Recently in District Courts Category

District Court Granted Voluntary Motion to Dismiss Against Named Defendant But Disallowed Reservation of Rights as to Unnamed Third Parties

April 17, 2017

In this patent infringement action, Plaintiff Wright's Well Control Services, LLC (WWCS) filed a motion to voluntarily dismiss defendant Christopher Mancini pursuant to Federal Rule of Civil Procedure 41(a)(2) with prejudice, but with a "reservation of all rights and actions against co-defendant Oceaneering International, Inc., and any other parties and solidary obligors."

Defendant Mancini opposed the reservation of rights against unnamed third parties. Mancini also moved for summary judgment on plaintiff's claims, and WWCS filed a moved for an extension of time to respond to Mancini's motion for summary judgment.

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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 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 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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District Court Grants Motion to Strike Infringement Contentions for Doctrine of Equivalents and Indirect Infringement That Did Not Provide Detail of Infringement Theories

October 27, 2016

The defendant filed a motion to strike part of the plaintiff's initial infringement contentions, focusing on infringement under the doctrine of equivalents and indirect infringement. The defendant asserted that the Local Patent Rules required an explanation of the infringement and plaintiff's contentions provided none.

The district court noted that Local Patent Rule 2.2(d) requires that for "any claim under the doctrine of equivalents, the Initial Infringement Contentions must include an explanation of each function, way, and result that is equivalent and why any differences are not substantial."

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District Court Concludes that Plaintiff Is Collaterally Estopped from Asserting Two Related Patents After Court in Another Jurisdiction Found one of the Patents Invalid under Alice

October 18, 2016

In this patent infringement action, the Defendant moved for dismissal based on collateral estoppel and Alice contending that a prior district court had found the patents invalid for lack of patentable subject matter. Before applying the two-step Alice test, the district court took "judicial notice of the fact that Patent '046 was found invalid in Joao Control & Monitoring Systems, LLC v. Telular Corp., -- F. Supp. 3d --, 2016 WL 1161287 (N.D. Ill. Mar. 23, 2016).

In analyzing the collateral estoppel issue, the district court noted that "the Supreme Court has held that a defense of issue preclusion applies where a party is 'facing a charge of infringement of a patent that has once been declared invalid,' even though the party asserting the defense was not a party to the action where the patent was invalidated." Soverain Software LLC v. Victoria's Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1315 (Fed. Cir. 2015) (quoting Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 349-50 (1971)).

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District Court Denies Motion for Preliminary Injunction Where Inter Partes Review ("IPR") Pending on Claims from Different Patent But Similar to Patent-In-Suit

October 14, 2016


In earlier patent infringement litigation, the Plaintiff sued Ancestry.com DNA, LLC ("Ancestry") in the District of Delaware ("Delaware litigation") alleging infringement of U.S. Patent Number 8,221,381 (the "'381 patent"). Ancestry subsequently filed an IPR seeking review of several claims of the '381 patent, and the PTAB issued an institution decision finding that Ancestry "ha[d] demonstrated a reasonable likelihood that it would prevail in showing that claims 1, 2, 4, 5, 7, 8, 11, 12, 15-17, 20, 41, 44, and 49 of the '381 patent are unpatentable."

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Grecia v. McDonald's: District Court Grants Motion to Dismiss Where McDonald's Could Not "Use" System for Patent Infringement Claim Because Credit Card Companies Controlled the Entire System

September 1, 2016

The plaintiff, Grecia, alleged that McDonald's infringe certain claims of U.S. Patent No. 8,533,860 ("the '860 patent") and of U.S. Patent No. 8,402,555 ("the '555 patent") through its use of the "tokenization systems" of several credit card companies.

As explained by the district court, Grecia alleged that McDonald's uses the claimed systems when a McDonald's customer purchases a McDonald's food item with a credit card, the credit card company's server acts as a receipt module by receiving the primary account number ("PAN") assigned to the credit card. The credit card company's authentication module authenticates the PAN with the issuer of the credit card. Then the credit card company's connection module establishes a connection between the credit card company's payment processor and its token service provider. A token is data that serves as a surrogate for the PAN.) The payment processor then acts as a request module and requests from the token service provider the token associated with the PAN. The payment processor then acts as the second receipt module by receiving the token.) The credit card company then writes the token to the token vault, or branding module, so that when the same credit card is used for subsequent McDonald's purchases, the token associated with the PAN is available to be cross-referenced.

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Jury's Finding of Willfulness Sufficient Under Halo to Support Judgment of Willful Infringement

July 28, 2016

Sociedad Espanola de Electromedicina Y Calidad, S.A. (Sedecal) filed a patent infringement action against Blue Ridge X-Ray Company, Inc. (Blue Ridge X-Ray), DRGEM USA, Inc. (DRGEM USA), and DRGEM Corporation (DRGEM Corp.), alleging infringement of Sedecal's U.S. Patent No. 6,642,829 ("the '829 Patent"). After a jury returned a verdict finding that the Defendants had infringed the '829 Patent, the same jury awarded the Plaintiff $852,000 in damages against all three Defendants in a second trial and found that DRGEM USA, Inc. and DRGEM Corporation's infringement was willful.

The district court then ordered supplemental briefing on the objective prong of the Seagate case since the jury verdict was rendered before the Supreme Court's decision in Halo. While the matter was still under advisement, the Supreme Court issued its decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016). In Halo, the Supreme Court overruled Seagate, concluding that the Federal Circuit's two-part inquiry was "unduly rigid, and it impermissibly encumbered the discretion of district courts." Halo, 136 S. Ct. at 1932.

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District Court Denies Motion to Lift Stay Even after Federal Circuit Affirms PTAB's Decision Upholding Claims of Patent-in-Suit Because Petition for Certiorari Was Pending before Supreme Court

July 26, 2016

The district court had previously granted a stay pending an inter partes reexamination by the United States Patent and Trademark Office ("PTO") of U.S. Patent No. 6,797,454 (the "'454 patent"). After the PTO affirmed the validity of claims 2-6, 15, and 16 of the '454 patent, the Federal Circuit unanimously affirmed the PTO's decision.

Although a reexamination certificate had not yet been issued, the plaintiff argued that the stay should be lifted and further argued that the certificate had not yet been issued only because the defendant had filed a petition for certiorari with the United States Supreme Court. The plaintiff argued that given the extreme unlikelihood that the United States Supreme Court would grant certiorari in this matter, particularly in light of the Federal Circuit's summary affirmance of the PTO's decision, the stay be lifted now.

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After Defendant Seeks to Claw Back Attorney-Client Privileged Documents, District Court Determines Privileged Waived (Including Work Product) Because Witness Gave Testimony Regarding Privileged Documents at Deposition

July 21, 2016

The defendants produced documents in response to plaintiffs' first set of requests for production and included in the production were five documents that the defendants were later claim were subject to attorney-client privilege. Before the defendants made that claim, however, the plaintiffs deposed a corporate designee of Defendants Musion Events Ltd. and Musion 3D Ltd. During that deposition the five documents in questions were marked as exhibits. For some of the documents, the deponent testified regarding the contents of the documents and even read portions of the documents into the record--all without objection as to privilege or work product.

Shortly after that deposition, the defendants' counsel to plaintiffs' counsel and requested a claw-back of the five documents pursuant to the parties' protective order.

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District Court Orders Production of Bills from Expert Witnesses But Permits Redaction of Narrative Statements in Bills

July 19, 2016

In this patent infringement action, the defendant, Ericsson moved to compel the plaintiff, TCL, to produce bills and invoices for worked performed by TCL's expert witnesses. TCL sought to redact the bills and invoices to eliminate statements and narratives from the bills that do not reflect compensation.

Fed.R.Civ.P. 26(b)(4)(C) provides that "Rule 26(b)(3)(A) and (B) protect communications between the party's attorney and any witness required to provide a report under Rule 26(a)(2)(B), regardless of the form of the communications, except to the extent that the communications . . . relate to compensation for the expert's study or testimony." Fed. R. Civ. P. 26(b)(4)(C).

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Subsequent Employment Agreement Assigning Inventor's Intellectual Property Rights Does not Defeat Standing for Inventions Created Prior to Employment Agreement

July 14, 2016

The plaintiff, Odyssey Wireless ("Odyssey") filed four separate actions for patent infringement against Defendants Apple, Samsung, LG, and Motorola, alleging infringement of U.S. Patent Nos. 7,881,393; 8,199,837; 8,576,940; 8,660,169; 8,855,230; and 8,879,606. Each of the patents-in-suit lists on its face Peter D. Karabinis as the inventor and EICES Research, Inc. as the assignee of the patent. Dr. Karabinis is the Founder and Chief Technology Officer of EICES, and EICES is the predecessor of Odyssey Wireless.

In April 2001, Mobile Satellite Ventures ("MSV") hired Dr. Karabinis to be its Vice President and Chief Technical Officer and he entered into an intellectual property and confidential information agreement with MSV, which granted MSV ownership rights in Dr. Karabinis' work for MSV. Based on the agreement with MSV, the Defendants moved to dismiss the patent infringement action based on lack of standing.

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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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