Published on:

by

Defendants sought to exclude the testimony of Plaintiff’s expert Joseph C. McAlexander III in its entirety because he lacked the appropriate technical background. In their motion, Defendants alleged that Mr. McAlexander’s testimony was inadmissible because he did not meet the requirements of one of ordinary skill in the art.
Continue reading

Published on:

by

Aylus Networks, Inc. (“Aylus”) sought documents from Apple “relating to the revenue, costs and profits from (1) purchases or rentals of iTunes video content using the accused Apple TV and/or iOS products iPhone, iPad, and iPod Touch (‘Accused iOS Products’) [and] (2) purchases of video games on the App Store using the Accused iOS Products.” Apple declined to produce the documents and Aylus moved to compel claiming that the information was relevant to its damages claims.

The court began its analysis by noting that Georgia-Pacific factor six examines “[t]he effect of selling the patented specialty in promoting sales of other products of the licensee; that existing value of the invention to the licensor as a generator of sales of his non-patented items; and the extent of such derivative or convoyed sales.” Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970), modified and aff’d, 446 F.2d 295 (2d. Cir. 1971).
Continue reading

Published on:

by

The district court stayed several consolidated cases pending certain proceedings before the Patent Trial and Appeal Board (“PTAB”). In the order granting the stay, the district court stated: “Upon issuance of a final decision from the PTAB, the parties shall request that the stay be lifted so this case may proceed.”

After the PTAB issued a written decision, Ameranth filed a Notice of Ruling Regarding Issuance of Final Written Decisions; Request to Lift Stay. Defendants filed a response to the notice and both briefs disclosed that the PTAB had issued a written decision on the petitions for CBM review on March 20, 2015.
Continue reading

Published on:

by

After Plaintiff Pi-Net International, Inc. (“Pi-Net”) brought suit against Defendants Focus Business Bank and Bridge Bank, N.A. for patent infringement, the Patent and Trademark Office initiated an Inter Partes Review (“IPR”) of the patents-in-suit. The district court then stayed the action pending the resolution of the IPR. During this stay, Pi-Net executed agreements transferring ownership of the asserted patents to its president Dr. Lakshmi Arunachalam.

The defendants, claiming that Pi-Net now lacks standing to sue for infringement of the asserted patents, moved to lift the stay and dismiss the cases as moot.
Continue reading

Published on:

by

The defendants in this patent infringement action filed several motions for leave to amend their answers to include various affirmative defenses, including: (1) the affirmative defense of patent misuse; (2) the affirmative defense of inequitable conduct; (3) a counterclaim for declaratory judgment of non-infringement; and (4) a counterclaim for declaratory judgment of invalidity. Plaintiff REC Software (“REC”) opposed the motions for leave to amend and asserted that the proposed amendments would be futile and the proposed counterclaims and affirmative defenses were duplicative.

REC argued that there was no basis for a defense or counterclaim of patent misuse because an affirmative defense or counterclaim of patent misuse may not be based on infringement or damages positions asserted in litigation. As the district court explained: patent misuse usually applies where a patentee seeks to impermissibly extend the monopoly grant of a patent. U.S. Philips Corp. v. Int‟l Trade Comm‟n, 424 F.3d 1179, 1184-85 (Fed. Cir. 2005). The Federal Circuit has held that certain activities constitute per se patent misuse, such as when a patentee attempts to extend the term of the patent by contractually requiring payment of post-expiration royalties. Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 869 (Fed. Cir. 1997). But other activities have been excluded from the doctrine of patent misuse. For example, Congress has declared that a patent owner may seek “to enforce his patent rights against infringement or contributory infringement” without being guilty of patent misuse or illegal extension of the patent right. 35 U.S.C. §271(d)(3).
Continue reading

Published on:

by

Rec Software USA, Inc. (“Rec”) filed a patent infringement action against HTC America, Inc. (“HTC”). HTC requested leave to file a motion for summary judgment based on 35 U.S.C. §101. The request for leave to file the summary judgment motion occurred prior to claim construction proceedings.

HTC argued that the summary judgment motion could potentially dispose of the entire case in support of its request for leave to file an early motion for summary judgment. Rec opposed HTC’s request by arguing that claim construction was necessary to understand the nature of the asserted claims.
Continue reading

Published on:

by

Plaintiff GT Nexus, Inc. (“GT Nexus”) filed a declaratory judgment action against Inttra, Inc. (“Inttra”) seeking a declaration that four of Inttra’s patents (“patents-in-suit”) were invalid and have not been infringed. Inttra filed counterclaims against GT Nexus for infringement of the patents-in-suit.

The district court had previously stayed the action pending the ex parte re-examination of the patents-in-suit. After the patents emerged from the ex parte re-examination, Inttra moved to lift the stay. GT Nexus opposed arguing that the stay should not be lifted because it had filed petitions for Covered Business Method (“CBM”) review with the Patent Trial and Appeal Board (“PTAB”). The district court then denied Inttra’s motion, finding that each of the four factors for determining whether to stay a case pending CBM review weighed in favor of a stay. In its order, the district court “stated that if CBM review is granted, the case will remain stayed pending completion of the CBM review proceedings. Id. The Court also stated that if CBM review is denied, Inttra may file a motion requesting to lift the stay and reopen the action. Id.”
Continue reading

Published on:

by

Plaintiff Labyrinth Optical Technologies LLC (“Labyrinth”) filed a patent infringement action against Defendant Alcatel-Lucent USA, Inc. (“Lucent”), alleging that Lucent infringes U.S. Patent No. 8,103,173 (the “‘173 Patent”). On the eve of trial, Lucent filed a motion to dismiss the case for lack of standing, arguing that Labyrinth could not show that it holds the rights to the ‘173 Patent.

The district court review the following facts to analyze the motion: “In November 2011, Teradvance Communications, LLC (“Teradvance”) granted to Acacia Research Group LLC (“Acacia”) an exclusive licence to certain patents and patent applications listed in an attached exhibit (“Exclusive License”). The list included foreign and domestic patents and pending patent applications, including U.S. Patent Application No. 12/554,241, which later issued as the ‘173 Patent. In April 2012, Acacia entered into an Assignment and Assumption Agreement (“Assignment”) with Labyrinth, one of Acacia’s affiliates. By its express terms, the Assignment is governed by Texas law. The Assignment notes that the Exclusive License covered “the Patents listed in the Exhibit attached hereto (the ‘Patents’),” but the Assignment does not specify whether the Exclusive License covered anything else. The Assignment states that it conveyed rights to the “Patents.” But unlike the Exclusive License, which actually has an exhibit identifying the patents subject to the agreement, the Assignment does not.”
Continue reading

Published on:

by

Defendant Ericsson filed an unopposed motion for leave to file its motion to strike certain paragraphs of a supplemental expert report for the plaintiff under seal. Although the request was unopposed, the district court evaluated whether it was appropriate to seal the motion and accompanying exhibits. In the motion, Ericsson argued that the motion to strike refers to, quotes from, and attaches exhibits which are designated, contain, and constitute protected material under the Protective Order.
Continue reading

Published on:

by

After the parties submitted expert reports in this patent infringement action, Ford objected to Eagle Harbor’s damage expert’s expected testimony and demonstratives. Ford objected to Eagle Harbor’s evidence because it involved multiple dates of possible infringement and the damage expert only calculated his royalty rate based on one possible date of first infringement.

As the district court explained, “[i]n his report, Mr. Wagner provides that, for the alleged infringement by Ford’s SYNC system, ‘the hypothetical negotiation date is on or around 2007 Q2.’ . . . Mr. Wagner’s trial exhibits, however, disclose three other possible dates for the date of first infringement. . . . These additional dates are based on the issuance of two of the continuation patents–the ‘739 Patent and the ‘119 Patent–and the possibility that Eagle Harbor’s damages may be limited for failure to mark. The new dates are March 23, 2010, August 17, 2010, and August 23, 2011. Mr. Wagner did not provide a hypothetical negotiation for any of these new dates.”
Continue reading