April 2013 Archives

$50 Million Jury Verdict Over Turned Where Plaintiff Based Damage Theory on Worldwide Sales of Accused Products But Only Established That "Some" of Worldwide Sales Were Infringing

April 29, 2013

Promega Corporation ("Promega") filed a patent infringement action against Life Technologies Corporation ("Life Technologies"), among others, over four patents pertaining to a type of DNA testing called "multiplex amplification of shorten tandem repeat loci." Prior to trial, the district court determined that two of the defendants sell testing kits that met limitations for one or more claims in patents that Promega owns. At trial, a question remained as to whether the defendants were engaging in acts prohibited by the Patent Act because many of the accused products were manufactured and sold in foreign countries.

At trial, Promega asserted that under Section 271 of the Patent Act the defendants foreign sales of infringing products violated the Patent Act because a substantial portion of the components of the accused products were supplied from the United States. Promega asked the jury to find that all of defendants' sales met the requirements of Section 271. The jury agreed with plaintiff and awarded more than $50 million in damages.

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Apple Moves to Limit Claims Asserted and Court Orders the Plaintiff to Reduce 247 Claims to 70 Claims over 10 Patents

April 24, 2013

Plaintiff Unwired Planet ("UP") filed a patent infringement action against Apple asserting over 247 claims in ten different patents. Apple filed a motion to limit the number of claims. In the motion, Apple asserted that UP had included approximately 80% of the total number of claims in the patents. Apple asserted that if the claims were not narrowed, then the case would be unmanageable and would unfairly burden Apple.

As justification for its motion, Apple also pointed to the parties' prior litigation history in 2011 at the International Trade Commission. As explained by Apple, UP accused the same products in this case, the iPhone, the iPad and the iPod Touch, in the ITC action. Therefore, Apple assert, UP should know how the products work, what they do, and should have an adequate understanding of the case to narrow the claims. Apple argued that the asserted claims should be reduced to fifty or sixty claims.

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Register Now for a Patent Litigation Webinar: Taking Advantage of the New Inter Partes Review Process

April 23, 2013

Wednesday, May 22, 2013
1:00pm - 2:00pm

The America Invents Act:
Litigation in the Patent Office

How to Take Advantage of the New Inter Partes Review Process

The America Invents Act includes a new inter partes review procedure that takes the place of the old inter partes reexamination. This new litigation component is likely to drastically alter the strategy and potential outcomes from the old reexamination process. This webinar will explore how to best use this new procedure to your advantage.

Click here to register for the webinar.

Speakers

Stanley M. Gibson | Chairman, Patent Litigation Group
Stan Gibson is an experienced trial lawyer, who has focused on high-stakes cases involving complicated technology and bet-the-company cases in the entertainment industry. He is the Chairman of JMBM's Patent Litigation Group and the publisher of the Patent Lawyer Blog. The media frequently calls upon Stan to explain the significance of court decisions, and he has been quoted by the Wall Street Journal, Financial Times, Forbes, Bloomberg BusinessWeek, New York Times, Los Angeles Times, Thompson Reuters, American Lawyer, National Law Journal, ABA Journal, Los Angeles Daily Journal and other publications.

Gregory S. Cordrey | Partner
Greg focuses his practice on patent litigation as well as civil litigation involving complex technology. He has litigated patent cases throughout the U.S., with extensive experience in the Central and Northern Districts of California, and the Eastern District of Texas. In addition, Greg has practiced before the Federal Circuit and the United States Patent and Trademark Office as a registered patent attorney with experience in patent reexamination proceedings. Greg also has extensive experience with patent licensing, including successfully negotiating a wide range of license agreements, particularly with Fortune 500 companies, and advising regarding IP strategy.

Date and Time

Wednesday, May 22, 2013
1:00pm - 2:00pm

Place

Online, via GoToWebinar.com.

Cost

There is no charge for this program.

RSVP

Click here to register for the webinar.

Questions?

Contact Doreen Filice at 310.201.3589 or DFilice@jmbm.com if you have any questions.

This activity has been approved for one hour of Minimum Continuing Legal Education credit by the State Bar of California. Jeffer Mangels Butler & Mitchell LLP cerifies that his activity conforms to the standards for approved education activities prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education.

Micron Sends Email to Professors at the University of Illinois Stating that Micron Would Withhold Funding from the University Because It Remained a Defendant in a Patent Infringement Action Brought by the University

April 22, 2013

The University of Illinois filed a patent infringement action against Micron Technology. During the litigation, Micron sent an email to a number of individuals, which included many professors at the University of Illinois in the engineering department. A part of the email stated that "[b]ecause Micron remains a defendant in a patent infringement lawsuit that UIUC filed against Micron in Federal court in Illinois on December 5, 2011, effective immediately, Micron will no longer recruit UIUC students for open positions at any of Micron's world-wide facilities." The email also stated that Micron will withhold funding from the University by suspending scholarships and professor research.

The University of Illinois moved for an injunction to bar Micron from sending further communications that it characterized as harassing and meant to coerce it into settling its patent litigation lawsuit. Micron asserted that the motion should be denied and that the University should be sanctioned for filing the motion.

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Allegation that Defendants Knew of Patent at Time of Service of Complaint Sufficient to Establish Knowledge Requirement for Inducing Infringement

April 17, 2013

Potter Voice filed a patent infringement action against Apple, Google, HTC, Sony, LG, Motorola, ZTE, Kyocera, Sharp, Huawei, Pantech, Research in Motion, Microsoft and Nokia. Many of the defendants filed several motions to dismiss pursuant to Fed.R.Civ.P. 12(b)(6).

After addressing the pleading standard for determining a Rule 12(b)(6) motion and denying certain motions without prejudice based on severance and transfer issues, the district court turned to the allegations of induced infringement. As explained by the district court, "[e]ach of the defendants who filed a motion to dismiss argues that the allegations in the plaintiff's complaint are not sufficient to state a claim for inducement of
infringement. To allege induced infringement, the plaintiff must allege direct infringement by another, knowing inducement of that infringement by the defendant, and the defendant's specific intent to encourage another's infringement. Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1363 (Fed. Cir. 2012). In addition, the plaintiff must allege that the defendant had knowledge of the plaintiff's patent. Global-Tech Appliances, Inc. v. SEB S.A., ___ U.S. ___, ___, 131 S. Ct. 2060, 2068-69 (2011). "The requirement that the alleged infringer knew or should have known his actions would induce actual infringement necessarily includes the requirement that he or she knew of the patent." DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006)."

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Motorola v. Apple: Judge Postpones Markman and Orders Motorola and Apple to Clean Up Their Own Mess

April 15, 2013

As the litigation between Motorola and Apple rages on throughout the country, one judge has had enough of an ever increasing number of claims and patents asserted by both companies. As explained by the district court, "[b]oth Apple and Motorola greatly expanded the scope of this patent litigation by, among other things, supplementing patent infringement and invalidity contentions."

As part of these supplemental infringement and invalidity contentions, the asserted claims and patents dramatically increased. "The litigation now includes over 180 claims asserted from the 12 patents, and the parties dispute the meaning of over 100 terms from those claims."

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Motion to Exclude Advice of Counsel Granted Where Defendant Sought to Rely on Pre-Investigation Advice on Cease and Desist Letter While Preventing Discovery of Advice

April 10, 2013

Volterra Semiconductor ("Volterra") filed a motion to prevent Primarion from offering evidence regarding the subjective prong of the Seagate test on willful infringement. See In re Seagate Technology, LLC 497 F.3d 1360 (Fed. Cir. 2007). As explained by the district court, "Volterra argues that Primarion's Seventh Supplemental Responses to Volterra's Interrogatory No. 7 demonstrate that the willfulness witnesses identified by Primarion (Sandro Cerato, Arun Mittal and Ken Ostrom) may offer testimony at trial that Primarion's decision to continue to market and produce infringing devises after receiving Volterra's cease and desist letter was based, in part, on an investigation undertaken by counsel."

Based on this interrogatory response, Volterra contended that Primarion was seeking to use the privilege as both a sword and a shield by presenting evidence of counsel's investigation to show that it took the cease and desist letter seriously, while also asserting the attorney client privilege to block any discovery as to the investigation.

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Pre-Filing Investigation at ITC Protected from Discovery as Work Product and Work Product Privilege Was Not Waived

April 8, 2013

In this ITC investigation, Respondents Yantai Zhenghai Magnetic Material Co., Ltd., Anhui Earth-Panda Advance Magnetic Material Co., Ltd., and Ningbo Jinji Strong Magnetic Material Co., Ltd. (collectively, "Manufacturing Respondents") moved to compel discovery responses from Complainants Hitachi Metals, Ltd., and Hitachi Metals North Carolina, Ltd. (Collectively, "Hitachi Metals").

The motion was based on the Manufacturing Respondents argument that Hitachi was improperly asserting privilege regarding the pre-filing investigation conducted by Kroll Advisory Solutions.

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HP's Motion to Dismiss for Lack of Standing Denied Where Plaintiff Demonstrated It Had Substantial Rights to Patents-in-Suit Even Though GE Had Right to Enforce Patents Against Seventeen Specific Companies, None of Which Were Defendants in the Litigation

April 3, 2013

Princeton Digital Image Corporation ("PDIC") filed several patent infringement actions against Hewlett-Packard, Fujifilm, Xerox, Facebook and Ricoh, among others. The Defendants moved to dismiss the complaint for lack of standing. The case is based on two patents for digital image processing technology in cameras, computers and other devices. In May 2009, a predecessor to PDIC purchased the patents from GE.

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Patent Case Rulings from the Central District of California: Mar. 18 to Mar. 29, 2013

April 2, 2013

The following four decisions were reported in patent cases pending in the Central District of California for the period of March 18 through March 29, 2013.

Thumbnail image for CACD Decisions dated 3-18-13 through 3-29-13.JPGThe 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/a>.

Hitachi v. Top Victory: Court Declines to Apply Retroactively AIA's Prohibition on the Use of an Accused Infringer's Decision Not to Obtain Advice of Counsel as Evidence of Willful Infringement

April 1, 2013

Hitachi Consumer Electronics Co. LTD. ("Hitachi") filed a patent infringement action against Top Victory Electronics (Taiwan) Co LTD ("Top Victory"). As the case approached trial, the parties filed several motions in limine. In particular, Top Victory filed a motion in limine to preclude Hitachi from arguing to the jury that its failure to obtain an opinion of counsel could be used against it in determining whether its infringement was willful.

The district court determined that Top Victory was essentially asking for the district court to apply the new Advice of Counsel Provision from the America Invents Act. "In their briefing, Defendants effectively ask the Court to apply the Advice of Counsel provision of the American Invents Act (AIA), which expressly prohibits the use of an accused infringer's decision not to obtain advice of counsel as evidence of willful infringement to this case. See 35 U.S.C. § 298."

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