February 2016 Archives

Webinar: Venue Transfer Strategies in Patent Litigation - How Will TC Heartland Change the Landscape?

February 29, 2016

I am pleased to be a panel member at the Strafford webinar described below. The webinar promises to be informative - I hope you will consider joining us. - Stan Gibson

Venue Transfer Strategies in Patent Litigation - How Will TC Heartland Change the Landscape? Determining Whether and When to File Motions to Transfer Amid Uncertainty, Assessing the Court's Questions in TC Heartland

This 90-minute CLE webinar will provide guidance to patent counsel for developing venue transfer strategies in patent cases. The panel will discuss recent §1404 trends and key considerations that parties should weigh when forming a potential transfer strategy.

Date and Time:

Thursday, March 17, 2016
1:00pm - 2:30pm EDT

Program Outline

• Current lay of the land
• TC Heartland--pre-game analysis
• Best practices and where we are headed


Program Benefits

The panel will review these and other key issues:

• What factors should counsel consider when determining whether to seek a change in venue?
• How are different courts applying §1404 and treating motions to transfer venue?
• What strategies have been effective for patent litigators when pursuing or defending motions to transfer venue?


Speakers:

Paul Devinsky, Partner, McDermott Will & Emory
Stanley M. Gibson, Chair, Patent Litigation Group, Jeffer Mangels Butler & Mitchell LLP
Ralph Phillips, Principal, Fish & Richardson

CLE: This webinar is eligible for at least 1.5 general CLE credits.

CLICK HERE FOR MORE INFORMATION AND TO REGISTER

District Court Denies Plaintiffs' Motion to Exclude Damage Expert Report Where Expert Relied Upon Comparable Licenses

February 25, 2016

In this patent infringement action, Plaintiffs filed a motion to exclude the defendant's damage expert. The motion sought to exclude portion of the defendant's expert report on damages, in particular the "market share reasonable royalty analysis" which was based on licenses for the patents-in-suit.

Continue reading "District Court Denies Plaintiffs' Motion to Exclude Damage Expert Report Where Expert Relied Upon Comparable Licenses" »

The Problem with Backup Tapes: District Court Orders Retention of Old Backup Tapes for Ongoing Litigation

February 23, 2016

In this patent infringement action pending in a multi-district litigation, one of the defendants moved the district court for an order allowing the defendant to destroy old backup tapes. Defendant ICM, Inc. ("ICM") moved for an order permitting it to destroy old backup tapes that contain electronic business information of ICM for the years 2003 through 2009.

Continue reading "The Problem with Backup Tapes: District Court Orders Retention of Old Backup Tapes for Ongoing Litigation" »

District Court Grants Motion to Strike Damage Expert Where Damage Expert Did Not Serve Report Prior to Court Deadline

February 18, 2016

In this patent infringement suit, Defendants and Counterclaimants James Stephens and Spectrum Laboratories, LLC ("Spectrum") moved to strike the report of Plaintiff's damages expert, Robert Taylor. Spectrum argued that the Plaintiff did not designate Mr. Taylor as an expert before the expert designation deadlines set by the district court expired. Spectrum also contended that the plaintiff violated a protective order by providing Taylor with information designated "Attorneys' Eyes Only" under the protective order.

The Plaintiff conceded that it failed to identify Taylor prior to the district court's deadline, but contended that the oversight was inadvertent. The Plaintiff also argued that Taylor's report was timely filed before the expert report cutoff date and that Taylor was required to execute the Acknowledgment accompanying the protective order prior to receipt of any information marked confidential or attorney's eyes only.

Continue reading "District Court Grants Motion to Strike Damage Expert Where Damage Expert Did Not Serve Report Prior to Court Deadline" »

Applying New Proportionality Requirements, Court Grants Motion to Compel and Orders Production of Unredacted Tax Returns and Financial Statements

February 16, 2016

In this patent infringement action, Slide Fire Solutions, LP ("Slide Fire") moved to compel discovery responses from Bump Fire Systems ("Bump Fire"). Bump Fire also requested a protective order to prevent the disclosure of certain discovery, including sensitive trade secrets and financial information.

With respect to the financial information, the court analyzed the motion to compel under the new proportionality standards set for in Fed.R.Civ.P. 26: The party seeking discovery, to prevail on a motion to compel or resist a motion for protective order, may well need to make its own showing of many or all of the proportionality factors, including the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, and the importance of the discovery in resolving the issues, in opposition to the resisting party's showing. And the party seeking discovery is required to comply with Rule 26(b)(1)'s proportionality limits on discovery requests; is subject to Rule 26(g)(1)'s requirement to certify "that to the best of the person's knowledge, information, and belief formed after a reasonable inquiry: ... (B) with respect to a discovery request..., it is: (i) consistent with these rules and warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law, or for establishing new law; (ii) not interposed for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; and (iii) neither unreasonable nor unduly burdensome or expensive, considering the needs of the case, prior discovery in the case, the amount in controversy, and the importance of the issues at stake in the action"; and faces Rule 26(g)(3) sanctions "[i]f a certification violates this rule without substantial justification." FED. R. CIV. P. 26(g)(1)(B), 26(g)(3); see generally Heller v. City of Dallas, 303 F.R.D. 466, 475-77, 493¬95 (N.D. Tex. 2014).

Continue reading "Applying New Proportionality Requirements, Court Grants Motion to Compel and Orders Production of Unredacted Tax Returns and Financial Statements" »

Chestnut v. Apple: District Court Puts Plaintiff to the Test--Proceed on Limited Number of Claims or Continue Stay pending Inter Partes Review

February 10, 2016

In this patent infringement action, the plaintiff asserted claims from two different patents against Apple. Apple filed an Inter Partes Review ("IPR") with the Patent Trial and Appeal Board ("PTAB") and moved to stay the case pending the IPR.

Continue reading "Chestnut v. Apple: District Court Puts Plaintiff to the Test--Proceed on Limited Number of Claims or Continue Stay pending Inter Partes Review" »

Webinar: Litigating Indemnity Provisions - The Nuts and Bolts of Indemnification

February 9, 2016

My partner, Ryan Mauck, and I will be hosting a one-hour webinar on litigating indemnity provisions, which can often arise in the context of patent litigation. The webinar, taking place on March 16, is free of charge and you are invited to attend. Information about the webinar and a link to the registration page are below. - Stan Gibson

Litigating Indemnity Provisions - The Nuts and Bolts of Indemnification

Date and Time: Wednesday, March 16, 2016 | 12:00 PM - 1:00 PM PST

Who should attend:

• In-house counsel
• Litigators and trial lawyers
• Corporate lawyers who structure indemnity provisions
• Mediators and arbitrators

What you will gain from this webinar:

Participants will gain a better understanding of how to negotiate and draft indemnity provisions, make and respond to indemnification requests, and present a strong defense in disputes regarding indemnity agreements.

Agenda:

• Rules of contractual interpretation of indemnification provisions
• Key provisions in indemnification clauses: examples
• When indemnification includes costs of defense
• Responding to notice and demand
• Strategies for when demand is rejected

Speakers:

Stanley M. Gibson, Chair, Patent Litigation Group, Jeffer Mangels Butler & Mitchell LLP
Ryan Mauck, Litigation Partner, Jeffer Mangels Butler & Mitchell LLP

Handout material:

Handout material, including sample indemnity provisions and relevant cases will be made available to all participants.


CLICK HERE TO REGISTER

There is no fee for this webinar.

MCLE: A Certificate of Completion will be provided to all participants. This activity has been approved for 1 hour of Minimum Continuing Legal Education credit by the State Bar of California. Jeffer Mangels Butler & Mitchell LLP certifies that this activity conforms to the standards for approved education activities prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education.

District Court Grants Motion to Exclude Proceeding before PTAB during IPR But Allows Admissions and Arguments Made to PTAB to go before the Jury

February 8, 2016

The plaintiff, Magna, filed a motion in limine to exclude references to Inter Partes Review ("IPR") proceedings. The defendant, TRW, filed a response, arguing that evidence was relevant to multiple issues at trial, including, but not limited to, the history of the asserted patents, prosecution history estoppel, the scope of the claims and prior art, and willfulness.

TRW explained that while it did not intend to argue that the mere fact that the PTO instituted IPR proceedings is conclusive evidence that the asserted patents are invalid, TRW did plan to seek to admit evidence in the IPRs which constitutes the file histories of the patents, while avoiding the undue prejudice, confusion, and irrelevance of informing the jury about details about the IPR proceedings including outcomes.

Continue reading "District Court Grants Motion to Exclude Proceeding before PTAB during IPR But Allows Admissions and Arguments Made to PTAB to go before the Jury" »

Defendants' Motion Seeking to Depose Opposing Counsel Denied Where Defendants Could Not Show That Information Was Unavailable from Another Source

February 4, 2016

After the plaintiff filed suit against the defendants for patent infringement, the defendants contended that they uncovered during discovery a series of e-mails demonstrating that in 2011, plaintiff engaged plaintiff's attorney, Mr. Alan Fisch, to negotiate the sale of its patent portfolio to third parties. Defendants subsequently moved to compel the deposition of Mr. Fisch after they took the deposition of plaintiff's Rule 30(b)(6) witness.

Continue reading "Defendants' Motion Seeking to Depose Opposing Counsel Denied Where Defendants Could Not Show That Information Was Unavailable from Another Source" »

District Court Denies Motion to Dismiss under Section 101 Even Though Two Other District Courts Had Founds Patents Ineligible

February 2, 2016

In this patent infringement action, the Defendants filed motions for partial summary judgment of invalidity with respect to two of the patents at issue in the case. The defendants argued that two district courts had already found the two patents at issue in the case patent ineligible under section 101 of the Patent Act.

Continue reading "District Court Denies Motion to Dismiss under Section 101 Even Though Two Other District Courts Had Founds Patents Ineligible" »