Patent Lawyer Blog

Bear Creek Technologies, Inc. ("Bear Creek") is the patent holder in fourteen patent infringement actions pending in three different district courts. Bear Creek moved for centralization in the District of Delaware or, alternatively, the Eastern District of Virginia. In each of the cases, Bear Creek alleged that various telecommunications companies infringed the Bear Creek patent and the various telecommunications companies raised questions surrounding the validity or enforceability of the patent.

Certain of the defendants did not oppose centralization but suggested that the district should be either Delaware or the Eastern District of Pennsylvania. Other defendants opposed centralization and the Vonage defendants asserted that the America Invents Act ("AIA") limits centralization under 28 U.S.C. § 1407.

As a preliminary matter, Judge Posner consolidated the six patent cases that were filed by Brandeis University against various defendants, finding that they involve a number of common issues of law and that judicial efficiency would be maximized by consolidation. "These six cases are hereby consolidated under 1:12-cv-01508, pursuant to Fed. P. 42(a). The parties agree that they involve a number of common issues of law, and I believe that judicial efficiency will be maximized by consolidation. I will consider in due course the defendants' request for separate trials of issues, particularly damages, that vary significantly across the six cases."

Plaintiff Brandeis University ("Brandeis") alleged that it was the owner of the patents-in-suit and plaintiff GFA Brands, Inc. ("GFA") alleged that it was the exclusive licensee of the patents-in-suit. Plaintiffs asserted that the defendants infringed the patents by making, using, selling or importing various products such as cookies, cookie dough and spreads. A number of the defendants moved to transfer or sever.

With respect to the motions to sever, some of the defendants asserted that the joinder violated Fed.R.Civ.P. 20. Although most of the parties agreed that there were common questions of fact and law, the question remained whether plaintiffs' claims against the different defendants arose out of the same transaction, occurrence or series of transactions or occurrences.

Defendants in two Eastern District of Texas actions moved to centralize their cases in the District of Delaware or in another transferee forum. Three actions involving the same plaintiff and patent were already pending in the District of Delaware. Two of the defendants in the Delaware actions supported the motion to transfer and centralize, while the other defendants in the Delaware actions did not oppose the motion. The patent holder opposed centralization and, alternatively, suggested selecting the Eastern District of Texas as the transferee forum.

The panel found that the five actions involved common questions of fact and that centralization would serve the convenience of the parties and witness and promote the just and efficient conduct of the litigation. To support this conclusion, the panel noted that all five actions involve factual question regarding the infringement and/or validity of a single patent that relates to basic web presentation technologies, such as "previews" that pop up when a mouse rolls over certain site features. The panel found 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."

Plaintiffs asserted patents relating to computer-based messaging products and services against numerous defendants, including Facebook, LinkedIn, E*Trade and Verizon in two different district courts. The patents at issue named Charles Bobo as an inventor and one of the earlier patents in the Bobo family of patents was asserted in six of the actions pending in the Central District of California. Five later-issued patents in the Bobo family were asserted in actions in the Eastern District of Texas.

The panel considered whether centralization in one district would serve the convenience of the parties and witnesses or further the just and efficient conduct of the litigation. Many of the defendants supported centralization, while Verizon opposed centralization. The plaintiffs opposed the motion to centralize the cases.

Pinpoint filed a patent infringement action in the Northern District of Illinois against L.L. Bean, Orbitz, Groupon and Hotwire for allegedly infringing three patents pertaining to accessing data using customer profiles. L.L. Bean filed a motion to sever and transfer to the District of Maine. The district court granted the motion and transferred the case against L.L. Bean to Maine.

The first step in the district court's analysis was to analyze whether L.L. was misjoined in the action. Focusing on Fed.R.Civ.P. 20(a)(2), and in particular the requirement that "any right to relief is asserted against [the defendants] jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences," the district court found that joinder was not proper. "As L.L. Bean points out, defendants are unrelated companies that have nothing in common except Pinpoint's allegation that they have infringed the same three patents." Referring to Pinpoint's response as "lame," the district court found that the argument that all of the accused products are extremely similar to be insufficient to satisfy the first prong of Fed.R.Civ.P. 20(a)(2). "The defendants' operations of unrelated websites does not establish a common transaction or occurrence.

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."

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.

In the wake of the new restrictions on joinder of multiple defendants after the enactment of the America Invents Act, a number of plaintiffs have still attempted to join multiple defendants in a single lawsuit. One tactic used by plaintiffs is to file suit against several customers of a supplier along with the supplier of the accused product. This type of lawsuit establishes a close connection between the defendants in that the accused product is the same across all the defendants, which likely is a permissible joinder under the new standards set forth in the America Invents Act.

Nonetheless, this new tactic is having limited success. In a recent patent infringement action in the United States District Court for the Northern District of Illinois, the plaintiff sued several customers and the supplier of an accused product. The defendants moved to sever the customer defendants from the supplier defendant and to stay the action against the customer defendant. The supplier defendant also moved to transfer the severed action against it to the Northern District of California where it was based. It also asserted that transfer was appropriate because the plaintiff was based in Southern California, much closer to the Northern District of California than the Northern District of Illinois.

In a ruling that is likely to become more and more common after the passage of the America Invents Act, the United States District Court for the Northern District of California dismissed all but one of the defendants in a patent infringement action for improper joinder. In February 2010, the plaintiff filed a patent infringement action against Apple, Dell, HP, Lenovo and Sony for allegedly infringing a patent for dynamic power management of solid-state memories. The plaintiff alleged that each of the defendants sells computers and/or computer systems that infringe the patent-in-suit.

Plaintiff filed a motion seeking leave to amend the complaint to join five additional defendants on the ground that the new defendants' products also allegedly infringe the patent-in-suit. The existing defendants then filed a motion to dismiss the complaint as to all but one of the defendants based on the argument that the defendants were misjoined in the action.

Plaintiff filed a patent infringement suit against 17 defendants alleging direct, indirect and joint infringement. The defendants moved to dismiss for failure to state a claim. The district court granted the motions to dismiss the joint infringement and indirect infringement claims, but denied the motions to dismiss the direct infringement claims.

The patent-in-suit discloses a data processing station subscriber unit that delivers interactive or television-quality entertainment and informational content to subscribers. Each of the independent claims include a limitation requiring a plurality of sources of video text and television program channels available from a wireless television program communication network.

A Delaware Court again recently denied transfer from Delaware to the Northern District of California despite that (a) all of the accused infringers were headquartered in the transferee venue, (b) the party witnesses knowledgeable about the accused products and documents related to the accused products were there and (c) the plaintiff also maintained an office there as well. Focusing instead on the fact that the plaintiff and three of the four defendants were incorporated in Delaware, the Court stated that the Plaintiff's choice of venue was entitled to "significant deference" because Delaware was considered plaintiff's home turf. Moreover, the Court found that because three of the four defendants were incorporated in Delaware, they could not be heard to complain about defending a lawsuit in Delaware because they had availed themselves of the rights and privileges of the State of Delaware by incorporating there. The Court quoted from another decision from the District of Delaware that "absent some showing of a unique or unexpected burden, a company should not be successful in arguing that litigation in its state of incorporation is inconvenient."

One of the district courts in the Eastern District of Texas has issued several orders in multi-defendant patent infringement cases addressing whether changes to the court's normal scheduling orders were necessary. The district court has previously expressed concern in several cases that defendants may be faced with a Hobson's choice of spending more than the settlement range on discovery "or settling for less than their cost of defending the case, regardless of the merits of the case." The district court has expressed concern that the Patent Rules may not provide the most efficient case management schedule in those situations because of the quick discovery deadlines in the Eastern District of Texas.

In addressing a plaintiff that has sued 95 defendants across seven cases, the district court began by noting that it had previously expressed concern in cases where a plaintiff may assert questionable patent claims to extract cost of defense settlements. "The Court has previously expressed concern about cases where a plaintiff asserts questionable patent claims against a large number of Defendants to extract cost of defense settlements."

In yet another multi-defendant case, a district court has severed defendants from a patent infringement suit brought by a plaintiff against many defendants. In this case, the plaintiff brought suit against eleven defendants for infringing the same four patents. The district court granted defendants' motion to sever because the plaintiff did not allege that the defendants were engaged in the same transaction or occurrence.

The court began by noting a number of decisions that granted severance under Ninth Circuit precedent and it sharply distinguished cases from the Eastern District of Texas that denied motions to sever because those cases followed a different rule than what the Ninth Circuit employs. Based on Ninth Circuit law, the court found that the motion to sever should be granted because the defendants had not engaged in the same transaction or occurrence or series of transactions or occurrences. The fact that the defendants were allegedly infringing the patents in a similar way was not sufficient. The court stated: ""Plaintiff has not alleged that the Defendants have engaged in the same transaction or occurrence or series of transactions or occurrences. Rather, Defendants are accused of infringing the patents in similar ways, but not as part of the same transaction or occurrence or series of transactions or occurrences.