April 2015 Archives

District Court Denies Motion to Stay Pending Inter Partes Review Where Trial Was Less Than a Year Away and Defendant's Previous Attempts at Re-Examination Were Unsuccessful

April 29, 2015

Presidio Components, Inc. ("Presidio") filed a complaint against American Technical Ceramics Corp. ("ATC") asserting a claim for patent infringement. ATC filed a motion to stay the case pending PTO review of the patent-in-suit. Presidio opposed ATC's motion to stay.

The district court began its analysis of the motion by noting that "this is not the first time that ATC has sought reexamination of the '356 patent with the United States Patent and Trademark Office ("PTO"). On July 23, 2009, ATC filed a request for ex parte reexamination of the '356 patent with the PTO seeking PTO review of claims 1-5, 16, 18, and 19. On July 2, 2010, ATC filed a second request for ex parte reexamination of the '356 patent with the PTO seeking review of the same claims. After reviewing ATC's requests for reexamination, the PTO confirmed the patentability of claims 1-5, 16, 18, and 19."

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District Court Excludes Prior Art References in Expert Report That Were Not Included in Invalidity Contentions

April 27, 2015

After the district court adopted a specialized scheduling order that was based on local patent rules in other districts, the plaintiffs served detailed infringement contentions and the defendant served detailed invalidity contentions early in the case. The parties could only amend the contentions for "good cause." As the case progressed toward trial, the parties moved to strike various portions of the opposing party's expert reports arguing that certain references and/or theories were not properly disclosed in the contentions.

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District Court Denies Motion to Exclude Expert Testimony on the Ground That the Expert Was Not a Person Having Ordinary Skill in the Art

April 22, 2015

Defendants sought to exclude the testimony of Plaintiff's expert Joseph C. McAlexander III in its entirety because he lacked the appropriate technical background. In their motion, Defendants alleged that Mr. McAlexander's testimony was inadmissible because he did not meet the requirements of one of ordinary skill in the art.

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Aylus v. Apple: District Court Orders Production of Revenue Documents

April 20, 2015

Aylus Networks, Inc. ("Aylus") sought documents from Apple "relating to the revenue, costs and profits from (1) purchases or rentals of iTunes video content using the accused Apple TV and/or iOS products iPhone, iPad, and iPod Touch ('Accused iOS Products') [and] (2) purchases of video games on the App Store using the Accused iOS Products." Apple declined to produce the documents and Aylus moved to compel claiming that the information was relevant to its damages claims.

The court began its analysis by noting that Georgia-Pacific factor six examines "[t]he effect of selling the patented specialty in promoting sales of other products of the licensee; that existing value of the invention to the licensor as a generator of sales of his non-patented items; and the extent of such derivative or convoyed sales." Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970), modified and aff'd, 446 F.2d 295 (2d. Cir. 1971).

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District Court Declines to Lift Stay Even After Patent Trial and Appeal Board Issued Written Decision on CBM Petitions

April 15, 2015

The district court stayed several consolidated cases pending certain proceedings before the Patent Trial and Appeal Board ("PTAB"). In the order granting the stay, the district court stated: "Upon issuance of a final decision from the PTAB, the parties shall request that the stay be lifted so this case may proceed."

After the PTAB issued a written decision, Ameranth filed a Notice of Ruling Regarding Issuance of Final Written Decisions; Request to Lift Stay. Defendants filed a response to the notice and both briefs disclosed that the PTAB had issued a written decision on the petitions for CBM review on March 20, 2015.

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District Court Dismisses Action after Patent Is Transferred to President of Company

April 13, 2015

After Plaintiff Pi-Net International, Inc. ("Pi-Net") brought suit against Defendants Focus Business Bank and Bridge Bank, N.A. for patent infringement, the Patent and Trademark Office initiated an Inter Partes Review ("IPR") of the patents-in-suit. The district court then stayed the action pending the resolution of the IPR. During this stay, Pi-Net executed agreements transferring ownership of the asserted patents to its president Dr. Lakshmi Arunachalam.

The defendants, claiming that Pi-Net now lacks standing to sue for infringement of the asserted patents, moved to lift the stay and dismiss the cases as moot.

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District Court Denies Motion for Leave to Amend Answer to Assert Affirmative Defense of Patent Misuse

April 8, 2015

The defendants in this patent infringement action filed several motions for leave to amend their answers to include various affirmative defenses, including: (1) the affirmative defense of patent misuse; (2) the affirmative defense of inequitable conduct; (3) a counterclaim for declaratory judgment of non-infringement; and (4) a counterclaim for declaratory judgment of invalidity. Plaintiff REC Software ("REC") opposed the motions for leave to amend and asserted that the proposed amendments would be futile and the proposed counterclaims and affirmative defenses were duplicative.

REC argued that there was no basis for a defense or counterclaim of patent misuse because an affirmative defense or counterclaim of patent misuse may not be based on infringement or damages positions asserted in litigation. As the district court explained: patent misuse usually applies where a patentee seeks to impermissibly extend the monopoly grant of a patent. U.S. Philips Corp. v. Int‟l Trade Comm‟n, 424 F.3d 1179, 1184-85 (Fed. Cir. 2005). The Federal Circuit has held that certain activities constitute per se patent misuse, such as when a patentee attempts to extend the term of the patent by contractually requiring payment of post-expiration royalties. Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 869 (Fed. Cir. 1997). But other activities have been excluded from the doctrine of patent misuse. For example, Congress has declared that a patent owner may seek "to enforce his patent rights against infringement or contributory infringement" without being guilty of patent misuse or illegal extension of the patent right. 35 U.S.C. §271(d)(3).

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District Court Denies Motion for Leave to File Summary Judgment as Premature Prior to Claim Constructio

April 6, 2015

Rec Software USA, Inc. ("Rec") filed a patent infringement action against HTC America, Inc. ("HTC"). HTC requested leave to file a motion for summary judgment based on 35 U.S.C. §101. The request for leave to file the summary judgment motion occurred prior to claim construction proceedings.

HTC argued that the summary judgment motion could potentially dispose of the entire case in support of its request for leave to file an early motion for summary judgment. Rec opposed HTC's request by arguing that claim construction was necessary to understand the nature of the asserted claims.

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District Court Lifts Stay After Covered Business Method Review Is Dismissed Because Federal Circuit Would Not Have Jurisdiction to Hear Appeal of Dismissal

April 1, 2015

Plaintiff GT Nexus, Inc. ("GT Nexus") filed a declaratory judgment action against Inttra, Inc. ("Inttra") seeking a declaration that four of Inttra's patents ("patents-in-suit") were invalid and have not been infringed. Inttra filed counterclaims against GT Nexus for infringement of the patents-in-suit.

The district court had previously stayed the action pending the ex parte re-examination of the patents-in-suit. After the patents emerged from the ex parte re-examination, Inttra moved to lift the stay. GT Nexus opposed arguing that the stay should not be lifted because it had filed petitions for Covered Business Method ("CBM") review with the Patent Trial and Appeal Board ("PTAB"). The district court then denied Inttra's motion, finding that each of the four factors for determining whether to stay a case pending CBM review weighed in favor of a stay. In its order, the district court "stated that if CBM review is granted, the case will remain stayed pending completion of the CBM review proceedings. Id. The Court also stated that if CBM review is denied, Inttra may file a motion requesting to lift the stay and reopen the action. Id."

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