February 2013 Archives

Microsoft Invalidates Motorola's Patent Claims Where Means-Plus-Function Limitations Were Found Indefinite

February 27, 2013

In this patent infringement action between Microsoft and Motorola, Motorola asserted certain claims of various patents against Microsoft, including claims that included "means for decoding" and "means for using" limitations. Motorola asserted that Microsoft's Windows 7 operating system and Microsoft's Internet Explorer 9 infringed the asserted claims of the patents-in-suit. Microsoft moved for partial summary judgment that the claims that included these means-plus-function limitations were indefinite under 35 U.S.C. §112.

As explained by the district court, "[a]t a high level, the Patents-in-Suit disclose systems and methods for encoding and decoding a bitstream (or sequence) of digital video data.3 (See generally '374 Patent; '375 Patent; '376 Patent.) The Patents-in-Suit explain that a picture in a digital video sequence can either be encoded as a "frame," comprising consecutives lines of the picture, or as two "fields," with the top field comprising the odd-numbered lines of the picture and the bottom field comprising the even-numbered lines of the picture. ('374 Patent at 1:42-58.) While encoding a picture in frame or field mode was done in prior art on a picture-by-picture basis (id. at 4:17-34), the summary of the invention states, "[t]he method entails encoding and decoding each of the macroblocks in each picture in said stream of pictures in either frame mode or in field mode." (Id. at 2:58-60 (emphasis added).)"

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Customer Comments Admissible Over a Hearsay Objection Where Comments Could Be Used to Establish Use of an Infringing Feature

February 25, 2013

ABT Systems, LLC ("ABT") filed an action against Emerson Electric Co. ("Emerson"). As the case proceeded to trial, the district court made some key rulings on motions in limine. In particular, the district court addressed whether customer product reviews on the Internet were admissible over a hearsay objection.

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Rule 11 Sanctions Imposed where Plaintiff's Failure to Evaluate and Understand the Accused Product Was Unreasonable and Easily Avoided

February 22, 2013

In Smart Options, LLC v. Jump Rope, Inc., Case No. 12-C-2498 (N.D. Ill. March 25, 2013), plaintiff Smart Options brought suit for infringement of U.S. Patent No. 7,313,539 against Jump Rope. The '539 Patent relates to a method for purchasing an "option" to buy a good or service (e.g., concert ticket) at a "reservation price" within a designated time period. If the option to buy is not exercised then it expires and there is no refund of the "option fee." Smart Options utilizes the patent in the operation of its website www.optionit.com. Jump Rope operated a smart phone application that allows users to bypass entrance lines at events by purchasing a "Jump" which allows immediate access to the event without any additional purchase required.

After the suit was filed, Jump Rope served Smart Options with a Rule 11 motion and cover letter stating that Jump Rope would seek its attorneys' fees and costs if Smart Options proceeded with the suit and the Court entered a finding of non-infringement. Jump Rope explained why it considered the suit to be meritless:

Plaintiff alleges violation of a patent that covers providing options on the right to purchase goods or services at a future time. Defendant's software application, however, does not provide options or charge option fees. Rather, it allows someone to buy the service provided - a right to "jump the line" at an event or facility. Plaintiff and its counsel could have and easily should have discovered this, as the iPhone/Android application they accuse is free to download.

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Transfer from Wisconsin to Eastern District of Texas Appropriate Where Cases Involving the Same Patent Were Proceeding in Texas

February 20, 2013

TravelClick, Inc. ("TravelClick") filed a declaratory judgment action against defendants Variant Holdings, LLC and Variant, Inc. ("Variant"), seeking a declaration that its iHotelier online hotel reservation system did not infringe Variant's patent number 7,626,044 (the '044 patent). Variant filed a motion to transfer the case to the Eastern District of Texas based on the "first-filed" rule or 28 U.S.C. §1404(a) on the grounds that the Eastern District of Texas is a more convenient forum and transfer will serve the interests of justice.

In analyzing the motion, the district court found that the convenience factor did not weigh heavily in either direction. "Plaintiff does not identify any connection to Wisconsin that would make litigating in this state more convenient for it. Plaintiff is a Delaware corporation, headquartered in New York, with offices in Schaumburg, Illinois; Atlanta, Georgia, Orlando, Florida; Houston, Texas and Philadelphia, Pennsylvania. Only 16 of plaintiff's 2000 customers that use the iHotelier system are located in Wisconsin. One of the defendants, Variant, Inc. is headquartered in this district, though it has no employees or present activities in this district and supports a transfer to Texas. (Its sole employee recently moved from Missouri to Texas.) The other defendant, Variant Holdings, LLC is headquartered in Nevis and has no employees. No matter where the case proceeds, the venue will be more convenient for some parties than others."

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Watch What You Say to the Press: Statements by Executives That Design-Arounds Were Already In Place Justifies Denial of Stay of Permanent Injunction

February 18, 2013

After the jury found defendant A10 Networks ("A10") liable for misappropriation of trade secrets and infringement of patents owned by Brocade Communications Systems, Inc. et al ("Brocade"), the court entered two permanent injunctions against A10, one that prohibited additional patent infringement and another that applied to the misappropriation of trade secrets. Subsequently, A10 moved to stay the injunctions pending appeal or, in the alternative, to stay pending a request for a stay from the Federal Circuit, a modification to the injunction to include a sunset provision or a modification to the terms of the trade secret injunction.

First, the court addressed whether A10 was likely to succeed on appeal. The court found these arguments merely repeated from the arguments made in A10's motion for judgment as a matter of law and that they were once again without merit. The court also found that A10 had not demonstrated irreparable injury and the balance of hardships also tipped in favor of Brocade because Brocade and A10 are direct competitors. Accordingly, the court declined to stay the injunction with respect to patent infringement.

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Patent Case Rulings from the Central District of California: Feb. 1 to Feb. 15, 2013

February 15, 2013

The following fourteen decisions were reported in patent cases pending in the Central District of California for the period of February 1 through February 15, 2013.


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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

Terminating An Inter Partes Review Proceeding Following Settlement

February 14, 2013

In IPR2013-00078, the Patent Trial and Appeals Board ("PTAB") (A.P.J.s Medley, Easthom and Siu) issued an order in International Business Systems Corporation ("Petitioner") v. Financial Systems Technology (Intellectual Property) Pty. Ltd. ("Patent Owner") regarding the settlement between the parties and procedure regarding the termination of the procedure. The Petitioner filed its petition on December 12, 2012 and the Patent Owner's preliminary response would have been due on March 17, 2013.

Before the filing of the Patent Owner's preliminary response and any subsequent Board decision on the petition, the parties entered into a written settlement agreement contemplating the dismissal of a co-pending district court lawsuit and the termination of the inter partes review proceeding. As a result, the parties sought guidance regarding the filing the settlement agreement and terminating the IPR proceeding.

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Failure to Provide Computation of Damages in Initial Disclosures Precludes Any Evidence of Damages at Trial

February 13, 2013

In this patent infringement action, Vinotemp International ("Vinotemp") brought suit against Wine Master Cellars, LLP ("Wine Master"). Wine Master filed a counterclaim for patent infringement. Prior to trial, Vinotemp moved to preclude Wine Master from offering evidence of damages at trial.

As explained by the district court, "Vinotemp moves to exclude Wine Master's evidence of damages on two grounds: (1) Wine Master failed to properly disclose its damages categories and computations under Federal Rules of Civil Procedure 26(a)(1)(A)(iii) and (e); and (2) Wine Master's damages are impermissibly speculative."

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Judge in Northern District of California Advises Parties That Federal Circuit's Model Order on E-Discovery Is a Presumptive Starting Point for E-Discovery Orders

February 11, 2013

Positive Technologies, Inc. ("Positive Technologies") filed a patent infringement action against Sony Electronics and Amazon, among others. Amazon filed a motion for entry of the Federal Circuit Advisory Council's Model Order regarding E-Discovery in Patent Cases (the "Model Order"). The Model Order provides for specific limits on e-discovery.

There are several provisions of the Model Order that should be noted in particular:

"General ESI production requests under Federal Rules of Civil Procedure 34 and 45 shall not include metadata absent a showing of good cause. However, fields showing the date and time that the document was sent and received, as well as the complete distribution list, shall generally be included in the production."

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California Court Denies Rule 11 Sanctions For Failure to Comply With Rule 11's Safe-Harbor Provisions

February 7, 2013

In Arrival Star S.A.., et al. -v- Meitek Inc., et al., Defendant Meitek Inc. ("Meitek") moved for Rule 11 sanctions against the Plaintiff Arrival Star S.A. ("Arrival Star") based on Meitek's contentions that "ArrivalStar's counsel (1) failed to prepare any claim construction before filing suit, (2) made a "tactical decision" to sue Meitek instead of its Chinese parent company due to the difficulties of retaining service and recovering judgment against the latter, and (3) improperly relied on the views of a patent practitioner to opine on the issue of infringement." Meitek sought at least three times its attorneys' fees of $110,000 and preferably 5 to 10 times this amount, or $550,000 to $1,100,000 in sanctions.

The Court recited the standard under Rule 11 that sanctions may be imposed "when a filing is frivolous, legally unreasonable, or without factual foundation, or is brought for an improper purpose. The standard governing both the 'improper purpose' and 'frivolous' inquiries is objective." (internal citations omitted). The Court further stated that Local Rule 11-9 further provides that the presentation to the Court of frivolous motions subjects the offender at the discretion of the Court to sanctions.

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Allegations of Inducing Infringement Insufficient Where Plaintiff Failed to Plead Allegations Sufficient to Support an Inference of Intent to Induce Infringement

February 6, 2013

Plaintiff Benjamin Grobler ("Grobler") filed a patent infringement action against Sony Computer Entertainment America LLC ("Sony") alleging direct and indirect (both inducing and contributory) infringement. Grobler subsequently filed an amended complaint that removed the contributory infringement claim and asserted a claim for indirect infringement limited to inducing infringement. Sonly filed a motion dismiss the inducing claim.

As explained by the district court, "Grobler filed this suit against Sony, alleging that Sony infringes the '084 Patent by making, using, importing, offering to sell, and/or selling in the United States, systems for data vending, including the Sony PlayStation Network system. Id. at ¶ 9. Grobler also alleged that Sony infringed one or more claims of the '084 Patent by contributing to and/or inducing its customers' infringement using such systems. Id. Grobler then filed the AC, limiting the indirect infringement claim to a claim that Sony indirectly infringes one or more claims of the '084 Patent by inducing its customers' infringement using the Sony PlayStation Network system. AC at ¶ 10. Sony now moves to dismiss the induced infringement claims for failure to meet the pleading requirements for indirect patent infringement."

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Inter Partes Review: Procedure for Amending Claims

February 5, 2013

In IPR2012-00001, on January 25, 2013, the Patent Trial and Appeals Board ("PTAB") (A.P.J.s Lee, Tierney and Cocks) issued an order regarding the conduct of proceedings ("Order") in Garmin International, Inc. v. Cuozzo Speed Technologies, LLC. The Order followed a conference call to discuss any issues the parities may have about the Scheduling Order and the trial procedure. Of interest, the Board clarified the following issues:

  • The Federal Rules of Civil Procedure does not generally apply to this proceeding

  • Any proposed amendment or substitution of claims must explain how it obviates the ground of unpatentability underlying the institution of the IPR and where the corresponding description support in the specification can be found

  • The explanation should be contained in the motion to amend the claims which is separate from the Patent Owner's Response

  • The motion to amend the claims should not make any change to claims which are not involved in the proceeding

    Finally, the Board denied the Patent Owner's request to file a motion for joinder of Chrysler Corporation and JVC Inc. which are allegedly "privies" to the Petitioner on the grounds that the Patent Owner could not represent that either is currently a petitioner in a pending Inter Partes Review involving the patent-at-issue.

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    Apple v. Samsung: The District Court Issues Its Final Rulings Denying Motions for New Trial and Finding No Willful Infringement; Next Stop the Federal Circuit

    February 4, 2013

    In a set of mixed rulings for the parties, the district court denied the parties' motions for new trial, found Samsung did not willfully infringe Apple's patents, invalidated certain claims of one of Samsung's patents, denied Samsung's motion for indefiniteness of certain of Apple's patents and denied Apple's motion for enhanced damages.

    Samsung moved for a new trial asserting that the trial was manifestly unfair. Samsung asserted that: "1) the trial time limitation prejudiced Samsung; (2) allowing Apple
    to point out to the jury which Samsung witness were not called prejudiced Samsung; (3) Samsung's witnesses were barred from making some arguments, where Apple's witnesses were allowed to make other arguments; (4) Samsung was required to lay foundation for documents while Apple was not; (5) Samsung was forbidden to play advertisements while Apple was not; and (6) Samsung could not use depositions to cross-examine Apple's witnesses while Apple was allowed to used deposition testimony during cross examination."

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    Patent Case Rulings from the Central District of California: Jan. 14 to Jan. 31, 2013

    February 1, 2013

    The following ten decisions were reported in patent cases pending in the Central District of California for the period of January 14 through January 31, 2013.

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    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.