June 2016 Archives

After Halo, District Court Concludes that Jury's Finding of Willfulness Is Still Appropriate

June 29, 2016

After a jury trial finding American Technical Ceramics Corp. ("ATC) willfully infringed Presidio Component's ("Presidio") patent, ATC filed a motion for a finding of no willful infringement based on the Supreme Court's decision in Halo. At the time the jury reached its verdict, the Federal Circuit's decision in In re Seagate Tech required that "an award of enhanced damages [under section 284] requires a showing of willful infringement." In re Seagate Tech., LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007) (en banc).

ATC argued that in light of the Supreme Court's decision in Halo, the jury's verdict as to willfulness is void and should be disregard. The district court explained that on June 13, 2016, the Supreme Court issued its decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 14-1513, 579 U.S. __ (June 13, 2016). In Halo, the Supreme Court rejected the Federal Circuit's two-part test from Seagate for determining when a district court may award enhanced damages as inconsistent with § 284. Id., slip op. at 1-2. The Supreme Court explained that § 284 commits the award of enhanced damages to the discretion of the district court. See id. at 8, 12-13, 15. The Supreme Court further explained that the Seagate test is "'unduly rigid'" and "'impermissibly encumbers'" a district court's discretion, particularly its requirement that there must be a finding of objective recklessness in every case before a district court may award enhanced damages.

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After Inventor Dies, Patent Infringement Lawsuit Is Dismissed for Lack of Standing on Court's Own Motion

June 27, 2016

Chris Tavantzis and ChrisTrikes Custom Motorcycles, Inc. ("ChrisTrikes") filed a complaint against a number of individuals and entities that allegedly infringed on a patent for a wheelchair-accessible motorcycle (the "Wheelchair Motorcycle Patent"). After the complaint was filed, the district court received notice of Mr. Tavantzis' death. When no party moved to substitute the proper party to continue Mr. Tavantzis' claims within the time required by Federal Rule of Civil Procedure 25(a), the district court dismissed Mr. Tavantzis from the lawsuit, leaving ChrisTrikes as the only remaining plaintiff.

As a result, the district court examined whether ChrisTrikes' had standing to maintain the patent infringement claims, which included claims based on theories of direct infringement, contributory infringement, and induced infringement. The district court noted that "[b]ecause standing is a fundamental component of a federal court's subject matter jurisdiction, the Court is entitled to examine ChrisTrikes' standing on its own initiative. See Bischoff v. Osceola Cty., 222 F.3d 874, 877-78 (11th Cir. 2000)."

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District Court Denies Agreed Upon Consent Judgment and Permanent Injunction Where Parties Failed to Submit Consent and Injunction within 60 Days after Dismissal

June 22, 2016

After the parties settled the lawsuit, the district court dismissed the case without prejudice, subject to the right of any party to re-open the action within sixty days, upon good cause shown, or to submit a stipulated form of final order or judgment (the "60-Day Order"). Sixty-five days after the district court entered the 60-Day Order, the parties filed a joint motion to extend the 60 day deadline and enter a proposed consent judgment and permanent injunction pursuant the parties' settlement agreement.

In the joint motion, the parties told the district court that a "disagreement arose concerning the terms of the settlement that required the settlement hearing to be transcribed." The district court noted that "whatever disagreement arose between the parties, it arose and was resolved prior to the expiration of the 60-day period. Yet, the parties did not move to extend the deadline within that period."

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District Court Declines Parties Joint Motion to Sever New Defendant from Pending Action

June 20, 2016

In this patent infringement action, the parties filed a joint motion to request that the district court sever Defendant Contour, LLC ("Contour") from the case. VStream, the plaintiff, had not effected service on Contour until after the scheduling conference, so Contour had no ability to participate in the dates selected by the court.

The court explained that "[t]ypically, cases of this nature are consolidated after being filed and then set for a scheduling conference, at which time the parties receive Markman hearing and trial dates. Because those dates are set at the time of the scheduling conference and commemorated in the Docket Control Order issued by the Court, the Court is not inclined to revise them other than in exceptional circumstances."

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After a Jury Trial Determining that the Defendant Infringed Several Valid Patents, the District Court Certified the Partial Judgment for Appeal Prior to a Trial on Damages Because the PTAB Had Found One of the Patents Invalid

June 15, 2016

Plaintiffs asserted that defendants infringed several patents. The district court bifurcated liability and damages for all four patent infringement claims. After a jury trial, the jury concluded that the patents were valid and infringed. Subsequently, after an inter partes review proceeding, the Patent Trial and Appeal Board ("PTAB") issued a Final Written Decision that found all asserted claims of one of the patents-in-suit unpatentable.

The district court denied the defendants' post-trial motions with respect to most of the patents, but withheld any decision on any issues pertaining to the '244 patent, which was the subject of the PTAB proceeding and a pending appeal from the PTAB decision. The defendants then filed a motion for certification of partial final judgment on the patent infringement claims pursuant to Fed. R. Civ. P. 54(b).

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Defendant's "Piecemeal" Approach to Discovery and Review of Only Select Files of Corporate Employees Results in Sanctions

June 13, 2016

In this patent infringement action, the defendants conducted a "piecemeal approach to discovery, reviewing only the files of select corporate employees." The district court found that this approach was contrary to the Federal Rules of Civil Procedure and to repeated orders of the court.

In response to plaintiff's motion to compel, the defendant cited Federal Rule of Civil Procedure 26(b)(2)(C), which allows the court to limit discovery if "the discovery sought is unreasonably cumulative or duplicative..." The district court noted that the rule "allows the court--not a party--to limit discovery where it is unduly burdensome. Absent such an order of the court, a party may not unilaterally refuse to comply with its discovery obligations."

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District Court Denies Request to Stay Discovery Pending Motion to Dismiss Based on Patent-Ineligible Subject Matter

June 8, 2016

J. Crew filed a motion to dismiss the plaintiffs' claims for patent infringement pursuant to Federal Rule of Civil Procedure 12(b)(6), asserting that the patents-in-suit are drawn to patent-ineligible subject matter and therefore invalid under 35 U.S.C. § 101. J. Crew also filed a separate motion to stay all disclosures and discovery in the case until the district court ruled on the motion to dismiss.

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District Court Denies Request for Order Compelling Production of Damage Expert Report from a Different Pending Case

June 6, 2016

In this patent infringement action between Chrimar Systems, Inc. ("Chrimar") and Alcatel-Lucent USA, Inc. ("Lucent"). Lucent sought production of the damages expert report of Plaintiffs' damages expert, Robert Mills, that was created for a litigation currently pending in the Northern District of California.

Chrimar opposed the request on the ground that the expert report was covered by a protective order issued by another Federal court. The district court in Texas agreed.

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District Court May Preclude Evidence from Parent Company Where Parent Company Was Dismissed from Case and Then Refused to Provide Discovery

June 2, 2016

When this patent infringement action began, the plaintiff explained that it was concerned that it would not be able to obtain important discovery if Ricoh Company Ltd. ("RCL"), which is the parent company of the defendants, Ricoh Electronics, Inc. ("REI") and Ricoh Americas Corp. ("RAC") were dismissed as a party. When they moved for dismissal, the defendants represented that: "IV identifies no information exclusively within the possession of RCL that is germane to its infringement case. On the other hand, it would be unreasonable and a hardship on RCL to force it to participate in litigation halfway around the world, particularly when RAC and REI are able and willing to contest IV's claims."

As explained by the district court, after the dismissal of RCL, REI and RAC stated that the technical documents sought by IV were not in their possession or control, but might be obtained from RCL. RCL then refused to provide the documents voluntarily. Unable to obtain the discovery from REI and RAC, IV sought discovery from RCL through international Letters Rogatory. That request was denied by the Japanese Ministry of Foreign Affairs.

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