May 2014 Archives

FlatWorld v. Apple: Motion to Vacate Claim Construction Denied Even after Parties Reach Settlement

May 29, 2014

After the district court issued a Markman ruling, the parties informed the court that they had reached an agreement in principle to settle the action. The plaintiff, FlatWorld, then moved to vacate the claim construction order. The district court noted that it had only adopted FlatWorld's proposed construction for one out of nine terms. "Now plaintiff FlatWorld Interactives LLC wants me to vacate the claim construction order, in which I adopted only one of its proposed constructions out of nine terms to be construed, because it is concerned about the potential collateral estoppel effects of my order in two actions pending before the United States District Court for the District of Delaware."

The district court then explained that Federal Rule of Civil Procedure 60 provides that a court may relieve a party from an order if "applying it prospectively is no longer equitable" or for "any [ ] reason that justifies relief." FED. R. CIV. P. 60(b). "Although the Court may vacate an order upon settlement there is no requirement to do so; otherwise any litigant dissatisfied with a trial court's findings would be able to have them wiped from the books." White v. Shen, No. 09-cv-989-BZ, 2011 WL 2790475, at *1 (N.D. Cal. July 13, 2011) (internal quotation marks omitted). A "district court can decide whether to vacate its judgment in light of 'the consequences and attendant hardships of dismissal or refusal to dismiss' and 'the competing values of finality of judgment and right to relitigation of unreviewed disputes.'" Dilley v. Gunn, 64 F.3d 1365, 1371 (9th Cir. 1995).

Continue reading "FlatWorld v. Apple: Motion to Vacate Claim Construction Denied Even after Parties Reach Settlement" »

Invalidity Expert Excluded Where Expert Failed to Conduct a Proper Written Description Analysis

May 27, 2014

Plaintiff Trading Technologies International, Inc. ("TT") moved to strike the invalidity expert report of the defendant, CQG. TT made two arguments its motion: "(1) that Dr. Mellor failed to conduct a proper written description analysis because, according to TT, he incorrectly focuses on features that are not recited in the claims and concludes that there is no written description to support the unclaimed features; and (2) that Dr. Mellor failed to consider the perspective of one of ordinary skill in the art in his written description analysis."

CQG responded that TT mischaracterized Dr. Mellor's opinions and that Dr. Mellor correctly applied the written description test to determine whether a person of ordinary skill in the art would understand whether the inventors were in possession of TT's asserted Static Limitation. CQG further asserted that TT misrepresented Dr. Mellor's explanation of a person of ordinary skill in the art and offered no explanation why the district court should adopt TT's definition.

Continue reading "Invalidity Expert Excluded Where Expert Failed to Conduct a Proper Written Description Analysis" »

District Court Partially Denies Stay Motion Where CBM Review Did Not Encompass All Patents-in-Suit

May 21, 2014

Plaintiffs Versata Software, Inc. and Versata Development Group, Inc. (collectively, "Versata") filed a patent infringement action in July 2012 against defendant Callidus Software, Inc. ("Callidus") The patents were all characterized as "covered business method patents."

Callidus filed a challenged to the validity of the patents-in-suit in August 2013, pursuant to the "covered business method" ("CBM") patent review process provided for under the America Invents Act. As explained by the district court, "[t]he CBM petitions were filed by Callidus some 13 months after suit was filed and after Callidus had instituted a motion practice which included motions to dismiss and/or transfer. On March 4, 2014, the Patent Trial and Appeal Board ("PTAB") granted review of the patents-in-suit, finding it more likely than not that the challenged claims are directed to non-statutory subject matter and, therefore, unpatentable under 35 U.S.C. § 101."

Continue reading "District Court Partially Denies Stay Motion Where CBM Review Did Not Encompass All Patents-in-Suit" »

Motion to Withdraw as Counsel of Record Denied Because It Was Filed on the Eve of Trial

May 19, 2014

In this patent infringement action between Golden Bridge Technology, Inc. ("Golden Bridge or GBT") against Apple, Golden Bridge's counsel moved to withdraw as counsel of record because Golden Bridge had failed to pay the legal bills. As explained by the court, "[s]ince this case appeared on the undersigned's docket, Plaintiff Golden Bridge Technology Inc. has been represented by attorneys from the McKool Smith firm. With GBT's consent, McKool now seeks to withdraw as GBT counsel based on the client's failure to pay its bills."

Although the court was sympathetic to the plight of the attorneys, it did not believe that granting the request to withdraw was appropriate. "This court is quite sympathetic to the idea that attorneys ordinarily should not be made to work for free. But here two key factors weigh against granting McKool's withdrawal request. First, no other attorneys have appeared for GBT. Even in the time since McKool filed its motion, no new attorneys have appeared. Second, trial is upon us. Jury selection is May 30, and opening statements are set for the following Monday. All pretrial motions have been briefed, and the parties are set to appear for a final pretrial conference this Friday."

Continue reading "Motion to Withdraw as Counsel of Record Denied Because It Was Filed on the Eve of Trial" »

Court Rules That Crime-Fraud Exception Trumps Attorney-Client Privilege Where Patent Holder Made Series of False Representations to the Patent and Trademark Office

May 14, 2014

HTC Corporation and HTC America, Inc. ("HTC") moved for a finding that this patent infringement action is "exceptional" under the Patent Act's fee-shifting provision which authorizes the award of attorney fees and costs to prevailing parties in "exceptional cases." 35 U.S.C. § 285.

The district court had previously found that the patents in suit were unenforceable due to inequitable conduct before the patent office. Intellect Wireless, Inc., v. HTC Corp., 910 F. Supp. 2d 1056 (N.D. Ill. 2012), aff'd, 732 F.3d 1339 (Fed. Cir. 2013). The prior rulings establish prima facie support for a finding of an exceptional case. See Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1329 (Fed. Cir. 2003) (quoting Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370, 1380 (Fed. Cir. 2001)). As a result, the district court had granted HTC's request for additional limited document discovery was granted.

Continue reading "Court Rules That Crime-Fraud Exception Trumps Attorney-Client Privilege Where Patent Holder Made Series of False Representations to the Patent and Trademark Office" »

Court Declares Parties Are Over-Litigating the Case and Orders Parties to Reduce Disputed Jury Instructions or Face Reduced Trial Time Based on Reasonableness of Proposed Disputed Instructions

May 12, 2014

In this patent infringement action, the district court concluded that the parties were over-litigating the case and matters were only getting worse as trial got closer. "The Court's previously stated concern that the parties are over-litigating this case is growing. 18 motions in limine were filed, and 15 were denied. A few days before trial, an ex parte motion was filed concerning discovery. After agreeing long ago at the Scheduling Conference that the trial should last 8 days, the parties recently asked for a much longer trial or trials, even though the case has been greatly simplified through motion practice. The number of documents on the docket in this case is approaching 350. The parties' continual expansion of the remaining issues in dispute retroactively waste the substantial resources the Court has committed to resolving the multitude of disputes the parties have presented."

The district court also expressed concern that the parties were not simplifying the issues for the jury. "Rather than viewing billions and billions of stars, they need to be told about the constellations that unify and simplify. This is not happening in this case, and the Court believes effectiveness in front of the jury will thus be diminished. This case is being over-litigated, particularly considering the amount involved."

Continue reading "Court Declares Parties Are Over-Litigating the Case and Orders Parties to Reduce Disputed Jury Instructions or Face Reduced Trial Time Based on Reasonableness of Proposed Disputed Instructions" »

After Parties Engaged in "Abusive Litigation Tactics," Court Orders Clients to Consent to the Filing of Any Further Motions to Compel, Attend the Hearings on Such Motions and Pay the Any Ordered Sanctions

May 7, 2014

After the district court granted a motion to compel in which it overruled the defendants' objections and ordered the defendants to provide complete responses to the interrogatories and to produce all responsive documents, the defendants provided supplemental responses but renewed the overruled objections and asserted additional objections that were not previously made. The district court found that renewing overruled objections and asserting new objections not previously made was disingenuous, but did note that the supplemental answers were comprehensive.

The district court found that there were still problems with the supplemental responses, including that "the defendants responded to requests to identify documents supporting interrogatory answers by referring" to "the documents already in disclosure, as well as those which will be provided by supplementation as discovery in this case progresses." The district court found this inadequate. "The defendants' response fails either to identify adequately the documents to be examined or to segregate and produce, on an interrogatory-by-interrogatory basis, the responsive document and produce them for inspection."

Continue reading "After Parties Engaged in "Abusive Litigation Tactics," Court Orders Clients to Consent to the Filing of Any Further Motions to Compel, Attend the Hearings on Such Motions and Pay the Any Ordered Sanctions" »

Plaintiff Precluded from Using Deposition Testimony of Defense Expert Where Plaintiff Procured the Absence of the Expert

May 5, 2014

Novartis sought to use the deposition testimony of defendant's expert at trial under Fed.R.Civ.P. 32(a)(4)(B). As explained by the district court, "the Rule provides that a party may use the deposition of a witness for any purpose" if "the witness is more than 100 miles from the place of hearing or trial or is outside the United States, unless it appears that the witness's absence was procured by the party offering the deposition." FED. R. Civ. P. 32(a)(4)(B). "[A] conclusion that a party has procured the absence of a witness requires a finding that the party 'actively took steps to keep the deponents from setting foot in the courtroom,' and 'procuring absence and doing nothing to facilitate presence are quite different things.'" Forrester Envtl. Servs., Inc. v. Wheelabrator Techs., Inc., 2012 WL 1161125, at *2 (D.N.H. Apr. 6, 2012) (quoting Carey v. Bahama Cruise Lines, 864 F.2d 201, 204 (1st Cir. 1988)).

The district court then noted that Dr. Kibbe was an expert witness on obviousness for the defense in a case that went to trial in August 2013. The defendant here, Par, had its case stayed on the morning of trial because Par and Novartis had purportedly reached a settlement agreement. The trial against another defendant then proceeded without Par's presence, and Dr. Kibbe testified as scheduled.

Continue reading "Plaintiff Precluded from Using Deposition Testimony of Defense Expert Where Plaintiff Procured the Absence of the Expert" »