January 2014 Archives

District Court Strikes Amended Infringement Contentions and Supplemental Expert Report That Were Served without Leave of Court

January 29, 2014

Wonderland Nurserygoods Co., Ltd.("Wonderland") filed a patent infringement action against Thorley Industries, LLC, d/b/a 4MOM ("Thorley") for infringement of U.S. Patent No. 8,047,609 (the "'609 Patent") by the accused mamaRoo device. Pursuant to the Court's Initial Patent Scheduling Order, Wonderland served its Disclosure of Asserted Claims and Infringement Contentions ("Infringement Contentions") on Thorley on May 10, 2012, ,and Thorley served its Non-Infringement and Invalidity Contentions on Wonderland on May 24, 2012

The Court held a Markman Hearing on September 27, 2012. On January 11, 2013, after receiving the Revised (and corrected) Claim Construction Chart, the transcript of the Markman Hearing, and the Pre-Hearing and Post-Hearing Briefs, the Court issued a Memorandum Opinion and Claim Construction Order.

After the order was issued, the parties cross-moved for summary judgment and exchanged expert reports for a trial set to begin in late January 2014. On December 26, 2013, without seeking leave of the district court, Wonderland served on Thorley Amended Infringement Contentions, and a Supplemental Expert Report directed at whether the gearing and linkage within the accused mamaRoo device constitute part of the alleged second motion mechanism, a necessary limitation of the patent at issue. Thorley filed a Motion to Exclude Wonderland's Amended Infringement Contentions and Supplemental Expert Report.

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Supreme Court Rules That Patent Owner Always Bears the Burden of Proof on Patent Infringement

January 27, 2014

In a nine to zero decision authored by Justice Breyer, the United States Supreme Court reversed a decision of the Federal Circuit and held that when a licensee seeks a declaratory judgment against a patentee that the licensee's products do not infringe the licensed patent(s), the patentee bears the burden of persuasion on the issue of infringement.

Petitioner Medtronic, Inc., ("Medtronic") designs, makes, and sells medical devices. Respondent Mirowski Family Ventures, LLC, ("Mirowski") owns patents relating to implantable heart stimulators. In 1991, Medtronic and Mirowski entered into a patent-license agreement that allows Medtronic to practice several Mirowski patents in exchange for royalty payments. In 2007, pursuant to terms of the agreement, Mirowski notified Medtronic that it believed several newly released Medtronic products infringed the licensed patents and, therefore, Medtronic owed additional royalties. Medtronic disagreed and challenged Mirowski's infringement claim in a declaratory judgment action. The District Court (for the District of Delaware) concluded that Mirowski, as the party asserting infringement, bore the burden of proving infringement and that Mirowski had not met that burden. Mirowski appealed to the Federal Circuit.

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Extensive Prior Examination of Patent-In-Suit Justifies Denial of Stay Pending CBM Review before Patent Office

January 23, 2014

VirtualAgility, Inc. ("VirtualAgility) filed a patent infringement action against Salesforce.com, Inc. ("Salesforce") over a patent purporting to cover processes and tools that provide a common framework for communicating effectively across diverse groups within an organization and for assessing key elements of the organization's business. VirtualAgility sells cloud-based enterprise-level information technology solutions that practice the patented invention. Salesforce also provides enterprise cloud computing solutions and its products are used by the other defendants.

Salesforce filed a petition for Covered Business Method ("CBM") review of the patent-in-suit under the America Invents Act ("AIA"). After the CBM petition was filed, all Defendants jointly filed a motion seeking to stay the district court proceedings pending the PTO's final resolution of the CBM review. After the motion to stay was filed, the Patent Trial and Appeal Board ("PTAB") granted the petition and instituted a CBM review of all claims of the patent-in-suit.

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Carnegie Mellon v. Marvell: District Court Denies Marvell's Equitable Defenses Finding That Marvell Has Not Acted Equitably Toward Carnegie Mellon

January 21, 2014

In this patent infringement case brought by Carnegie Mellon University ("CMU"), against Marvell Technology Group, Ltd. and Marvell Semiconductor, Inc. (collectively "Marvell"), CMU alleged that Marvell has infringed two of its patents. After a four-week jury trial, the jury rendered its verdict in favor of CMU on infringement, validity, and willfulness, and awarded damages in the amount of $1,169,140,271.00.

Among many post-trial motions, Marvell file a motion for judgment in its favor on the equitable defense of laches. The district court noted that "[t]he first issue in dispute between the parties is whether Marvell has demonstrated by a preponderance of the evidence that CMU had actual or constructive knowledge of Marvell's infringement of the patents prior to March 6, 2003, which would raise a presumption in favor of Marvell. (Docket Nos. 804, 823). Marvell points to various events which occurred in 1998, 2001 and 2002 in support of its efforts to invoke the presumption. (Docket No. 804)."

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Doctrine of Equivalents Opinion Excluded Where Plaintiff Failed to Comply with Disclosures Required by Scheduling Order

January 15, 2014

TransUnion Intelligence LLC ("TransUnion") filed a patent infringement action against SearchAmerica. After expert reports were served, SearchAmerica moved to exclude all references to the doctrine of equivalents and sought confirmation from TransUnion that they will not attempt to rely on a doctrine of equivalents theory for the remainder of the case.

In support of its motion, SearchAmerica argued that TransUnion should be prohibited from relying on the doctrine of equivalents infringement theory because the Scheduling Order required TransUnion to specify the details of such a theory in its claims charts.

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Potter Voice v. Apple: Claims for Willfulness Survive Motion to Dismiss Where Siri Inventors Allegedly Knew of Patent Prior to Employment with Apple

January 13, 2014

Potter Voice filed a patent infringement action against Apple, alleging infringement of U.S. Patent No. 5,729,659 (the '659 patent) through Apple products containing Siri. In 2010, Apple acquired a corporation called Siri, Inc., which in 2007 "spun off" from SRI International, the company that invented the Siri product now used on Apple's iPhone 4S and other Apple products.

As part of its patent infringement action, Potter Voice alleged that Apple willfully infringed the '659 patent. In a motion to dismiss, Apple disputed whether the allegations in the complaint adequately pled Apple's knowledge of the '659 patent.

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Damage Expert's Failure to Consider Non-Infringing Alternatives Justifies Summary Judgment of No Lost Profits

January 8, 2014

Protegrity Corporation ("Protegrity") filed a patent infringement action against Voltage Security, Inc. ("Voltage")over patents that allegedly cover methods, systems and apparatuses for encrypting electronic data. Protegrity asserted that its patents are infringed by products sold by Voltage and it sought lost profits as damages. Voltage moved for summary judgment on the issue of lost profits arguing that even if infringement could be established, Protegrity could not sustain its burden of proving that it has lost sales to Voltage because its expert failed to address whether there were non-infringing alternatives available in the market.

In response to the motion, Protegrity sought additional discovery in order to postpone consideration of the motion. As explained by the district court, "Protegrity seeks to postpone consideration of Voltage's motion for summary judgment under Fed. R. Civ. P. 56(d) pending a deposition of Voltage on issues relating to lost profits. Voltage opposes Protegrity's request for a postponement on the grounds that Protegrity has not identified the information it hopes to obtain, nor shown how the information will raise a genuine issue of material fact regarding Protegrity's claim for lost profits."

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Claims for Inducing Infringement and Contributory Infringement Dismissed for Failure to Allege Knowledge of Patent-in-Suit

January 6, 2014

Unisone Strategic IP, Inc. ("Unisone") filed a patent infringement action against Tracelink, Inc. ("Tracelink"). Tracelink filed a motion to dismiss the claims for indirect (induced and contributory) infringement because Unisone had alleged no facts demonstrating Tracelink "had the intent to cause infringement . . . or that [Defendant] willfully infringed the patent." Tracelink further asserted that Unisone "does not even allege that [Defendant] had knowledge of the '538 patent." In addition, Tracelink argued that Unisone's contributory infringement claim failed because Plaintiff had not alleged the necessary facts detailing how the accused product is made or adapted for use in an infringement of the patent-in-suit.

The district court began its analysis of the inducing claim by quoting the relevant statutory language and the standard set out by the Federal Circuit. "Whoever actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. ยง 271(b). To state a claim for induced infringement, a plaintiff must allege facts showing the alleged infringer (1) knew of the patent, (2) knowingly induced the infringing acts, and (3) possessed a specific intent to encourage another's infringement of the patent. DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1304 (Fed. Cir. 2006); Pacing Techs., LLC v. Garmin Int'l, Inc., 2013 WL 444642, at *2 (S.D. Cal. Feb. 5, 2013).

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Taser Takes Down Expert in Patent Infringement Action Where Electrical Engineer Was Not Qualified to Offer Expert Opinions on Electrophysiology

January 2, 2014

Taser International, Inc. ("Taser') proceeded to trial on its patent infringement action against Karbon Arms, LLC ("Karbon Arms"). After expert reports and with the trial approaching, Taser filed a motion to exclude the expert testimony Val DiEuliis, one of Karbon Arms' experts, regarding electrophysiology.

As explained by Taser, Dr. DiEuliis offered opinions on certain limitations of the patent-in-suit (United States Patent 7,800,885), including: "compliance signals of the group differ in intensity of pain compliance," "compliance signals of the group differ in intensity of skeletal muscle contraction," and "effective duration."

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