Published on:

by

In this patent infringement action, the district court granted a motion to compel filed by Tellabs against Fujitsu. Fujitsu then filed a petition for a writ of mandamus with the Federal Circuit to overturn the decision of the district court.

The Federal Circuit promptly denied the writ of mandamus as Fujitsu had to establish a “clear and indisputable” right to relief and that it “lack[ed] adequate alternative means to obtain the relief” that it sought. Cheney v. U.S. Dist. Court, 542 U.S. 367, 380-81 (2004) (internal citations omitted).
Continue reading

Published on:

by

In this patent infringement action, the district court issued a sua sponte order requiring plaintiff to show why its inducing infringement claims should not be dismissed as a matter of law. After addressing the United States Supreme Court’s recent decision in Limelight, the district court noted that no single party performed all of the steps of the method in the patent-in-suit.

As noted by the district court, “[e]ach of the method claims presented by the ‘835 and ‘740 patents specifies that some method steps are to be performed by the ‘assisted user,’ while other steps are to be performed ‘at the relay.’ Conceding that no single party actually performs every step of the claimed methods, plaintiffs seek to establish that defendants’ customers (the ‘assisted users’) direct and control defendants in performing those steps to be performed ‘at the relay’ such that the performance of all of the steps of the method can be attributed to the assisted users.”
Continue reading

Published on:

by

In GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam, GSI filed a petition seeking covered business method patent review of U.S. Patent No. 8,346,894 relating to “facilat[ing] real-time two-way transactions, as opposed to deferred transactions, e.g., e-mail.” CBM2014-00101. The Petitioner filed its petition seeking invalidity based on lack of written description, lack of enablement, indefiniteness and obviousness. On October 7, 2014, the Board denied the CBM review finding that the petitioner failed to establish that the claimed inventions were not technological inventions under 37 C.F.R. § 42.301(a). Notably, the Board’s decision was made without any briefing from the patent owner on this issue, who elected not to file a preliminary response.

In reaching its decision to deny CBM review, the Board rejected the petitioner’s argument that the ‘894 patent does not recite a technological invention because “claim 2 recites only known technologies, such as a processor, a machine readable storage device, a signal, an application, a network, the Web, an object, and a data structure.” The petitioner further argued that the ‘894 patent recites a combination of structures that achieve normal, expected and predictable results by “allowing a user to complete from a Web application the types of transactions he or she can already perform in person.”
Continue reading

Published on:

by

In this patent infringement action, the defendant moved to exclude portions of the plaintiff’s (Dr. Bambos’) expert testimony. Defendant argued that Dr. Bambos lacks familiarity with the infringing products, relied too heavily on someone else to provide him with relevant segments of source code to review, and used the district court’s claim construction to determine how the products work.

In analyzing the motion, the district court noted that “Dr. Bambos never used the allegedly infringing products, but his expert opinion was based on ‘thousands of pages of technical manuals, source code, and depositions transcripts.’ (D.I. 221 at p.1) (See D.I. 221-4 at 3-6; D.I. 221-3 at 2-5). Rule 702 requires that expert testimony be based on “sufficient facts or data.” Dr. Bambos need not use the product if, as here, he has familiarized himself with it in other ways. Reviewing source code and other materials can be sufficient.”
Continue reading

Published on:

by

In Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., Ford filed a petition seeking inter partes review of U.S. Patent No. 8,214,097 relating to a hybrid vehicle having, among other things, both an internal combustion engine and an electric motor. IPR2014-00570. On September 30, 2014, the Board instituted a trial on the ‘097 patent, finding that Ford’s petition demonstrated that there was a reasonable likelihood that it would prevail in showing unpatentability of claims 30-33, 35, 36 and 39 of the ‘097 patent. The Board denied review (on both anticipation and obviousness grounds) as to claim 38, which requires that the battery supply power to the electric motor “at a peak of at least 500 volts under peak load conditions.”

In reaching its decision to institute a trial, the Board rejected Paice’s argument that Ford is barred or estopped under 37 C.F.R. § 42.104(a) from requesting an inter partes review due to an alleged breach of an arbitration agreement between the parties. “According to Paice, the arbitration agreement includes ‘unambiguous terms’ that purportedly limit Ford’s ability to ‘challenge the claims of the ‘097 patent.'” Paice argues that Ford is in breach of those terms and therefore failed to demonstrate that it had the requisite standing to file the instant petition.
Continue reading

Published on:

by

In this patent infringement action brought by Trustees of Boston University (“BU”), BU alleged that defendants infringed U.S. Patent No. 5,686,738 (the “‘738 Patent”), which centers on light emitting diodes (“LEDs”) and the technology behind them. BU moved for an order compelling defendant Epistar Corporation (“Epistar”) to designate new Rule 30(b)(6) deponents on certain deposition topics.

As explained by the court, Rule 30(b)(6) requires the noticing party to describe the topics of examination with “reasonable particularity.” Fed. R. Civ. P. 30(b)(6). If the noticing party does not describe the topics with sufficient particularity or if the topics are overly broad, the responding party is subject to an impossible task. McBride v. Medicalodges, Inc., 250 F.R.D. 581, 584 (D. Kansas 2008). To avoid liability, the noticed party must designate persons knowledgeable in the areas of inquiry listed in the notice. Id. Accordingly, if the noticed party cannot identify the outer limits of the topics noticed, compliant designation is not feasible. Id.; see also Newman v. Borders, Inc., 257 F.R.D. 1, 3 (D.D.C. 2009).
Continue reading

Published on:

by

In Trulia, Inc. v. Zillow, Inc., Trulia filed a petition seeking covered business method review of U.S. Patent No. 7,970,674 relating to automatically determining a current value for a real estate property. CBM2013-00056. On March 10, the Board instituted a trial on the ‘674 patent and set a hearing date of November 19, 2014. On July 28, 2014, the Parties publicly announced a merger, which is expected to close sometime in 2015. However, the merger is currently pending review by the FTC, whose review is dictated by the Hart-Scott-Rodino Antitrust Improvements Act under 15 U.S.C. § 18(a). Under this section the initial waiting period expired on September 3, 2014.

In light of the merger, on August 18, the parties filed a joint motion to request to extend the dates by one year, but no less than six months in view of the FTC’s review and expected approval of the merger. The PTAB asked the parties to supplement their motion after the expiration of the initial waiting period. On September 3, the FTC extended the waiting period in a second request for information regarding the merger. On September 12, the parties filed a supplemental notice to provide additional information requested by the Board, including whether the extent to which the parties are bound by the merger agreement and an explanation regarding why the parties are unable to settle this proceeding in an agreement that takes into account the likelihood of FTC approval. Following the Parties’ submission, the Board denied both a 1-year extension and an extension of six months.
Continue reading

Published on:

by

At the end of trial, the Defendant, Texas Instruments Incorporated’s (“TI”), pursued its equitable defense of laches, the only remaining issue left in this patent infringement case. The district court conduced an evidentiary hearing on laches at which the district court heard the live testimony of five witnesses and also accepted deposition designations, prior trial testimony, and exhibits to consider separate from the live testimony.

As explained by the district court, “[t]he equitable defense of laches may be available where the plaintiff unreasonably delayed filing its infringement suit. See A.C. Aukerman Co. v. R.L. ChaidesConstr. Co., 960 F.2d 1020, 1032 (Fed. Cir. 1992) (en banc). The defense is applicable where the accused infringer proves two things: (1) ‘the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant,’ and (2) the defendant suffered material prejudice as a result of the delay Id. at 1032. The defendant must prove delay and prejudice by a preponderance of the evidence. Id. at 1045.”
Continue reading

Published on:

by

In Microsoft Corporation v. Virnetx Inc., Microsoft filed a petition seeking inter partes review of U.S. Patent No. 7,188,180 (“the ‘180 patent”) on May 19, 2014. The ‘180 patent was asserted in a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:07-cv-00080 (E.D. Tex. filed April 5, 2007) (“the 2007 complaint”), and a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:10-cv-00094 (E.D. Tex. filed March 17, 2010) (“the 2010 complaint”). The ‘180 Patent also is involved in VirnetX Inc. v. Microsoft Corp., Docket No. 6:13-cv-00351 (E.D. Tex.) (“the 2013 complaint”) as well as other pending litigation, two inter partes reexaminations (one concluded and one pending), and a second, concurrently filed inter partes review.

The issue before the Board was whether Section 315(b)’s one year time limitation to file a petition after being served with a complaint barred Petitioner’s IPR in light of the 2007 and 2010 complaints or whether the time should run from the service of the 2013 complaint:

Petitioner was served with a complaint alleging infringement of the ‘180 patent on three occasions. The first complaint (i.e., the 2007 complaint) was served on April 5, 2007, and the second complaint (i.e., the 2010 complaint) was served on March 17, 2010. The 2007 complaint and the 2010 complaint were both served more than one year prior to the date on which the Petitioner filed the present Petition requesting inter partes review (February 4, 2014). The third complaint (i.e., the 2013 complaint) was served less than one year prior to the date on which the Petitioner filed the present Petition requesting inter partes review…As described above, 35 U.S.C. § 315(b) states that an inter partes review may not be instituted if the petition is filed more than one year after the date of service on Petitioner of a complaint alleging infringement of the patent.

Continue reading

Published on:

by

Juno Lighting, LLC (“Juno”) filed a complaint against Nora Lighting, Inc. (“Nora”) on February 11, 2013. The complaint alleged that Nora infringed Juno’s patent, No. 5,505,419 (“‘419 Patent”), entitled Bar Hanger for a Recessed Light Fixture Assembly. Nora filed a counterclaim on May 28, 2013.

After the case was stayed pending a reexamination of the patent by the Patent Office and a summary judgment motion for literal infringement was granted in favor of Juno, Nora filed a motion to dismiss for lack of standing.
Continue reading