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Articles Posted by Stan Gibson

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Motion to Dismiss Denied Under Bilski Where Plaintiff Contended That a Computer Programmed in a Particular Way Was the Invention Itself

Plaintiff’s complaint alleged a single count for patent infringement, which asserted that the defendant infringes its patent through the use of an online dating website. The particular feature accused is called “QuickMatch,” which notifies two users who demonstrate mutual interest in each other. The patent is directed to a computerized…

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Damage Experts’ Opinions Excluded Where Experts Did Not Establish Link Between License and the Patent-In-Suit

In a recent decision from the United States District Court for the Eastern District of Texas, the court granted in pat and denied in part plaintiff’s motion to exclude the expert testimony of defendants’ damage experts. Plaintiff argued that the opinions of defendants’ experts were unreliable and used flawed methodologies…

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First-Filed Declaratory Judgment Action Dismissed in California Where Florida Court Was Already Familiar with Patents-in-Suit

Plaintiff filed a declaratory judgment action in California seeking to invalidate defendant’s patents and for a declaration that it did not infringe the patents. The defendant responded by filing a patent infringement lawsuit in Florida in the same court where it had previously filed and litigated a patent infringement matter…

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Review Your Assignment Agreements Now — United States Supreme Court Re-Affirms that Inventors Own Their Inventions

In a much anticipated decision, the United States Supreme Court confirmed that, absent a valid assignment agreement, inventors own their invention — even if federal funding was used to support the research efforts. The decision in Leland Stanford Junior Univeristy v. Roche Molecular Systems, Inc. held that under the Patent…

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Patent Infringement Action Dismissed for Lack of Personal Jurisdiction Where Patent Infringement Claims Did Not Arise Out of Negotiations for a License

The plaintiff filed a patent infringement action against the defendant in the Northern District of Illinois after licensing negotiations fell apart. Defendant, a Delaware corporation, with its principal place of business in Michigan moved to dismiss for lack of personal jurisdiction or, in the alternative, to transfer. The district court…

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Motion to Compel Granted Where Infringement Contentions Were Inadequate to Put Defendant on Notice of Infringement

In a recent case from the United States District Court for the Northern District of California, the district court granted a defendant’s motion to compel an interrogatory response where the infringement contentions were inadequate to put the defendant on notice of the alleged infringement. The infringement contentions relied on a…

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Summary Judgment on Indefiniteness Denied Where Claims Reciting Term of “Engine for” Was Not a Means-Plus-Function Term

Defendant contended that several claims of a patent were indefinite under 35 U.S.C. §112, ¶2. The defendant argued that the term “engine for” should be construed under §112, ¶6 because engine is only discussed in functional terms. The defendant also argued that the term “engine for” did not connote sufficient…

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Inequitable Conduct Defense Dismissed for Failure to Plead Sufficient Facts

In this case, the defendant asserted a defense of inequitable conduct on the grounds that the inventors of the patent-in-suit were aware of prior art when they prosecuted the patent but failed to disclose that prior art.. On a motion to dismiss the inequitable conduct defense, the United States District…

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Plaintiff’s Expert Precluded from Testifying on Entire Market Value Rule Where Basis for Consumer Demand Was Not Shown

In a recent decision from the United States District Court for the Southern District of New York, the district court granted defendant’s motion in limine to exclude plaintiff’s damage expert’s testimony based on the entire market value rule. The district court held that the plaintiff’s expert’s testimony ran afoul of…

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Complete Source Code Production Ordered for Deposition

In a recent case from the Central District of California, the court ordered the defendant to produce the complete source code for an allegedly infringing product during a deposition. The plaintiff noticed the depositions of certain engineers from the defendant and requested that the defendant provide a complete copy of…

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