyze the data packets, revealing information about the configuration of the network and the devices in the network. The data packets also include any substantive information that customers using the Wi-Fi network may have been transmitting during the interception of the data packets, including e-mails, pictures, videos, passwords, financial information, private documents, and anything else a customer could transmit to the internet. Innovatio contends that the information it collects will assist in proving its infringement claims."

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Motion for Judgment on the Pleadings Denied Even Though Defendant Contended that Patent Infringement Claim Contradicted the Specification of the Patent-In-Suit

September 5, 2012

Intendis, Inc. ("Intendis") and Dow Pharmaceutical Sciences, Inc. ("Dow") filed a patent infringement action against River's Edge Pharmaceuticals, LLC ("River's Edge"). Dow owns the patent-in-suit and Intendis is the exclusive licensee. According to the district court, "[t]he '383 patent is listed by the Food and Drug Administration (FDA) as covering Desonate®, which is a topical aqueous gel composition indicated for the treatment of skin disorders such as acne. Intendis is the owner of an approved New Drug Application (NDA) for Desonate®."

River's Edge submitted an Abbreviated New Drug Application ("ANDA"), which sought to engage in the commercial manufacture, use, sale, offer for sale or importation of a generic gel based on the listed drug Desonate. River's Edge moved for judgment on the pleadings. River's Edge asserted that there could be no literal infringement as a matter of law because the infringement allegations were expressly contradicted by the patent specification attached to the complaint. Intendis and Dow contended, on the other hand that at this stage, the relevant inquiry should not focus on assessing the merits of the case but instead should focus on whether the plaintiff is entitled to reach the discovery stage of litigation in order to seek evidence to support their claim.

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Court Strikes Infringement Contentions for Adding New Products and Then Strikes Back Door Attempt to Include Stricken Products in the Expert Report

September 3, 2012

In this patent infringement action between Eon Corp. ("Eon") and Alcatel-Lucent ("ALU"), among others, Eon served patent infringement contentions, which were repeatedly challenged by ALU and other defendants. As part of this process, Eon filed a further amended complaint against ALU alleging indirect infringement. In this amended complaint, ALU did not include any products by name. Eon subsequently filed a motion seeking leave to amend its infringement contentions against ALU to include seventy-six products, seventy-two of which were not included in its initial infringement contentions.

When ALU moved to strike these contentions, the court was not persuaded that the original proposed infringement contentions satisfied Local Patent Rule 3-1 because although they named infringing networks they did not show how ALU's accused products were used in those particular networks. As a result, the court ordered Eon to modify its infringement contentions to show how particular ALU products were used in an infringing network. Eon subsequently served amended infringement contentions against ALU pursuant to the court's order, which included more than twenty new ALU products that were not disclosed in the prior amended infringement contentions. The court then ordered the removal of the new ALU products, which Eon did a few months later.

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