In this patent infringement action, the Defendant moved for dismissal based on collateral estoppel and Alice contending that a prior district court had found the patents invalid for lack of patentable subject matter. Before applying the two-step Alice test, the district court took “judicial notice of the fact that Patent…
Articles Posted in District Courts
District Court Denies Motion for Preliminary Injunction Where Inter Partes Review (“IPR”) Pending on Claims from Different Patent But Similar to Patent-In-Suit
In earlier patent infringement litigation, the Plaintiff sued Ancestry.com DNA, LLC (“Ancestry”) in the District of Delaware (“Delaware litigation”) alleging infringement of U.S. Patent Number 8,221,381 (the “‘381 patent”). Ancestry subsequently filed an IPR seeking review of several claims of the ‘381 patent, and the PTAB issued an institution decision…
Grecia v. McDonald’s: District Court Grants Motion to Dismiss Where McDonald’s Could Not “Use” System for Patent Infringement Claim Because Credit Card Companies Controlled the Entire System
The plaintiff, Grecia, alleged that McDonald’s infringe certain claims of U.S. Patent No. 8,533,860 (“the ‘860 patent”) and of U.S. Patent No. 8,402,555 (“the ‘555 patent”) through its use of the “tokenization systems” of several credit card companies. As explained by the district court, Grecia alleged that McDonald’s uses the…
Jury’s Finding of Willfulness Sufficient Under Halo to Support Judgment of Willful Infringement
Sociedad Espanola de Electromedicina Y Calidad, S.A. (Sedecal) filed a patent infringement action against Blue Ridge X-Ray Company, Inc. (Blue Ridge X-Ray), DRGEM USA, Inc. (DRGEM USA), and DRGEM Corporation (DRGEM Corp.), alleging infringement of Sedecal’s U.S. Patent No. 6,642,829 (“the ‘829 Patent”). After a jury returned a verdict finding…
District Court Denies Motion to Lift Stay Even after Federal Circuit Affirms PTAB’s Decision Upholding Claims of Patent-in-Suit Because Petition for Certiorari Was Pending before Supreme Court
The district court had previously granted a stay pending an inter partes reexamination by the United States Patent and Trademark Office (“PTO”) of U.S. Patent No. 6,797,454 (the “‘454 patent”). After the PTO affirmed the validity of claims 2-6, 15, and 16 of the ‘454 patent, the Federal Circuit unanimously…
After Defendant Seeks to Claw Back Attorney-Client Privileged Documents, District Court Determines Privileged Waived (Including Work Product) Because Witness Gave Testimony Regarding Privileged Documents at Deposition
The defendants produced documents in response to plaintiffs’ first set of requests for production and included in the production were five documents that the defendants were later claim were subject to attorney-client privilege. Before the defendants made that claim, however, the plaintiffs deposed a corporate designee of Defendants Musion Events…
District Court Orders Production of Bills from Expert Witnesses But Permits Redaction of Narrative Statements in Bills
In this patent infringement action, the defendant, Ericsson moved to compel the plaintiff, TCL, to produce bills and invoices for worked performed by TCL’s expert witnesses. TCL sought to redact the bills and invoices to eliminate statements and narratives from the bills that do not reflect compensation. Fed.R.Civ.P. 26(b)(4)(C) provides…
Subsequent Employment Agreement Assigning Inventor’s Intellectual Property Rights Does not Defeat Standing for Inventions Created Prior to Employment Agreement
The plaintiff, Odyssey Wireless (“Odyssey”) filed four separate actions for patent infringement against Defendants Apple, Samsung, LG, and Motorola, alleging infringement of U.S. Patent Nos. 7,881,393; 8,199,837; 8,576,940; 8,660,169; 8,855,230; and 8,879,606. Each of the patents-in-suit lists on its face Peter D. Karabinis as the inventor and EICES Research, Inc.…
After Halo, District Court Concludes that Jury’s Finding of Willfulness Is Still Appropriate
After a jury trial finding American Technical Ceramics Corp. (“ATC) willfully infringed Presidio Component’s (“Presidio”) patent, ATC filed a motion for a finding of no willful infringement based on the Supreme Court’s decision in Halo. At the time the jury reached its verdict, the Federal Circuit’s decision in In re…
After Inventor Dies, Patent Infringement Lawsuit Is Dismissed for Lack of Standing on Court’s Own Motion
Chris Tavantzis and ChrisTrikes Custom Motorcycles, Inc. (“ChrisTrikes”) filed a complaint against a number of individuals and entities that allegedly infringed on a patent for a wheelchair-accessible motorcycle (the “Wheelchair Motorcycle Patent”). After the complaint was filed, the district court received notice of Mr. Tavantzis’ death. When no party moved…