December 2015 Archives

District Court Denies Accounting and Ongoing Royalty Where Jury Instructions Told Jury to Award Damages That Would Put Patent Holder in Same Financial Position Had Infringement Not Occurred

December 31, 2015

Prism brought suit against Sprint alleging patent infringement of U.S. Patent Nos. 8,127,345 and 8,387,155 (the "Asserted Patents"). After the jury returned a $30 million award in favor of Prism, Prism filed a motion for an accounting and ongoing royalties. Prism requested an accounting for Sprint's infringement after 2014 through the entry of judgment and to have a royalty set for ongoing infringement through the life of the Asserted Patents.

Sprint opposed the motion by asserting that both an accounting and ongoing royalties were improper because the jury instructions provided Prism compensation for past, present, and ongoing infringement. Prism responded that an accounting and ongoing royalties would grant Prism complete relief from Sprint's infringement of the Asserted Patents.

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eDekka Gets Decked by Finding of Exceptional Case in the Eastern District of Texas

December 28, 2015

Plaintiff eDekka LLC ("eDekka") sued a large number of defendants in Eastern District of Texas alleging infringement of U.S. Patent No. 6,266,674 ("the '674 Patent") titled "Random Access Information Retrieval Utilizing User Defined Labels." As explained by the district court, the '674 Patent relates to storing and labeling information and discloses a preferred embodiment that includes a cassette tape recorder with multiple buttons, a microphone, and a speaker. The majority of eDekka's suits stemming from the '674 Patent target online retailers that offer a shopping cart feature on their e-commerce websites. It is this shopping cart functionality that eDekka alleges infringes the '674 Patent.

Numerous defendants filed motions to dismiss under 35 U.S.C. § 101, contending that the '674 Patent was directed to unpatentable subject matter under Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). The district court granted defendants' motions and held that the claims of the '674 Patent were patent-ineligible under § 101. Defendants then filed a motion asking the district court to find the cases "exceptional" under 35 U.S.C. § 285.

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District Court Declines to Modify Claim Construction Based on PTAB Denial of IPR

December 23, 2015

Adidas AG ("Adidas"), filed a patent infringement action against Under Armour, Inc. ("Under Armour") and MapMyFitness, Inc. ("MapMyFitness") alleging that they infringed over a dozen patents. After Under Armour and MapMyFitness filed answers and counterclaims, the district court held a Markman Hearing and issued a claim construction order.

After the claim construction order, the defendants filed a motion to modify the district court's claim construction. The defendants requested that the district court modify its construction of the term "route path" based on actions taken by the Patent Trial and Appeal Board ("PTAB"). Prior to the claim construction order, Under Armour filed a Petition for inter partes review ("IPR") of one of the patents-in-suit.

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District Court Denies Request for Finding of Exceptional Case Where Plaintiff Pursued and Lost Motion for Preliminary Injunction

December 21, 2015

Moblize contended that TDE Petroleum Data Solutions, Inc ("TDE") either knew or should have known that its motion for preliminary injunction was meritless and that it was brought for the improper purpose of harassing Moblize. In its motion, Moblize asserted that "TDE's actions were plainly designed to increase the cost of litigation for Moblize, arguing that (1) TDE purposefully brought the case in an inconvenient forum, the Eastern District of Texas; (2) TDE issued a press release along with service of process in a calculated effort to harm Moblize and induce Moblize to settle; (3) TDE improperly relied on biased expert witnesses; and (4) TDE brought irrelevant third-party discovery to harass Moblize."

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District Court Denies Discovery Served Too Close to Discovery Cut-Off

December 16, 2015

Plaintiff filed a patent infringement action, alleging that Defendant B2B Supply and Defendant Jerrell P. Squyres (hereinafter "Defendants") infringed U.S. Patent No. 7,731,462 (the '462 patent). Toward the end of discovery, the Defendants served written discovery and filed a motion seeking to extend the discovery deadline by 50 days to complete fact discovery and compelling Plaintiff to produce all responsive documents, certify that its production is complete, produce witnesses for deposition, and answer Defendants' interrogatories.

In support of the motion, Defendants argued that an extension was necessary because Plaintiff had withheld documents from production and had otherwise failed to cooperate with discovery. As explained by the district court, the Defendants argued they were unable to complete discovery because Plaintiff withheld production, provided deficient respondes to discovery, and failed to certify that it had produced all responsive documents, which prevented Defendants from using the information to serve additional written discovery requests and third party subpoenas. Plaintiff responded that it timely served its responses and objections to Defendants' discovery requests and that it had been diligent in searching for responsive documents.

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District Court Grants Sanctions Reducing Number of 30(b)(6) Depositions, Awarding Costs to Plaintiff and with a Warning that Defendant's Discovery Could Be Closed

December 14, 2015

In this patent infringement action, the plaintiff filed a motion for discovery sanctions. The plaintiff argued in its motion that defendant failed to comply with the district court's October 7, 2015 oral discovery order and related text-only order, in which the district court apparently warned the defendant that failure to comply would result in sanctions.

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A Snapshot of University Patent Litigation

December 11, 2015

Today's blog is written by guest author Pedram Sameni, the CEO and Founder of Patexia.
The views expressed are solely those of the contributing author.

As patent litigation overall has grown rapidly since 2010, the industry has also seen a shift in some traditionally litigation averse players. University tech transfer organizations in particular have increased their filings and drawn industry attention over the last few years.

Two cases in particular have been highlighted in the press for their stunning initial award amounts. First Carnegie Mellon won its case against Marvell, bringing in an initial award of over $1 billion in damages, the largest patent verdict of all time. This was followed by the decision in WARF v Apple, where the Wisconsin Alumni Research Foundation was initially awarded $234 million in damages.

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District Court Grants Motion to Dismiss for Lack of Standing Where Plaintiff Could Not Establish That It Owned All Substantial Rights to Patent and Could Not Argue Alter Ego to Establish Ownership

December 6, 2015

Plaintiff Max Sound Corporation ("Max Sound") filed a First Amended Complaint ("FAC") against three defendants: Google, Inc., YouTube, LLC and On2 Technologies (collectively, "Defendants"), for the infringement of Patent No. 7,974,339 (the "'339 patent"). As part of the complaint, Max Sound also included the owner of the '339 patent, Vedanti Systems Limited ("Vedanti"), as a party to the lawsuit.

Defendants filed a motion to dismiss pursuant to Fed.R.Civ.Pro. 12(b)(1), asserting that this action must be dismissed because Max Sound lacks standing to sue. As explained by the district court, "[a]ccording to Defendants, VSL had no authority to confer any rights under the '339 patent to Max Sound on June 20, 2014, because the true owner of the '339 patent at that time was Vedanti. Moreover, Defendants believe the plain language of the June 20th license agreement makes clear that the contract was only between VSL and Max Sound - not Vedanti."

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Motion to Dismiss for Lack of Subject Matter Jurisdiction Denied Where Complaint Alleged Sufficient Facts to Establish Injury-in-Fact

December 2, 2015

Defendant's filed a motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(1) motion, contending that Plaintiffs lacked standing because no case or controversy existed at the time Plaintiffs filed the complaint. Defendant argued that the Plaintiffs had suffered an "injury in fact." The "injury in fact" element of standing requires "an invasion of a legally protected interest that is (a) concrete and particularized, and (b) actual or imminent, not conjectural or hypothetical." Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992) (citations and quotation marks omitted).

Defendant contended that the complaint fails to establish an "injury in fact" because it accused only one of Defendant's products of infringement (the "MoMe® Kardia System") and that product is incapable of infringement because it is still under development and not yet approved by the Food and Drug Administration ("FDA").

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