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E.D. Texas court grants stay of litigation pending an IPR based, in part, on patent owner’s failure to timely respond to the stay motion

In Norman IP Holdings v. TP-Link Technologies, Co., et al., the Defendants moved to stay the litigation pending completion of an inter partes review involving the patents-in-suit. The plaintiff did not respond to the motion. Thereafter, the court granted the motion and stayed the litigation pending completion of the IPR…

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Fujitsu v. Tellabs: Fujitsu Appeal’s Decision on Motion to Compel and, After It Loses on Appeal, District Court Orders a Civil Penalty Which Doubles Each Day Documents Are Not Produced

In this patent infringement action, the district court granted a motion to compel filed by Tellabs against Fujitsu. Fujitsu then filed a petition for a writ of mandamus with the Federal Circuit to overturn the decision of the district court. The Federal Circuit promptly denied the writ of mandamus as…

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Inducing Infringement Claim Dismissed on Sua Sponte Order Where Alleged Infringer Did Not Perform All Method Steps and Did Not Exercise Direction and Control

In this patent infringement action, the district court issued a sua sponte order requiring plaintiff to show why its inducing infringement claims should not be dismissed as a matter of law. After addressing the United States Supreme Court’s recent decision in Limelight, the district court noted that no single party…

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The PTAB finds that the petitioner did not show that a patent claiming internet-based transactions is not a technological invention and denied CBM review on that basis

In GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam, GSI filed a petition seeking covered business method patent review of U.S. Patent No. 8,346,894 relating to “facilat[ing] real-time two-way transactions, as opposed to deferred transactions, e.g., e-mail.” CBM2014-00101. The Petitioner filed its petition seeking invalidity based on lack of written description,…

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Motion to Strike Expert Testimony Denied Even Though Expert Had Never Used Product and Examined Only Selected Pieces of Source Code

In this patent infringement action, the defendant moved to exclude portions of the plaintiff’s (Dr. Bambos’) expert testimony. Defendant argued that Dr. Bambos lacks familiarity with the infringing products, relied too heavily on someone else to provide him with relevant segments of source code to review, and used the district…

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PTAB – Ford is not barred from challenging a patent on a hybrid vehicle based on the unproven assertion that it breached an agreement not to challenge the patent

In Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., Ford filed a petition seeking inter partes review of U.S. Patent No. 8,214,097 relating to a hybrid vehicle having, among other things, both an internal combustion engine and an electric motor. IPR2014-00570. On September 30, 2014, the Board…

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Court Denies Motion to Compel Deposition Testimony on Overly Broad 30(b)(6) Topics and on “Contention” Topics

In this patent infringement action brought by Trustees of Boston University (“BU”), BU alleged that defendants infringed U.S. Patent No. 5,686,738 (the “‘738 Patent”), which centers on light emitting diodes (“LEDs”) and the technology behind them. BU moved for an order compelling defendant Epistar Corporation (“Epistar”) to designate new Rule…

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PTAB – Trulia and Zillow possible merger is not a sufficient basis for extending the 12 month period to complete the trial

In Trulia, Inc. v. Zillow, Inc., Trulia filed a petition seeking covered business method review of U.S. Patent No. 7,970,674 relating to automatically determining a current value for a real estate property. CBM2013-00056. On March 10, the Board instituted a trial on the ‘674 patent and set a hearing date…

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Laches Defense Denied Where Texas Instruments Failed to Produce Products that Demonstrated Notice During Discovery and Texas Instruments Failed to Make Showing of Economic Prejudice

At the end of trial, the Defendant, Texas Instruments Incorporated’s (“TI”), pursued its equitable defense of laches, the only remaining issue left in this patent infringement case. The district court conduced an evidentiary hearing on laches at which the district court heard the live testimony of five witnesses and also…

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The PTAB rejects Microsoft’s attempt to institute an IPR proceeding almost 7 years after being served with a complaint involving the patent-at-issue

In Microsoft Corporation v. Virnetx Inc., Microsoft filed a petition seeking inter partes review of U.S. Patent No. 7,188,180 (“the ‘180 patent”) on May 19, 2014. The ‘180 patent was asserted in a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:07-cv-00080 (E.D. Tex. filed April 5, 2007) (“the…

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