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Articles Posted by Stan Gibson

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Terminal Disclaimer Renders Patent Unenforceable

Plaintiff, Jan Voda, M.D. (“Dr. Voda”), filed a patent infringement action against Medtronic Inc. (“Medtronic”) based on a patent that taught how to use a guide catheter to perform angioplasty of the left coronary artery. After Dr. Voda filed an amended complaint adding an additional patent, Medtronic moved to dismiss…

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Medical Method Claims for Detecting Down Syndrome Is Patentable Under Bilski But Rendered Anticipated and Obvious by the Prior Art

In a patent dispute over a method for detecting fetal Down syndrome, the United States District Court for the District of Massachusetts invalidated the patent owner’s patent because it was anticipated and obvious. The patent at issue describes screening methods to determine Down syndrome in which physicians estimate the risk…

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Contempt Motion Granted Where Defendant Offered to Sell Its Infringing Product After Entry of a Permanent Injunction

Plaintiffs and defendant manufacture machines that automatically inspect integrated circuits made on semiconductor wafers. Plaintiffs sued defendant for patent infringement and a jury found that the patent was valid and infringed, but did not find that the infringement was willful. After the jury verdict, the defendant notified its sales force…

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Transfer Motion Denied Even Where Defendants Consent to Jurisdiction in the Proposed Transferee District

In a recent case in the United States District Court for the Eastern District of Texas, the court denied defendants’ motion to transfer the case to the District of New Jersey. The court’s analysis focused primarily on whether the case could have originally been filed in the District of New…

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Sanctions Granted for Repeated Discovery Misconduct and Attorneys’ Fees Awarded for Counsel’s Fabricated E-Mail

Plaintiff brought a patent infringement action alleging direct infringement of a single patent. The defendant, a corporation, sought an extension of time to respond to the complaint through a request from its CEO. Because corporations cannot represented themselves and must instead be represented by a licensed attorney, the district court…

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Plaintiff’s Discovery Misconduct Leads To Award of $800,000 in Attorneys’ Fees

In a patent infringement action, the district court granted defendants’ motion for summary judgment based on the on sale bar and dismissed plaintiff’s claims with prejudice. Defendants then requested that the district court find the case exceptional due plaintiff’s litigation misconduct. Based on that misconduct, the district court found that…

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Delaware District Court Denies Production of Documents Pertaining to Third-Party Licensing Company Holding That the Documents Are Protected by the Common Interest Privilege

Xerox Corporation (“Xerox”) filed a patent infringement action against Google and Yahoo! in the United States District Court for the District of Delaware. After construing certain terms of the patent-in-suit as part of a claim construction proceeding, the district court resolved a discovery dispute between the parties over the production…

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Another Motion to Transfer Denied in Delaware Even Where Plaintiff, Defendant and Witnesses Are Located in California

It is fast becoming clear that it is very difficult to transfer a patent infringement case out of the United States District Court for the District of Delaware when the defendant is incorporated in Delaware. In this case, Netgear sued Ruckus Wireless for patent infringement in the District of Delaware.…

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Court Orders Production of Sales Evaluation Files for Products Accused of Infringement

In a patent infringement action between Kimberly-Clark (“K-C”) and First Quality Baby Products (“First Quality”) pending in the United States District Court for the Eastern District of Wisconsin, K-C filed a motion to compel First Quality to produce sales evaluation files relating to products accused of infringement. K-C asserted that…

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Failure to Mark with Patent Numbers Limits Pre-Suit Filing Damages

In a recent case from the United States District Court for the Eastern District of Virginia, the district court granted defendants’ motion to limit damages for failure to mark for all but one of the patents-in-suit. Pursuant to 35 U.S.C. §287(a), a patentee must either mark a patented product or…

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