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https://patentlaw.jmbm.com/files/2019/03/2019-03-12_14-59-13-cc0-pxhere-03.12.2019-300x200.jpgIn this patent infringement action, the plaintiff, International Designs Corporation, LLC (“IDC”), moved to disqualify the counsel for defendant Hair Art Int’l, Inc. (“Hair Art”).   IDC moved to disqualify counsel for Hair Art on the grounds that Hair Art’s counsel also represented/represents an entity named Halo Couture, LLC, a California limited liability company (“HC1”) and, potentially, Halo Couture, LLC, a Delaware limited liability company (“HC2”), which were apparently “sister companies” of IDC and share a common parent.

The district noted that neither HC1 and HC2 were parties to the litigation.  The district court also noted that there is “no contention that IDC, Hairtalk GmbH or Günter Alex were ever clients of Defendant’s counsel. The district court also found that IDC had not “presented the Court with any case indicating that representation of an entity that serves as a ‘sister company’ to a present litigation opponent provides a basis under applicable law for disqualification of that counsel in the present litigation, either by way of an actual-conflict theory or a theory based on the presumption of possession of confidential information. Moreover, Movants’ ‘unity of interests’ theory appears to look to a unity of interest between an entity and its ‘parent,’ not between an entity and its ‘sister.’”

The district court also disregarded IDC’s other theories for disqualification, concluding that IDC had “not demonstrated a sufficient basis to conclude that there is a ‘subject matter (technology) based conflict’ because of HC1-HC2’s pending design patent application and Defendant’s product line.  Nor have Movants demonstrated that there is a realistic basis for a potential or future conflict based on the continued presence of an antitrust affirmative defense in this action. Their concern on that point is that Defendant ‘can pursue its anti-trust defense, seeking competitive sales data for the hair extension industry, including sales records of HC1 and HC2 and IDC’ and that ‘[i]f DEFENSE COUNSEL pursue the anti-trust discovery, such discovery demand to HC1 and HC2 will pass through’ an attorney who is both in-house general counsel of IDC and ‘special in-house I.P. counsel’ of the corporate parent and HC2.”

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8-o-clock-alarm-clock-analogue-1198264-300x200In this patent infringement action, the defendant, Playmonster LLC (“Playmonster”), requested that the district court stay discovery during the pendency of its forthcoming dispositive motion. As part of its request, Playmonster contended that a dispositive motion “would be the most efficient resolution of this case,” and that a stay of discovery would promote judicial efficiency and conserve the Parties’ resources, which would include reducing the attorney’s fees that would be spent on the case should the dispositive motion be granted.

The plaintiffs, Quality Innovative Products, LLC (“Quality”), opposed the stay of discovery in the case.  As its main argument, the plaintiffs asserted that the case was filed over a year ago, “and the Defendant has enjoyed substantial delay already while it pursued a first dispositive motion” that it used “as an excuse not to comply with its discovery obligations.”  Quality further argued that they “should not have to piece meal litigation for the convenience of the Defendant.” Quality also asserted that they oppose filing of dispositive motions until discovery closes.

The district court concluded that a stay of discovery was inappropriate.  “The court is disinclined to stay discovery pending the filing of a dispositive motion. While Defendant may file a dispositive motion at any time it deems appropriate on or before the set deadline, the court’s practice standards do limit parties to one dispositive motion without leave of the court. See NYW Civ Practice Standards 56.1. In addition, leave to file additional dispositive motions is only granted in exceptional circumstances. See id. Further, stays of discovery in this District are generally disfavored, see Church Mut. Ins. Co. v. Coutu, No. 17-CV-00209-RM-NYW, 2017 WL 3283090, at *2 (D. Colo. Aug. 2, 2017), and nothing in the record before the court at this juncture justifies a stay.”

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TC Technology filed a patent infringement action against Sprint alleging that Sprint infringed a patent pertaining to wireless services used on an LTE network. The complaint did not allege willful infringement.

171030-JMBM-14-Jill-Skinner-001-300x269During discovery, Sprint responded that it had received an email several years before the lawsuit was filed with an offer to purchase the patent-in-suit. An attachment to the email identified and described the patent-in-suit. Although the general counsel for Sprint forwarded the email and attachment to several Sprint employees, Sprint explained that it believed the attachment was never opened. TC Technology took the deposition of one of these employees and then filed a motion to amend the complaint to add a claim for willful infringement. Because the motion was filed after the cut-off established to amend the pleadings, TC Technology could not amend the complaint without a showing of good cause.

During deposition, the Sprint witness (Mr. Ball) testified that “there was no way to verify one way or the other” whether the attachment had been opened, other than the recollections of himself, Mr. Wunsch, and Mr. Cowan that it was not opened. As explained by the district court, Mr. Ball also testified that he did not think he, Mr. Wunsch, or Mr. Cowan would have opened the attachment in the normal course of business.

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In this patent infringement action, the plaintiff, Stuebing Automatic Machine Co. (“Stuebing”) filed a motion for violation of multiple discovery orders against the defendant. As part of the motion, Stuebing sought issue sanctions, including to have certain sales information deemed established.

https://patentlaw.jmbm.com/files/2019/02/background-blurred-background-books-1178683-Hourglass-my1-pexels-cc0-02.11.2019-300x225.jpgStuebing had previously served multiple discovery requests, including interrogatories and document requests. Over a year after responses to the discovery requests were due, the district court ordered the defendant to fully respond to the requests in several different court orders. Despite these orders, the defendant provided Stuebing with incomplete discovery information.

In analyzing the motion, the district court explained that “[a] party becomes vulnerable to sanctions upon the party’s failure to comply with a court’s discovery order. See U.S. v. $49,000 Currency, 330 F.3d 371, 379 (5th Cir. 2003). “A court has broad discretion to determine an appropriate sanction under [Federal Rule of Civil Procedure (hereafter “FRCP”)] 37(b), […] which may include an order directing that certain designated facts be taken as true.” Bradt v. Corriette, No. 16-CV-805-LY, 2018 WL 1866112, at *2 (W.D. Tex. April 18, 2018) (citing Pressey v. Patterson, 898 F.2d 1018, 1021 (5th Cir. 1990)). FRCP 37(b)(2) authorizes the imposition of a “concurrent sanction of reasonable expenses, including attorney’s fees, caused by the failure obey a discovery order.” Smith & Fuller, P.A. v. Cooper Tire & Rubber Co., 685 F.3d 486, 488 (5th Cir. 2012).”

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The plaintiff, Bayer, moved to exclude the opinion of the defendant’s damage expert, Dr. Rausser, for failing to show that the licenses that he used for his reasonable royalty analysis were technologically or economically comparable to the license resulting from the hypothetical negotiation.  The district court agreed with Bayer on the economically comparable point and granted the motion to exclude on that basis.

https://patentlaw.jmbm.com/files/2019/02/abstract-art-artistic-251287-pexels-cc0-02.05.2019-300x169.jpgAs explained by the district court, Bayer asserted that the license resulting from the hypothetical negotiation would be a non-exclusive, running royalty license between competitors, and of Dr. Rausser’s four selected licenses, only one was a non-exclusive license, two were between competitors, and none of them used a running royalty.

The district court stated that the strongest argument by Bayer “relates to Dr. Rausser’s use of lump-sum licenses to support a running royalty hypothetical license. ‘Significant differences exist between a running royalty license and a lump-sum license.’ Lucent, 590 F.3d at 1326. A lump-sum license can still be relevant to running royalty damages, but “some basis for comparison” must exist. See id. at 1330. Defendants argue that Lucent is inapposite because here, unlike in Lucent, the parties agree that damages should be in the form of a running royalty. Defendants further argue that, “while it may be difficult to determine a lump sum from a running royalty,” as shown in Lucent, “the opposite is not true.”

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https://patentlaw.jmbm.com/files/2019/01/citrus-citrus-fruit-close-up-52533-pexels2-cc0-01.29.2019-300x289.jpgIn the ongoing litigation war between Qualcomm and Apple, spanning multiple forums around the country, Qualcomm moved to exclude Apple’s technical experts’ reliance on certain license agreements by asserting that the agreement involved technology that was not sufficiently comparable.  After reviewing the license agreements, the experts’ opinions, and the law, the district court concluded that Qualcomm’s motion should be granted.

After reviewing the license agreements at issue (which have been redacted as confidential), the district court explained that “the first question is whether Apple’s technical experts have shown that any patents underlying these License Agreements are technologically comparable to the https://patentlaw.jmbm.com/files/2019/01/apple-close-up-edible-89434-pexels-cc0-01.29.2019-1024x478.jpgpatents at issue here. The Federal Circuit has cautioned “that ‘district courts performing reasonable royalty calculations [must] exercise vigilance when considering past licenses to technologies other than the patent in suit,’ and ‘must account for differences in the technologies and economic circumstances of the contracting parties[.]’” VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1330 (Fed. Cir. 2014) (citations omitted). “When relying on licenses to prove a reasonable royalty, alleging a loose or vague comparability between different technologies or licenses does not suffice.” LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 79 (Fed. Cir. 2012).

The district court then explained that “Apple’s experts have gone through the License Agreements and found at least one patent from each Agreement that they believe is technologically comparable to the patents in suit. Qualcomm’s motion goes directly to those opinions, and asserts they are conclusory and do not meet the standard for technological comparability.”

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https://patentlaw.jmbm.com/files/2019/01/freerangestock-download-cc0-01.23.2019-300x288.jpgIn a patent infringement action, Takeda Pharmaceuticals America, Inc., and Takeda Pharmaceuticals U.S.A., Inc.’s (collectively, “Takeda”) filed a motion to disqualify Baker Botts, L.L.P. (“Baker Botts”) from representing Defendants Zydus Pharmaceuticals (USA) Inc. and Cadila Healthcare Limited (collectively, “Zydus”). Takeda moved to disqualify Baker Botts from representing Zydus based on Baker Botts’ alleged previous representation of Ethypharm S.A. (“Ethypharm”) in earlier litigation involving Takeda’s Prevacid® SolutabTM product.

Takeda asserted that the law firm should be disqualified from representing Zydus based on a Common Interest & Confidentiality Agreement (the “Agreement”) Ethypharm entered into with Takeda and TAP Pharmaceutical Products Inc. (“TAP”) in the Delaware Action.

In this regard, Takeda claimed that the Agreement created an implied attorney-client relationship between Takeda and Baker Botts. As explained by the district court, Takeda argued that the current litigation was substantially related to the prior litigation involving Ethypharm, arguing that even though the patent infringement claims were dismissed, leaving only Zydus’ antitrust counterclaims, the matters remained substantially related because the critical issue in deciding Zydus’ antitrust counterclaims is whether Takeda’s assertion of the dismissed patent claims was objectively baseless. Takeda also contended that facts and theories from the prior litigation, including arguments concerning commercial success were relevant and long-felt because, in order to succeed on its antitrust counterclaims, Zydus must establish a monopoly, and, consequently, Zydus has sought discovery on Takeda’s sale and marketing of Prevacid® SoluTab.TM

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National Products, Inc. (“NPI”) filed a patent infringement action Akron Resources, Inc. (“Akron”), among others.  The parties filed several cross motions for summary judgment, including a motion for summary judgment based on the failure to mark.

As explained by the district court, the parties did not dispute that:https://patentlaw.jmbm.com/files/2019/01/aerial-business-computer-1011329-Pexels-CC0-01.14.2019-300x170.jpg

“1) NPI sells products that practice the ’212 Patent;

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https://patentlaw.jmbm.com/files/2019/01/background-close-up-court-1415558-pexels-CC0-01.14.2019-1-300x201.jpgIn this patent infringement action, the plaintiff, Whirlpool Properties (“Whirlpool”) noticed several depositions of third-party witnesses near the discovery cut-off.  The defendant, Filters Fast, moved for an order to stop the depositions.

As explained by the district court, “[t]he crux of the pending motion is that the Whirlpool Plaintiffs emailed Defendant on November 28, 2018, the dispositive motions deadline, attaching two third-party deposition subpoenas that noticed depositions for December 6 in Windsor, Va. and December 7 in Simpsonville, S.C.  Defendant contends that Plaintiffs had never identified these potential witnesses, nor even disclosed the possibility of deposing them.  Moreover, Defendant notes that these newly noticed depositions overlapped with already scheduled depositions of Whirlpool witnesses to be held in Chicago, Il. on December 5, 7, and 11. According to Defendant, Whirlpool Plaintiffs then emailed a notice on December 2, regarding a third third-party witness it intended to depose in Texas on December 11 or 12.”

In opposition, Whirlpool asserted that witnesses in question “were disclosed within three days of confirming them for depositions.”  Whirlpool argued that the notice of depositions in dispute here was “reasonable under the circumstances.” ((citing Fed.R.Civ.P. 30(b)(1)).  Whirlpool further argued that the third-party depositions could have been conducted by the parties’ stipulated extension of the discovery deadline – December 12, 2018. Whirlpool also contended that the depositions address non-complicated issues that would require minimal preparation.

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Jeffer Mangels Butler & Mitchell LLP (JMBM) is proud to announce it has been ranked as an Orange County Metropolitan Tier 1 2019 “Best Law Firm” for Patent Litigation. This distinction was announced by the national publication U.S. News & World Report. The “Best Law Firms” annual announcement of the top rankings of law firms are based upon client input and professional references.

blf-badge-2019-300x300“Achieving this recognition is especially gratifying as it reflects the perspective of our clients and peers,” said Stan Gibson, Chair of JMBM’s Patent Litigation Group. “Our patent litigators are committed to solving problems and achieving clients’ objectives.”

Additionally, Gregory Cordrey, a partner in JMBM’s Patent Litigation Group was designated by Best Lawyers® as Orange County’s Patent Litigator of the Year for 2019.