Patent Lawyer Blog

Pact XPP Technologies ("Pact") filed a patent infringement action against Xilinx, Inc. ("Xilinx") and other defendants. Xilinx filed a motion to exclude Pact's expert's testimony on inducement. Pact claimed that the defendants induced Xilinx customers to infringe the asserted patents and presented expert witness to offer an opinion that Xilinx actively induces infringement, which in part relied on consumer survey evidence.

The court began it analysis by noting that "[a]n expert witness may provide opinion testimony if '(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issues; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case.' Fed. R. Evid. 702. A trial court is 'charged with a 'gatekeeping role,' the objective of which is to ensure that the expert testimony admitted into evidence is both reliable and relevant.' Sundance, Inc., v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1360 (Fed. Cir. 2008).

Defendant, Xilinx, Inc. ("Xilinx"), identified and disclosed an employee as an expert pursuant to Fed.R.Civ.P. 26 and submitted several disclosures for the employee expert as well. Plaintiff moved to exclude the employee expert's disclosures on grounds of (a) improper hearsay, (b) undisclosed opinions regarding prior art, (c) unreliable opinions, (d) improper opinions regarding defendant's licensing practices and (e) as an improper attempt to remedy defendant's improper invocation of the attorney-client privilege during the employee expert's deposition. The court denied the motion on each of these grounds.

In this patent infringement action pending in the Eastern District of Texas between SimpleAir and a number of defendants, including Apple, the defendants filed a motion in limine to preclude SimpleAir from referencing the revenue or profits associated with Defendants' products or Defendants' overall economic status, profitability, or relative financial strength. In ruling on the motion in limine, the district court granted the motion in part and denied the motion in part.

The defendants apparently filed the motion in limine to prevent the plaintiff from trying to influence the jury on liability and damages by merely referencing defendants' financial strength and profitability. The district court granted the motion in part, ordering that SimpleAir would be prohibited from discussing the total revenue or profits of defendants' products. The district court did permit, however, SimpleAir to discuss the incremental change in revenue, but only to the limited scope the expert addressed it in his expert report.

Plaintiff, Round Rock Research ("Round Rock"), filed a motion to compel non-infringement contentions from Defendant Dell ("Dell") and Dell moved to limit the number of asserted complaints brought by plaintiff. Round Rock asserted ten patents against 125 products of Dell and Dell contended that Round Rock had asserted approximately 82 claims from the ten patents-at-issue. As a result, Dell asserted that the large number of claims was unmanageable for claim construction, fact discovery, expert reports, depositions and trial.

In considering Round Rock's motion to compel non-infringement contentions, the district court noted that the plaintiff requested a response to its interrogatory seeking Dell's non-infringement contentions. In response, Dell asserted that the interrogatory was prematurely seeking its position on claim construction and that the interrogatory was unduly burdensome and unreasonable given the number of claims asserted by Round Rock.

Defendants filed a motion for summary judgment asserting that all claims of the patent-in-suit was invalid under 35 U.S.C. § 101 because the claims did not satisfy the machine-or-transformation test and otherwise disclosed an abstract idea. The patent-in-suit is directed to a method for computing Current Procedural Technology ("CPT") from documents generated by physicians. CPT codes are a system of codes developed by the American Medical Association ("AMA") in conjunction with the Health Care Financing Administration.

The CPT codes provide a uniform language, which facilitates patient billing. The invention allows a CPT code to be calculated based on the documentation process that occurs during the physician-patient meeting. During the meeting, the computer prompts the physician with a list from which the physician chooses particular descriptions that best characterize the patient's status. All of the claims involve a process for determining CPT codes based on information that is gathered during the physician-patient meeting.

Plant Equipment ("Plant") filed a patent infringement action against Intrado over a patent that describes a system and method for routing incoming calls through the use of a central data manager over a wide network to multiple call centers having multiple remote terminals. Intrado provides technology for the 9-1-1 call infrastructure that delivers millions of emergency calls each year throughout the United States. Plant accused Intrado's 9-1-1 network, called the Intelligent Emergency Network of infringing the Plant patent.

Plant served infringement contentions, which it supplemented a few weeks later at Intrado's request. Intrado, still not satisfied with the infringement contentions, filed a motion to compel Plant to produce infringement contentions that comply with the Eastern District of Texas' Local Patent Rule 3-1. Intrado asserted that the Plant contentions merely parroted claim language and used block quotes without specifying components or structures, failed to consistently point to the same structure for one claim limitation ("remote terminal structures") and failed to explain how customized installations could infringe and explain how such infringement occurs.

Microsoft and Google sued Geotag in the District of Delaware for a declaration that their customers did not infringe a Geotag patent, "Internet Organizer for Accessing Geographically and Topically Based Information," and that the patent was invalid. Geotag had sued in excess of 450 companies in the Eastern District of Texas and many of these companies were customers of Microsoft and Google, who provide mapping services that allow interested persons to use the Internet to search for a convenient location of a business.

Geotag moved to transfer the declaratory judgment action pending in Delaware to the Eastern District of Texas. The district court in Delaware analyzed the private and public interest factors pursuant to Section 1404(a) and concluded that transfer was not appropriate.

In a patent case filed in the Eastern District of Texas by Eon Corporation IP Holdings, LLC ("Eon") against Cellco Partnership d/b/a Verizon Wireless ("Verizon"), along with other defendants, Eon moved to dismiss Verizon's inequitable conduct counterclaims and strike its inequitable conduct affirmative defenses. Magistrate Judge Love recommended that Eon's motion to dismiss be denied because Verizon's inequitable conduct claim was sufficiently pled.

Verizon's inequitable conduct was based on two separate instances. First, Verizon alleged that the sole inventor of the asserted '491 patent deliberately withheld his earlier patent from the U.S. Patent Office ("PTO") with the intent to deceive the PTO. Second, Verizon alleged that the '491 patent should be found unenforceable under the "infectious unenforceability" doctrine because it was obtained due to Eon's inequitable conduct of its parent patent application. In denying Eon's motion, the Magistrate held that Therasense did not substantially alter the pleading requirements and that Verizon sufficiently plead inequitable conduct under the standard set forth in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009).

Plaintiff TiVo brought an emergency motion to compel production of an e-mail that defendant AT&T produced and then clawed back pursuant to a protective order agreed to by the parties. During a deposition, TiVo marked an e-mail as an exhibit and questioned the deponent for several minutes about the e-mail before AT&T's counsel demanded that TiVo return the e-mail. AT&T's counsel explained that the e-mail may be subject to a common interest agreement with a third party. TiVo returned the e-mail pursuant to the parties' protective order.

TiVo subsequently moved to compel the e-mail arguing that it did not contain attorney-client privileged or work product information. TiVo pointed out that neither the sender nor the recipient are attorneys and the subject matter of the email did not contain legal advice. In addition, the e-mail was created for a business purpose and not for purposes of litigation and therefore could not be work product. TiVo also argued that the e-mail was discoverable under the crime-fraud exception because the contents of the e-mail constitute prima facie evidence of an antitrust violation.

The plaintiff filed multiple patent infringement actions against seven different defendants in many different district courts. The plaintiff moved to centralize the patent litigation in the Eastern District of Texas where there were seven actions pending in five separate districts. The responding defendants all opposed centralization. Based on the briefing before the panel and after a hearing, the panel held that the actions involved common questions of fact and that centralization of the actions would serve the convenience of the parties and witnesses. The panel also found that centralization would promote the just and efficient conduct of the litigation. However, the panel determined that centralization was more appropriate in the Western District of Oklahoma (where one case was pending) rather than the Eastern District of Texas (where three cases were pending).

All seven actions concerned questions regarding the infringement and/or the invalidity of three patents pertaining to "smart meters" that are used to measure energy consumption and to collect those measurements over a wireless communication network. In each action, the plaintiff alleged that the defendant, each of whom are utility companies, use infringing meters covered by the patents. As a result, the panel determined that "[c]entralization will eliminate duplicative discovery, prevent inconsistent pretrial rulings (particularly on claim construction issues), and conserve the resources of the parties, their counsel and the judiciary."

Internet Machines LLC ("iMac") filed a patent infringement action against Alienware Corporation and PLX Technology, Inc. ("PLX") and several other defendants alleging infringement of two patents pertaining to PCI Express switches. With respect to PLX, iMac moved to compel the production of various sales documentation for all sales of the accused products regardless of whether the products shipped to the United States. PLX produced a sales summary and underlying documents for all PCI Express switches shipped to the United States. PLX declined to produce any additional documentation relating to those switches shipped to international markets.

The primary disagreement centered on whether PCI Express switches which were not shipped to the United States qualify as a "sale" under 35 U.S.C. § 271. iMac contended that all sales, whether shipped domestically or internationally, are still accepted by PLX in its Sunnyvale, California office and therefore count as domestic sales and are relevant for calculating damages.

In a case pending in the United States District Court for the Eastern District of Texas, the district court entered an order that leave of court must be obtained before a summary judgment motion may be filed. Defendant filed a letter brief with the district court seeking leave to file a motion for summary judgment of invalidity based on indefiniteness.

The letter brief asserted that the claims in the patent-in-suit were indefinite based on the Federal Circuit's decision in Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005). In Datamize, the Federal Circuit affirmed a summary judgment in favor of a competitor on the basis that the claims that disclosed a software program which allowed people to author user interfaces for electronic kiosks were indefinite. The Federal Circuit focused on the patent's use of the term "aesthetically pleasing" and whether that term met the standard for definiteness. The Federal Circuit found that definition of "aesthetically pleasing" could not depend on an undefined standard and that the definition could not be based on subjective opinion.

In three patent cases brought by the same plaintiff, Raylon LLC, against numerous defendants, Judge Davis of the Eastern District of Texas denied Rule 11 sanctions and motions for attorneys' fees under Section 285 of the Patent Statute, and Section 1927 of Title 28.

Following the grant of summary judgment of noninfringement, Defendants filed motions contending that Raylon's infringement theory was "so legally untenable" that fees and costs should be awarded under Sections 285 and 1927. Defendants earlier had filed a Rule 11 motion seeking sanctions. Raylon asserted U.S. Patent No. 6,655,589 ("the '589 patent") against all of the defendants. All of the claims of the '589 patent require a "display being pivotably mounted on said housing." Raylon argued that this should be construed to mean "an electronic device attached to a housing that visually presents information and allows the display to be moved or pivoted relative to the viewer's perspective" and alleged that infringement was found where the entire device, not just the display, could be pivoted to the view. Defendant EZ Tag sought a construction of the term to mean that "an integral computer screen which can move positions with regard to the computer housing and is not maintained in a fixed position." The remaining defendants argued that it should mean "the display must be mounted on the housing and the mounting of the display on the housing must be pivotable so that the display and housing may pivot with respect to each other." The Court construed the term as "the display must be mounted on the housing so that the display and housing may pivot with respect to each other." Because it was undisputed that all of the defendants' accused products had displays that were rigidly mounted as to the housing, the court granted summary judgment of noninfringement, both literally and under the doctrine of equivalents.

The plaintiff sued over 500 defendants for patent infringement in multiple actions in the United States District Court for the Eastern District of Texas. The patent-at-issue claims a "'software interface' that may provide a 'map of a selected geographic area' such that 'information which is associated with particular geographic locations,' such as 'good and services,' 'can be readily accessed.'" Eighty-one defendants in the various actions moved to stay the case pursuant to the "customer suit exception" to the first-to-file rule.

The moving defendants contended that their case should be stayed pending the outcome of a later filed declaratory judgment action brought by Microsoft and Google, among others, in the District of Delaware, because the declaratory judgment actions were manufacturer suits. The moving defendants contended that they merely license the relevant software from the manufacturers. Accordingly, the moving defendants contended a resolution of those lawsuits may resolve the cases against the licensees.

Round Rock Research ("Round Rock") purchased approximately 4500 patents from Micron Technology. Round Rock then sued Dell and Oracle on certain of these patents for patent infringement in the United States District Court for the Eastern District of Texas. Within a few months of the filing of the lawsuit, Dell and Oracle moved to transfer the case to the Western District of Texas.

In ruling on the motion to transfer, the Magistrate Judge first focused on whether the case could have originally been filed in the Western District of Texas, i.e., whether the Western District of Texas would have personal jurisdiction over the defendants. The Magistrate Judge concluded that it would as Dell is a resident of the Western District of Texas and Oracle sells its accused products worldwide, including within the Western District.