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District Court Denies Motion to Lift Stay Pending Inter Partes Review Even Where Plaintiff Agreed to Not Pursue Claims That Were Subject to Review

Barco filed a patent infringement action in September 2011 against Defendants Eizo Nanao Corporation and Eizo Nanao Technologies, Inc. (“Eizo”), alleging that Eizo infringed various claims in U.S. Patent No. 7,639,849 (the ‘849 patent). After Barco filed a reissue application with the United States Patent and Trademark Office (the “PTO”),…

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Rosebud v. Adobe: District Court Grants Summary Judgment of No Remedies Where Plaintiff Could Not Prove Actual Notice of Patent Application

Rosebud filed a patent infringement action Adobe and Adobe moved for summary judgment arguing that Rosebud had no remedy for its patent against Adobe. Adobe based its summary judgment motion on the argument that the patent-in-suit did not issue until after Adobe’s accused product was discontinued. As set out by…

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Court Denies Motion to Stay Pending New Inter Partes Review (“IPR”) Denied Where PTO Had Previously Declined to Institute an IPR on Asserted Claims and Trial Was Rapidly Approaching

The defendant, Samsung, had previously filed IPRs on several of plaintiff’s patents, which were granted and denied in part. After the plaintiff reduced its asserted claims to those that the PTO had declined to institute review, Samsung filed an additional IPR to challenging the asserted claims and moved to stay…

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Court Continues Stay Pending Inter Partes Review Even Though PTO Declined to Institute Review on Patent

The district court had previously stayed the patent infringement action between Nidec Motor Corporation and Broad Ocean Motor pending the PTO’s decision on whether to institute an inter partes review on three of the patents-in-suit. After the PTO declined to institute review on one of the patents, the plaintiff moved…

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District Court Grants Stay Before The PTO Institutes An IPR

In MLC Intellectual Property, LLC v. Micron Technology, Inc., Case No. 14-cv-3657 (N.D. Cal.), MLC filed its lawsuit on August 12, 2014, accusing Micron of infringing U.S. Patent No. 5,764,571 (“the ‘571 patent”). On October 15, 2014, Micron answered the complaint and asserted counterclaims for declaratory judgment of non-infringement and…

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Intellectual Ventures v. Symantec: Court Bifurcates and Stays Symantec’s Patent Misuse Defense

Intellectual Ventures (“IV”) filed a motion to bifurcate and stay discovery of Symantec’s patent misuse defense. The district court agreed with Intellectual Ventures. “While the Court views IV’s motion as essentially two motions one to bifurcate for a separate trial, see F.R.C.P. 42(b), and one to stay discovery, to which…

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Open Text v. Box: District Court Holds That Box Can Present Damages in the Form of a Fully Paid-Up Lump Sum Payment Even Though Such an Award Might Preclude a Later Injunction

As the Open Text v. Box patent case gets closer to trial, Open Text sought to preclude Box from asking the jury to award damages in the form of a fully paid-up lump sum that would cover the life of the patents-in-suit. Open Text argued that such a result would…

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Blue Spike v. Adobe: Court Grants Motion to Strike Infringement Contentions Where Contentions Failed to Crystalize Theory of the Case and Used an Open-Ended Priority Date

In this patent infringement action between defendant Adobe Systems, Inc. (“Adobe”) and plaintiff Blue Spike, LLC (“Blue Spike”), Adobe filed a motion to strike the infringement contentions (“ICs”) filed by Blue Spike. In the motion, Adobe contended that Blue Spike’s ICs fail to comply with the Patent Local Rules for…

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PTAB Will Not Consider An Expert Report Prepared for Litigation And Created After the Filing of the Petition

In IPR2014-01510, 01511, and 01513, in connection with its preliminary response the Patent Owner Mag Aerospace Industries, LLC, submitted an expert report by its expert in the related litigation. The expert report addressed issues relevant to the IPR proceedings, including the patentability of the claims in light of the prior…

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District Court Denies Motion to Exclude Defendants’ Experts from Claim Construction But Orders the Defendants to Supplement Their Disclosures or Face Exclusion

In this patent infringement action, the plaintiff filed a motion to exclude the defendants’ claim construction experts. The plaintiff’s motion was based on the argument that the defendants’ disclosures did not comply with local rules in that they did not identify the actual opinions of the experts. The district court…

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