May 2013 Archives

Defendant Precluded from Deposing Plaintiff's Expert Twice, Once After the Initial Expert Reports and Again After Rebuttal Reports

May 30, 2013

Plaintiff ProconGPS, Inc. ("Procon") filed a patent infringement action against Skypatrol, LLC ("Skypatrol"). During the expert phase of the case, a dispute arose over the deposition of plaintiff's experts.

The parties disputed whether Skypatrol should be permitted to depose plaintiffs' experts twice, once after Procon's initial expert report and again after rebuttal reports are issued. Skypatrol contended that Skypatrol's experts should be able to take Procon's experts' depositions into account when preparing their own reports. Procon asserted that the purpose of expert deposition is to develop cross-examination for trial and/or for a Daubert motion, but not for building a case for one's own expert. Procon also asserted that two rounds of depositions would be impractical and would be wasteful.

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Motion to Exclude Damage Expert under Daubert Denied Where Expert Relied upon Incremental Profit and Cross-Examination Was Sufficient to Challenge Expert

May 28, 2013

Plaintiff Alexsam, Inc. ("Alexsam") alleged infringement of several patents against Best Buy Stores, L.P. ("Best Buy") that pertain to stored value/debit cards. Best Buy moved to exclude the opinion of Alexsam's damage expert, James L. McGovern, asserting that Mr. McGovern was applying a "rule of thumb" analysis that had no basis to calculate a reasonable royalty.

After setting out Rule 702 and the Daubert factors, the district court noted that "[t]he Daubert factors might be applicable when assessing the reliability of non-scientific expert testimony, depending upon 'the particular circumstances of the particular case at issue.' Kumho Tire Company, Ltd. v. Carmichael, 526 U.S. 137, 150 (1999). This analysis focuses on the reasoning or methodology employed by the expert, not the ultimate conclusion. Watkins, 121 F.3d at 989. The purpose being 'to make certain that an expert, whether basing testimony upon professional studies or personal experience, employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field.' Skidmore v. Precision Printing and Packaging, Inc., 188 F.3d 606, 618 (5th Cir.1999), quoting Kumho Tire, 119 S.Ct. at 1176. Thus, the court 'must review only the reasonableness of the expert's use of such an approach, together with his particular method of analyzing data so obtained, to draw a conclusion regarding the specific matter to which the expert testimony is directly relevant.' American Tourmaline Fields v. International Paper Co., 1999 WL 242690 at *2 (N.D. Tex. Apr.19, 1999), citing Kumho Tire, 119 S.Ct. at 1177.

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Inadvertent Disclosure Did Not Waive Privilege and Crime Fraud Exception Held Not to Apply Even Though Disclosed Document May Show That Plaintiff's Counsel Told Plaintiff It Had a Weak Legal Claim

May 22, 2013

After the plaintiff, Peerless Industries, Inc. ("Peerless") produced an arguably privileged document to the defendant, Crimson AV LLC ("Crimson"), Peerless asserted that the document was inadvertently disclosed and was privileged. Crimson filed a motion to compel production of the document, particularly asserting that it should be produced under an exception to the attorney-client privilege.

As explained by the district court, "Defendants have filed a motion for an in-camera inspection of a particular document inadvertently produced by plaintiff [dkts. 230, 231]. Defendants seek a ruling that this document is discoverable, and not to be returned to plaintiff based on the inadvertent disclosure provision of the parties' protective order, because of the crime-fraud exception. We deny that request and find plaintiff's inadvertent disclosure did not waive the attorney-client privilege."

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Motion to Stay Pending Inter Partes Review Denied without Prejudice Where Inter Partes Review Had Not Yet Been Granted

May 20, 2013

Plaintiff Automatic Manufacturing Systems, Inc. ("AMS") manufactures and markets equipment used to print machine readable labels on glass microscope slides. Defendant Primera Technology, Inc. ("Primera") competes against AMS in the glass-microscope-slide-printing-machine market. AMS owns U.S. Patent No. 8,013,884 ("the '884 patent"), The '884 patent is directed to a device that can print information onto the surface of a glass object and methods for doing so. On March 19, 2013, Primera filed a petition for inter partes review of the '884 patent with the United States Patent and Trademark office. Primera then moved to stay the case pending the outcome of the inter partes review.

As explained by the district court, "Defendant asks the Court to stay this litigation based upon the mere fact that it petitioned the USPTO to initiate an administrative proceeding called an inter partes review. This type of proceeding is relatively new. It was created by Congress in the Leahy-Smith America Invents Act (the "AIA") in response to perceived deficiencies in an older administrative proceeding called an inter partes reexamination. See Universal Elecs., Inc., 2013 WL 1876459, at *1"

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Counterclaims for Declaratory Judgment for Non-Infringement and Invalidity Dismissed as Duplicative of Infringement Complaint and Failure to Plead Any Facts Describing How the Patent Was Invalid

May 14, 2013

Plaintiff, The Sliding Door Company ("Sliding Door"), brought an action for patent infringement against KLS Doors, LLC ("KLS Doors") alleging infringement of a patent for a sliding door system. KLS Doors filed a counterclaim for declaratory judgment for, among other things, that it did not infringe the patent and that the patent was invalid. Sliding Door moved to dismiss several of the counterclaims, including the counterclaims for declaratory judgment for non-infringement and invalidity.

As explained by the district court, Plaintiff created a "sliding door systems that provides a smooth and quiet glide with a safety mechanism and design flexibility. (Compl. ¶ 9). Plaintiff manufactures and sells sliding doors incorporating this patented technology including room dividers, closet doors, office partitions, and wall slide doors. (Compl., ¶10). On January 19, 2010, U.S. Patent No. 7,647,729 B2 (the "729 Patent") was issued by the United States Patent and Trademark Office ("USPTO") for "Sliding Door System" with Plaintiff as the assignee of the 729 Patent (Compl., ¶¶ 13-14). Plaintiff's Sliding door System features a distinctive appearance that identify to customers that the origin of the product lies with Plaintiff and allow for unique and non-functional decorative panel arrangement options. (Compl., ¶¶ 19, 21)."

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Stay Pending Inter Partes Review Denied Because Defendant Waited Too Long to File the Petition and Court Had Dedicated Resources to Determining Claim Construction

May 13, 2013

Defendant Universal Remote Control, Inc. ("Universal Remote") filed a motion to stay a patent infringement action filed by Universal Electronics, Inc. ("Universal Electronics") pending an Inter Partes Review in the United States Patent and Trademark Office ("PTO"). Universal Remote and Universal Electronics are competitors in the universal remote control business.

Prior to the Markman hearing, Universal Remote filed a notice of intent to file petitions for Inter Partes Review, notifying the Court that it was preparing to file a motion to stay the case pending the outcome of the PTO proceedings. Before the motion to stay was filed, the district court held the Markman hearing and issued its claim construction order.

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Assignment Agreement That Failed to Specifically Address Right to Sue for Past Damages Held Insufficient on Summary Judgment; Summary Judgment Granted to Limit Damages to Period After Patent Was Acquired

May 8, 2013

Plaintiff Nano-Second Technology filed a patent infringement action against Dynaflex International, GForce Corporation, d/b/a/ DFX Sports & Fitness. As part of the patent infringement action, Nano-Second alleged "that Defendants have infringed upon its '311 Patent by selling, importing, making, offering, or using wrists exercisers ("Accused Products") that fall within the scope of the claims of the '311 Patent. First Amended Complaint "FAC" ¶ 12. Further, Plaintiff alleges that these unpatented Accused Products and their packaging are marked with the patent number of the '311 Patent without Plaintiff's consent. Id. ¶¶ 21, 41. Plaintiff claims that in addition to falsely marking their Accused Products and infringing Plaintiff's patent, Defendants have contacted Plaintiff's potential and existing customers misrepresenting that they own the '311 Patent. Id. ¶ 25."

The defendants moved for partial summary judgment, including asserting that the period of damages available for plaintiff did not begin until the plaintiff acquired the patent. "Defendants assert that Plaintiff cannot seek damages for patent infringement that occurred before September 10, 2010, because plaintiff did not have legal title to the '311 Patent before that date."

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Community Property Rights of Ex-Wife Impact Standing of Plaintiff to Maintain Patent Infringement Action

May 6, 2013

James R. Taylor ("Taylor") filed a patent infringement action against Taylor Made Inc. ("Taylor Made"). Taylor Made filed a motion to dismiss the action on the ground that Taylor did not have standing to maintain the patent infringement action because Taylor's ex-wife had not been made a party to the lawsuit and she had an ownership interest in the asserted patent.

As explained by the district court, "[t]he Plaintiff and Ms. Taylor were married on February 14, 1987. Dkt. 24-1. The Plaintiff subsequently obtained the Patent on September 15, 1998 for a storm drainage conduit plug and sealing band. Dkt. 1. The Plaintiff and Ms. Taylor obtained a Final Judgment of Dissolution of Marriage (A "Divorce Settlement") from a Florida state court on March 7, 2011. Dkt. 24-1; see also In re the Marriage of James R. Taylor and Mary Louisa Taylor, Case No. 2006-Dr-10057-NC. The Divorce settlement subjects the Taylors' marital assets to equitable distribution, in so doing notes that the primary assets of the marriage are three United States patents, specifically: (1) '5,224,514/July 6, 1993;" (2) "5,316,045/May 31, 1994;" and (3)[5], 806566/September 15, 1998."

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Administrative Law Judge at ITC Grants Motion for Leave to File Motions for Summary Determination Out of Time Because Complainant Did Not Provide Additional Support for Infringement Contentions in Expert Report

May 1, 2013

In this ITC proceeding, the Respondents filed a motion for leave to file motions for summary determination after the deadline for filing motions for summary determination set by the procedural schedule. Respondents asserted that good cause existed for granting the motion because it would efficiently resolve all of the issues in the Investigation and that Complainants infringement contentions indicated they would be relying on expert testimony to prove their infringement claims.

Respondents asserted that the expert report only provided conclusory assertions regarding infringement under the Respondents' and Staff's proposed construction of the claim terms. Respondents asserted that good cause existed to grant the motion based on their reliance and Complainants' expert's failure to address Respondents' and Staff's proposed constructions.

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