October 2015 Archives

Plaintiff Seeks to Substitute Damage Expert after Expert Retires

October 28, 2015

In this patent infringement action, the plaintiff sought to substitute its damage expert because its current damage expert had retired. The plaintiff also sought to withdraw the retired expert's damage report.

The Magistrate Judge construed this as a request to extend the discovery deadline. The Magistrate also determined that there was good cause for the request and granted the extension of the discovery deadline.

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Amazon Seeks Motion in Limine Requiring Plaintiff to Remove Statements on Website Prior to Trial

October 26, 2015

As the case between Milo & Gabby, LLC and Amazon moved closer to trial, Amazon filed several motions in limine, including a motion to force the plaintiffs to remove statements from its websites, which Amazon contended were inaccurate and prejudicial. Amazon also contended that the statements on the website could taint potential jurors and contained impermissible argument regarding remedial measures.

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WARF v. Apple: Motion to Exclude Live Witness Granted Where Apple Had Previously Sought to Rely Solely on Deposition Testimony

October 21, 2015

As the Wisconsin Alumni Research Foundation ("WARF") patent infringement case against Apple approached trial, Apple attempted to call a witness live that it had previously informed WARF's counsel would be called by deposition.

Apple's counsel had previously asked that Patrick McNamara be allowed to appear by deposition in order to accommodate his schedule and not cut into his vacation in order to be called adversely in WARF's case.

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After Granting Motion for Summary Judgment on Issue of Non-Infringement, District Court Orders Parties to Proceed to Bench Trial on Inequitable Conduct Defense to Avoid the Potential of Parties Preparing for Trial a Second Time

October 19, 2015

The District Court granted Transcend's motion for summary judgment on the issue of non-infringement and denied the patent owner's, Glaukos', motion on the issue of inequitable conduct. The District Court then set a bench trial on the issue of inequitable conduct.

In light of these rulings, Glaukos argued that the inequitable conduct trial should be postponed because the infringement ruling resolved the gravamen of the dispute between the parties and a trial on the inequitable conduct issue would be a waste of resources and potentially unnecessary in the event that the infringement ruling is affirmed on appeal.

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District Court Declines to Admit Denial of Petition for Inter Partes Review ("IPR") into Evidence before Jury

October 14, 2015

In a pending patent infringement action, Apple moved to preclude the plaintiff, Wisconsin Alumni Research Foundations ("WARF") from offering evidence or argument regarding the Patent Office's denial of an IPR that Apple initiated. Apple relied on two prior art references as well as a declaration of Dr. Robert Colwell, who is Apple's validity expert in the patent lawsuit. The petition also made several of the same arguments regarding the prior art references that Apple intended to present to the jury in support of its invalidity defense.

Apple argued that WARF should be precluded from offering evidence or argument regarding the IPR proceeding given its minimal probative value, risk of causing unfair prejudice, and possibility of misleading and confusing the jury. WARF opposed the motion, arguing that the PTAB's decision is highly probative of validity of the patent, particularly where Apple intends to present many of the same arguments.

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District Court Denies Defendants' Motion to Stay Pending Inter Partes Review ("IPR") Where Third Parties Filed IPRs and Defendants Would Not Be Subject to Estoppel Provisions

October 12, 2015

In this patent infringement case, Plaintiff Signal IP, Inc. ("Signal") alleged that Defendants Ford Motor Company ("Ford") and Fiat Chrysler US LLC ("FCA") (collectively "Defendants") infringed upon six of patents. The Defendants filed a joint motion to stay all proceedings pending an inter parties review of the patents-in-suit.

Defendants Ford and FCA argued that there were eleven inter partes review proceedings and three reexamination proceedings challenging the validity of all the claims asserted in the patents-in-suit. Ford and FCA argued that it would be more efficient for the USPTO to decide the validity of the asserted claims in the patents before the district court proceeded with the case.

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District Court Denies Motion to Reconsider Summary Judgment Eliminating Pre-Suit Damages for Failure to Mark Imported Products

October 7, 2015

The district court had previously held that no reasonable jury could find that the plaintiff Corning Optical Communications Wireless LTD ("Corning") marked its products or otherwise complied with the marking requirements Section 287(a) of the Patent Act. Corning requested that the district court reconsider its ruling.

The district court noted that defendants had produced unrebutted evidence in support of their motion for summary judgment that "[a] sale of an accused distributed antenna system to an American end customer starts with the customer issuing a purchase order to Corning's American parent. The parent company then issues a purchase order to Corning, and Corning in turn issues another purchase order to a third-party manufacturer. The manufacturer ships the product directly to the end customer in the United States. Corning takes title to a product when it leaves the manufacturer and retains it until it reaches the end customer. Immediately before title transfers to the customer, Corning's American parent takes 'flash title,' temporary legal ownership that lasts only a split second."

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Even though Defendant filed Disguised Daubert Motion that Court Called "Untimely" and "Lame," the District Court Granted the Motion in Part to Exclude Expert from Opining on Legal Standards

October 5, 2015

In this patent infringement action, Defendant R/X Automation Solutions filed a motion in limine to exclude one of plaintiff's experts. The district court concluded that the motion was an untimely Daubert motion because the district court had set a deadline for dispositive motions and Daubert motions.

The district court was not impressed with the excuse for the late filing. "Defendant's excuse that it could not have known of the bases for the motion until after it took depositions of the experts is lame. Defendant had Dr. Derby's report, for example, before the due date for Daubert motions. Everything that the 'motion in limine' complains of with respect to Dr. Derby is plain to see on the face of his report."

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District Court Excludes 15 Prior Art References Not Disclosed in Invalidity Contentions

October 1, 2015

In this patent infringement action, Plaintiffs filed motions in limine to exclude 15 prior art references that defendants intend to use to show the state of the art pertinent to the patents-in-suit. Defendants included the 15 references on a recent notice, but the references were not included on defendants' third (and final) amended invalidity contentions.

As explained by the district court, "Defendants intone the wearying refrain that granting the motion would constitute 'reversible error,' because they are absolutely entitled to show the state of the art. Defendants are correct that the obviousness analysis is expansive and flexible, and that references like the ones at issue now might be relevant to show what was generally known in the art at the time of the invention. But defendants miss the point, which is not whether the 15 references are relevant. The issue is whether the 15 references were properly disclosed in this case."

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