District Court Rules That Claim Construction Requested For First Time During Trial Is Waived

December 22, 2016

During the trial, the plaintiff, Arthrex, requested that the district court construe the term "proximal end" in certain of the patent-in-suit, U.S. Patent No. 8,821,541 ("the '541 patent"). The district court determined that the request for a claim construction was way too late.

The district court began by noting that "Arthrex did not request construction of this term during claim construction, which occurred more than six months ago. Rather, Arthrex requested that the Court construe the term during the Jury Charge Conference-- the night before the last day of a five-day trial. " As explained by the district court, Arthrex based its request on trial testimony from Dr. Alexander Slocum, Defendants' infringement expert, concerning the plain and ordinary meaning of what he understood "proximal end" to mean. Arthrex then insisted that the district court was required to construe the term because Dr. Slocum's testimony raised a dispute regarding its meaning. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) ("When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.").

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Court Grants Motion to Dismiss for Lack of Case or Controversy Even Though Patent Holder Did Not Provide Covenant Not to Sue

December 20, 2016

Tech Pharmacy filed a patent infringement action against Defendant Alixa Rx LLC and Defendant Golden Gate National Senior Care LLC d/b/a Golden LivingCenters (collectively, "Defendants"). Tech Pharmacy subsequently filed its Second Amended Complaint to add the Fillmore Defendants as named defendants with respect to the misappropriation of trade secret, breach of contract, and related state tort claims.

In response, the Fillmore Defendants asserted counterclaims for declaratory judgment of invalidity, non-infringement, and inequitable conduct directed at Tech Pharmacy's patents. Tech Pharmacy then filed a motion to dismiss the declaratory judgment claims for lack of subject matter jurisdiction because Tech Pharmacy had not asserted the patent claims against the Fillmore Defendants.

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District Court Strikes Infringement Contentions Pursuant to Doctrine of Equivalents Because They Contained Blanket Assertions That Did Not Comply with the Local Patent Rules

December 15, 2016

The Defendants filed a motion to strike the Plaintiff's infringement contentions, including their contentions under the doctrine of equivalents ("DOE"), for failing to comply with the Local Patent Rules ("P.R."). The Defendants argued that the Plaintiff's contentions did not comply with P.R. 3-1(d) because the Plaintiff made "impermissible blanket assertions regarding infringement under the doctrine of equivalents."

P.R. 3-1(d) states that the infringement contentions must disclose"[w]hether each element of each asserted claim is claimed to be literally present or present under the doctrine of equivalents in the Accused Instrumentality."

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District Court Orders Plaintiff to Supplement Damage Information Provided in Federal Rule 26 Initial Disclosures Where Plaintiff Failed to Compute an Actual Damage Number

December 13, 2016

In this discovery dispute in a patent infringement action, Frontgate contended that Balsam Brands, Inc. ("Balsam") failed to adequately respond to an interrogatory seeking information about Balsam's damages. As explained by the district court, Balsam's response stated that it: (1) "intends to seek lost profits on the 1,662 Flip Trees that it did not sell during the 2015 Christmas season"; and (2) "intends to seek a reasonable royalty on all Inversion Trees sold by Defendants for which lost profits are not available." Balsam further responded that "historical data on Balsam's cost, sales, inventory, and pricing" was included in materials produced.

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District Court Denies Motion for Preliminary Injunction Where the Plaintiff Did Not Show Specific Facts of Lost Sales or Injury to Goodwill

December 8, 2016

Plaintiff, D Now, Inc. (D-Now), obtained an exclusive license to U.S. Patent No. 8,795,020, which claims a bubble blowing tube. D Now filed a patent infringement action against defendants TPF Toys Limited and TPF Toys LLC (collectively "TPF"). As explained by the district court, "[b]oth parties sell the bubble blowing tube in bouncing bubble kits, wherein the consumer can blow a bubble with the tube then use either gloves (in D Now's product) or paddles (TPF's product) to bounce the bubble."

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District Court Orders Modification of Protective Order to Allow Plaintiff to Use Defendant's Confidential Information in Opposing Inter Partes Review ("IPR")

December 6, 2016

Defendant Baker Hughes Incorporated ("Baker Hughes") filed five inter partes review ("IPR") proceedings before the Patent Trial and Appeal Board ("PTAB") asserting that the plaintiff Lubrizol's patents were invalid because of obviousness. Baker Hughes and a third-party, Flowchem LLC ("Flowchem") had previously produced documents in the underlying case that they designated "Confidential" or "Highly Confidential" under the district court's Protective Order.

Lubrizol asserted that the confidential documents would refute Baker Hughes's obviousness argument in the IPR proceedings and sought a modification of the district court's Protective Order to allow Lubrizol to use the confidential documents in the IPR proceedings. In particular, Lubrizol asserted that the Baker Hughes documents would reveal evidence of copying, which would refute any contention that the patents were obvious.

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District Court Orders Production of Past Testing from Prior Litigations Despite Confidentiality of Third Parties

December 1, 2016

Dexcel filed a motion to compel contending that Takeda has refused to provide any fact discovery concerning Takeda's methods for particle size analysis used in prior litigations or underlying the data in the patents-in-suit. Dexcel asserted "that this information was relevant because it targets whether Takeda's position as to test methods to assess the literal infringement of Takeda's particle size limitations by Dexcel's product is consistent with positions Takeda has taken in the past."

Takeda objected arguing that any discovery into test methods for particle size that were employed in prior litigations "implicates the confidential and highly confidential information" of the defendants in those suits. Takeda also contended that the Discovery Confidentiality Orders entered in those matters prohibit it from disclosing information designated confidential by those defendants.

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District Court Grants Motion to Compel Responses to Interrogatories Even Though Interrogatories Contained Discrete Subpart Where There was only One Accused Product

November 29, 2016

Plaintiff Synopsys, Inc. ("Synopsys") filed a motion to compel defendant, ATopTech, to respond to interrogatories. ATopTech opposed the motion by arguing that it had already answered Synopsys's Set One, Interrogatory Nos. 1-5, which contained at least 21 discrete subparts. ATopTech therefore contended that it was "not required to respond to any of the interrogatories in Set Two, Interrogatory Nos. 6-25, because the Set Two interrogatories also contain discrete subparts, and even responding to Interrogatory No. 6 would require ATopTech to exceed the 25 interrogatory limit under Federal Rule of Civil Procedure 33(a)(1)."

The district court began its analysis by noting that "[p]atent cases present unique challenges with respect to the application of Rule 33's numerical limit on interrogatories. A circuit judge for the Federal Circuit, sitting as the district court in a patent case, recently devoted an entire opinion to the issue of what constitutes a 'discrete subpart' for purposes of Rule 33(a)(1). See Erfindergemeinschaft Uropep GbR v. Eli Lilly & Co., 315 F.R.D. 191 (E.D. Tex. 2016).

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District Court Orders Additional Deposition of Defendant after Witness Changed Numerous Deposition Answers in Errata

November 23, 2016

The plaintiff, Chrimar Systems Inc. and Chrimar ("Chrimar") filed a motion to compel an additional deposition of Defendant D-Link Systems, Inc.'s ("D-Link") corporate representative, William C. Brown. Chrimar previously took the deposition of D-Link's corporate representative, pursuant to Federal Rule of Civil Procedure 30(b)(6).

After the deposition concluded, Mr. Brown supplied an errata sheet, correcting numerous portions of his deposition testimony pursuant to Federal Rule of Civil Procedure 30(e). In its motion, Chrimar contends that over 60 answers were materially altered and several answers were changed from "yes" to "no." As a result, Chrimar moved the district court to compel "Mr. Brown for a second deposition in Dallas, Texas regarding the changes represented in his errata sheet."

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District Court Warns Plaintiff That If It Narrows Its Case Too Close to Trial, It Will Have Its Trial Time Reduced

November 21, 2016

During the pretrial conference, the Plaintiff Arthrex("Arthrex") told the district court that it may be able to narrow its case once the district court resolved certain pending motions for summary judgment. Shortly after the pretrial conference, the district court informed the parties it would deny the parties' motions for summary judgment and that Arthrex had "raised triable issues of infringement that are sufficient overcome summary judgment."

The district court also stated that it would deny both motions and that a detailed reason for the denials would follow in a separate order.

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District Court Orders Additional Claim Construction Briefing After Plaintiff Appeared to Argue a Different Position in Other Litigation

November 17, 2016

After the district court conducted a claim construction hearing (but before it issued an order), the district court stayed the litigation between Finjan and Symantec pending a decision by the PTAB regarding whether to institute an inter partes review ("IPR") over the asserted patents. When the district court lifted the stay and issued a new scheduling order, Symantec filed a motion seeking additional claim construction briefing another hearing.

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Core Wireless v. LG: District Court Orders Enhanced Damages Based on Defendant's Licensing Discussions

November 15, 2016

A jury returned a verdict finding that LG infringed the claims of the patent-in-suit and that the claims were not invalid. The jury also found that the infringement was willful. As a result, the district court determined whether enhanced damages were appropriate under 35 U.S.C. ยง 284.

As explained by the district court, "Section 284 allows district courts to punish the full range of culpable behavior. Accordingly, the degree of enhancement should be proportional to the degree of the willful infringer's culpability. An enhancement of treble damages may be appropriate to penalize the most egregious conduct. A less significant enhancement may be appropriate for less egregious (though still culpable) conduct. The Court also has the latitude not to enhance even if willfulness is found, where the degree of culpability is de minimis. The particular circumstances of each case must dictate the degree of enhancement."

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District Court Stays Patent Litigation Pending State Court Proceedings That Will Determine Licensing Issue

November 10, 2016

In this patent infringement action, MMEI, owns U.S. patent 6,234,099 ("the '099 patent"). Fineline Industries, Inc. ("Fineline Inc.") entered into a license agreement with MMEI that permitted Fineline Inc. to use the '099 patent for its products for the payment of royalties The agreement also provided that any change of majority control in Fineline Inc. had to be agreed to by MMEI in writing. Fineline Inc. converted into a Florida LLC--Defendant Fineline LLC. Fineline LLC continued to use the 2010 license agreement as a successor to Fineline Inc when . MMEI terminated the 2010 license agreement, arguing that Fineline Inc. had breached the license agreement.

On the same day that MMEI filed the patent infringement action, MMEI filed a lawsuit in state court against Fineline Inc. and Fineline LLC for, among other things, breach of contract and breach of the covenant of good faith and fair dealing, including that Fineline LLC was an "unauthorized successor" to the license agreement.

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District Court Precludes Defendant from Referring to Plaintiff's Past Settlements as "Nuisance Value" But Allows Amount of Such Settlements

November 8, 2016

As this patent infringement proceeded closer to trial, the parties filed various motions in limine. The plaintiff, PerDiemco, filed a motion in limine to preclude evidence or argument referring to PerDiem's prior settlements as "nuisance value settlements." The defendant, Geotab, contended that it should be permitted to refer to low-value settlements as "nuisance" settlements to rebut PerDiem's accusations of willful infringement.

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District Court Orders Plaintiff to Produce Factual Support for Infringement Contentions Regardless of Work Product Doctrine

November 3, 2016

Huawei and Blackberry filed motions to compel seeking the factual material that the plaintiff, SPH, had relied upon to support its infringement contentions. SPH opposed the motion to compel, arguing that Defendants' requests seek the universe of documents that SPH's litigation counsel reviewed and considered to formulate the infringement contentions.

The district court believed that this overstated the Defendants' requests and this requests were more appropriately directed at the documents upon which SPH relied. The district court stated that "Defendants are entitled to know the facts upon which SPH relies for its claims of infringement so they can respond to SPH's infringement positions."

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