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District Court Denies Request to Change Expert Date Based on Change in Defense Counsel

February 21, 2017

Plaintiff Genes Industry, Inc. ("Genes") filed a patent infringement action against Defendant Custom Blinds and Components, Inc. ("Custom"). The patent discloses a winding wheel for use on window coverings. Custom filed a motion to continue its expert report deadlines from November 28, 2016 to February 10, 2017, and to continue the expert discovery cut-off date from December 16, 2016 to May 17, 2017.

In reviewing the request, the district court noted that "Defendant retained a new counsel way back in early November and the Court ordered the attorney substitution on November 17, 2016. This was 11 days before Defendant's expert reports were due. Defendant's counsel states that it took significant time to review the case after receiving the file on November 19, 2016. For some reason, Defendant's counsel waited until just two days before Defendant's expert reports were due before attempting to enter a stipulation with Plaintiff's counsel to extend expert report deadlines. Plaintiff's counsel declined this attempt because the Court's previous order granting an extension of expert report deadlines had stated in capital letters that 'no further continuances [would] be granted without a further very strong showing of good cause.'"

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Plaintiff Cannot Take Back Venue Admission in Patent Infringement Action

December 27, 2016

Plaintiff Ecojet, Inc. ("Ecojet") brought a patent infringement action against Defendant Luraco, Inc. ("Luraco") for infringement of U.S. Patent No. RE45,844 ("the '844 Patent"). After the litigation was pending for several months, Luraco filed a Motion for Leave to File a First Amended Answer regarding venue.

In its motion, Luraco asserted that even though it "originally admitted that venue is proper in this district, it has since determined that venue is improper." The district court explained that "Luraco's argument seems to be tied to its request for re-examination of the '844 Patent, but the actual basis for venue being improper is unclear from its Motion."

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Plaintiff Granted Dismissal Based on Covenant Not to Sue Even With Motion to Dismiss for Lack of Patentable Subject Matter Pending

September 22, 2016

The plaintiff, Shipping and Transit, LLC ("Plaintiff"), filed a patent infringement action against Defendant Neptune Cigars, Inc. ("Defendant"), for infringement of U.S. Patent Nos. 6,415,207 ("the '207 Patent") and 6,763,299 ("the '299 Patent"). The Defendant filed a motion to dismiss on the ground that the patents are directed to ineligible subject matter under 35 U.S.C. § 101.

Instead of opposing the motion to dismiss on the merits, the Plaintiff issued a covenant not to sue to the defendant. The Plaintiff then argued that the covenant not to sue removed any actual controversy between the parties and that the case should be dismissed based on a lack of subject matter jurisdiction.

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District Court Denies Request for Contempt Where Defendant Continued to Provide Repairs and Replacement Parts to Enjoined Devices

January 11, 2016

Plaintiff Advanced Transit Dynamics, Inc. ("Plaintiff" or "ATD") filed an ex parte application for a judgment of civil contempt against Defendant Ridge Corporation's ("Defendant" or "Ridge") for allegedly violating of the district court's Modified Preliminary Injunction Order ("Order"). In its ex parte application, ATD asserted that Defendant's repair and support of accused devices sold before the issuance of the Order constitute infringement and violate the Order.

As explained by the district court, before the effective date of the preliminary injunction, Ridge had sold hundreds of GreenTail devices. Ridge claimed that repairs and replacement parts are necessary to maintain the safe use of the devices. Ridge also asserted that it provides only unpatented parts and services and does not charge for them. On October 22, 2015, Ridge notified ATD that it interpreted the Order to permit Ridge to repair and support GreenTail devices sold before September 29, 2015. ATD disagreed with the interpretation and refused to consent to Ridge's repair or support of the GreenTail devices.

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Limestone v. Apple: Apple Successfully Moves to Dismiss Willful Infringement Claims

November 2, 2015

Limestone filed a patent infringement action against Apple, alleging direct and willful infringement of four patents. For each of the four claims of patent infringement against Apple, Limestone alleged, "[u]pon information and belief, Apple will continue its infringement notwithstanding its actual knowledge of the [four patents] and while lacking an objectively reasonable good faith basis to believe that its activities do not infringe any valid claim of the [four patents]." As such, Apple's future "acts of infringement will constitute continuing willful infringement of the [four patents]."

Apple filed a motion to dismiss Limestone's four willful infringement claims. Apple asserted that Limestone did not allege pre-litigation knowledge of the patents at issue nor did it move for a preliminary injunction. Apple argued that the willful infringement claims were deficient for these reasons.

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Court Orders Further Production of Financial Records from Company and Accountant, Finding "Inconceivable" That Company Was Only Able to Locate Two Years of Tax Returns

September 10, 2015

Plaintiffs filed an action defendants, Bouncing Angels, Inc. for, among other things, patent and copyright infringement. Plaintiffs successfully moved the district court to allow them to amend the complaint to add the owner of defendant Bouncing Angels, Inc., as a defendant based on financial evidence they discovered that could support an argument in favor of piercing the corporate veil. Discovery was extended "for the limited purpose of allowing discovery and dispositive motions only on issues relating to piercing the corporate veil." The plaintiffs filed a motion to compel discovery on that issue.

As explained by the court, "[t]he discovery requests at issue in the Motion are all directed at defendant Bouncing Angels, and consist of document requests, requests for admissions, and an interrogatory. The discovery seeks Bouncing Angels' tax returns and annual statements for a number of years, loan and security documents relating to a line of credit, information as to this defendant's working capital, and whether Bouncing Angels ever conducted an independent audit."

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District Court Grants Summary Judgment of No Damages for Failure to Mark

August 26, 2015

Plaintiff Juno Manufacturing, LLC ("Plaintiff" or "Juno") filed a patent infringement complaint against Defendant Nora Lighting, Inc. ("Defendant" or "Nora"). The complaint alleged that Defendant infringed Plaintiff's patent, No. 5,505,419 (the "'419 Patent"), entitled Bar Hanger for a Recessed Light Fixture Assembly. Nora filed a motion for summary judgment seeking a judgment that Juno was barred from recovering damages on the ground that Juno failed to properly label its products.

In its motion, Nora asserted that Juno failed to provide proper notice of the '419 Patent. As explained by the district court, the requisite notice can be actual or constructive.

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Enovsys v. AT&T: Court Excludes Plaintiff's Damage Expert for Failure to Apportion and Sua Sponte Bifurcates Trial into Liability and Damage Phases to be Tried to Different Juries

August 19, 2015

After the court struck plaintiff's damage expert's report for failing to tie damages to the limited feature of the patented invention, the court permitted the plaintiff to submit a supplemental expert report. Once the supplemental expert report was served, AT&T again moved to exclude the plaintiff's damage expert from the upcoming trial.

AT&T contended that the opinions in the Supplemental Report, organized around four alternative damages calculations presented in two sets of two, did not correct the defects in the original report because plaintiff's expert (Parr) did not tie "his damages calculations to the value of the patented invention." AT&T further argued that the calculations simply attempt to exclude certain non-infringing revenue from the royalty base and do not attempt to address apportionment at all, which runs afoul of the entire market value rule.

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Retailer Permitted to Sell Existing Inventory after Preliminary Injunction Issued against Manufacturer

June 10, 2015

After the plaintiff Cordelia Lighting, Inc. ("Cordelia") obtained a preliminary injunction against Zhejiang Yankon Grp. ("Yankon"), Cordelia sought to add certain retailers to the injunction. Cordelia owns U.S. Patent No. 8,474,204 ("the '204 Patent"), which is entitled "Recessed LED Lighting Fixture" and describes a fixture designed to hold an LED light bulb. Cordelia alleged that Yankon infringed the '204 Patent by making and selling a product called the "Utilitec Pro LED Recessed Retrofit Downlight" Yankon sells these products to Lowe's Companies, Inc. and Lowe's Home Centers, LLC ("Lowe's").

In its effort to add Lowe's to the injunction, Cordelia argued that Cordelia first argued that Lowe's should be enjoined because it is in "active concert or participation" with Yankon. The district court explained that "[s]ignificant to the analysis here, '[a]ctions that aid and abet in violating the injunction must occur after the injunction is imposed for the purposes of Rule 65(d)(2)(C).' Blockowicz v. Williams, 630 F.3d 563, 568 (7th Cir. 2010). It is undisputed that Yankon manufactures the Accused Products in China and then sells them to Lowe's, freight on board, in China. (See Declaration of Stephen Lobbin, Doc. No. 107-1, Ex. E (Deposition of Kevin Zhao at 36:15¬37:2).) In other words, once Yankon sells a unit of product to Lowe's, Yankon receives payment and no longer has any involvement with the end sales of the products to consumers. The Injunction Order prevents Yankon from making, selling, or importing the Accused Products. (Injunction Order at 14.) To be properly subject to the Injunction Order, Lowe's would have to aid or abet, or be a privy to, Yankon taking such actions. But, Lowe's fulfills neither requirement; it is hoping to sell off its own accumulated inventory of the Accused Products. Lowe's has already purchased this inventory, and is not continuing to purchase Accused Products from Yankon (which would clearly constitute a violation of the Injunction Order).

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Farstone v. Apple: With "far too many disputes," Court orders face-to-face meet and confer to resolve motion to compel

May 27, 2015

Apple filed a motion to compel discovery from Farstone Technology, Inc. ("Farstone") by way of a Joint Stipulation as required by the court's local rules. After the court reviewed the joint stipulation, it found that there were significant problems and that too many disputes remained for the court to resolve.

As a result, the court concluded that the meet and confer process had failed that the parties had not complied with Local Rule 37-1. "After reading the Joint Stipulation, the Court cannot but conclude that the meet and confer process has failed. There are far too many disputed issues. Both sides are not being as reasonable and flexible as they should be and as the Local Rules contemplate. Specifically, Local Rule 37-1 requires counsel to 'confer in a good faith effort to eliminate the necessity for hearing the motion or to eliminate as many of the disputes as possible.' (Emphasis added.)"

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Motion for Judgment on the Pleadings Based on Section 101 Denied Where Defendant Failed to Include Challenge in Invalidity Contentions

May 13, 2015

In this patent infringement action between Plaintiffs Good Technology Corporation and Good Technology Software, Inc. ("Good) and Defendant MobileIron, Inc. ("MobileIron"). Two months before the trial, MobileIron moved to dismiss the case based invalidity under 35 U.S.C. § 101.

The court, referencing the Supreme Court's decision in Alice, found the claims in the patents may indeed be abstract. "In Alice Corp. Pty. Ltd. v. CLS Bank Int'l, the Supreme Court held that 35 U.S.C. § 101 bars any patent claim directed to an abstract idea unless the claim includes "additional features" that transform the idea into a patent eligible invention. At first glance, Alice would seem to pose serious problems for each of the claims of two patents Plaintiffs Good Technology Corporation and Good Technology Software, Inc. assert against Defendant MobileIron, Inc. United States Patent No. 7.907,386 appears directed to little more than the notion of enforcing rules. United States Patent No. 7,702,322 appears no less abstract in claiming a way of ensuring the compatibility of two items used together. In the absence of a transformation of these ideas, Good would appear to be the owner of two patents worth little more than the paper they are printed on."

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District Court Sanctions Defendants for Failing to Agree to Standard Protective Order

January 12, 2015

In this patent infringement action, the plaintiff filed a motion for entry of a standard protective order after the defendant would not agree to sign a stipulated protective order. As explained by the district court, the plaintiffs sued defendants, alleging that they infringed on several patents.

After the lawsuit was filed, plaintiffs' counsel requested that defendants' counsel sign off on a stipulated protective order to protect certain confidential/proprietary materials that the parties were going to exchange in discovery. The district court explained that "[t]his is standard operating procedure in patent cases in federal court and the parties and the Court routinely sign off on them in these cases."

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Plaintiff Loses Motion for Summary Judgment after District Court Concludes that Dispute over Person of Ordinary Skill in the Art Is Not Material

December 29, 2014

The plaintiff, MyMedicalRecords ("MMR"), owns U.S. Patent No. 8,498,883 (the '883 Patent) entitled "Method for Providing a User with a Service for Accessing and Collecting Prescriptions." MMR asserted claims 1-3 of the '883 Patent against Quest Diagnostics, Inc., WebMD Health Corp., WebMD Health Services Group Inc., and Allscripts Healthcare Solutions, Inc. (collectively, "Defendants").

As explained by the district court, the asserted claims are method claims directed to providing users with a secure and private way to collect, access, and manage drug prescriptions online. Independent claim 1 recites a "means for scheduling one or more prescription refills concerning a drug prescription" limitation. Claims 2 and 3 depend on claim 1 and therefore incorporate this "means for scheduling" limitation by reference.

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Motion for Rule 11 Sanctions Denied After Plaintiff Granted Defendants Covenant Not to Sue Where Plaintiff Attempted to Make an Assessment of the Likelihood of Infringement

December 24, 2014

Phoenix Modular Elevator, Inc. ("Phoenix") filed a complaint for patent infringement against T.L. Shield & Associates, Inc. ("Shield") and Modular Elevator Manufacturing, Inc. ("MEM"). The patent at issue, United States Patent No. 6,079,520 (the "520 patent"), is entitled "Method of Retro-Fitting Elevators to Existing Buildings." As explained by the district court, the '520 patent describes a method of manufacturing an elevator and installing it onto an existing, multistory building.

During the case, Phoenix learned that a smaller than expected number of potentially infringing elevators were not actually infringing. As a result, Phoenix signed a covenant not to sue and explained that it was no longer economical to litigate the case. Phoenix then filed an unopposed motion to dismiss the complaint for lack of subject matter jurisdiction.

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Oral Assignment Ineffective to Convey Patent Rights and Subsequent Assignment too Late to Save Complaint from Dismissal with Prejudice for Lack of Standing

December 10, 2014

The plaintiff, Freed Designs, Inc. ("Freed Designs"), filed a patent infringement action defendant Sig Sauer. Robert Freed is the sole inventor of the '764 Patent, titled "Grip Extender For Hand Gun." Freed is also the sole owner and President of Plaintiff Freed Designs. Plaintiff alleged that Sig Sauer makes, sells, and offers to sell magazine extenders that infringe the '764 Patent. Sig Sauer answered the complaint and raised an affirmative defense of lack of standing. Sig Sauer then moved to dismiss the complaint for lack of standing.

After the action was filed, Freed executed an "Assignment of the Invention and Patent Application" transferring to Free Designs his "entire right, title, and interest in and to" the '764 Patent. A few months later, Freed executed another assignment titled "Assignment of Rights, Title and Interest in Invention." This second assignment was styled as a nunc pro tunc assignment, purporting to have an effective date of August 16, 2005 (the issue date of the '764 Patent).

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