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Patent Lawyer Blog

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Patent Acquisition Bar Precluding Plaintiff’s Counsel from Advising Any Clients on the Acquisition of Patents Granted Where Defendant Was Disclosing “Crown Jewel” Technology

In this patent infringement action, Defendant Sirius XM Radio, Inc. (“Sirius”) sought a “patent acquisition bar” against plaintiff’s counsel from Freitas Tseng & Kaufman, LLP (“Freitas”). In seeking the bar, Sirius asserted that the Freitas attorneys who would gain access to Sirius’ confidential technical information should be barred from advising…

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Motion for Leave to Amend Infringement Contentions Denied Where Plaintiff Sought to Add Thousands of New Products

Plaintiff Keranos, LLC (“Keranos”) alleged that Silicon Storage Technology (“Silicon Storage”) and other defendants infringed three related patents by manufacturing certain flash memory products. Keranos sought leave to amend its infringement contentions to add additional products that the defendants disclosed during discovery. As explained by the district court, the Eastern…

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Motion to Strike Expert Testimony Granted to Preclude Expert’s “Logic Analysis” to Determine the Physical Structure of a Circuit but Expert Permitted to Opine That Logic of Accused Circuit Corresponds to Patent

Plaintiff Cobra International, Inc. (“Cobra”) filed a patent infringement action against several defendants, including BCNY International (“BCNY”) alleging infringement of a patent for the design of lighted footwear. The defendants create children’s shoes that have a small electrical module with an integrated circuit mounted on a chip. As explained by…

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Plaintiff Allowed to Amend Complaint to Include Willful Infringement Based on Allegation That Defendant Continued to Sell Infringing Products after Learning of Patent Through Service of Original Complaint

Englishtown, Inc. (“Englishtown”) filed a patent infringement action against Rosetta Stone, Inc. (“Rosetta Stone”) for alleged infringement of patents pertaining to language-learning products, software, online services and practice tools. Englishtown sought leave to amend its complaint to include an allegation of willfulness based solely on post-litigation knowledge and conduct. Rosetta…

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Declaratory Judgment Jurisdiction Found Where Patent License Negotiations Reached an Impasse and NDA Did Not Preclude a Lawsuit

Plaintiff Biomet, Inc. (“Biomet”) filed a complaint for Declaratory Judgment against Bonutti Skeletal Innovations, LLC (“Bonutti”) seeking a declaration that the manufacture, use, or sale of Biomet’s products does not infringe on Bonutti’s patents. Bonutti filed a motion to dismiss for lack of subject matter jurisdiction pursuant to Fed. R.…

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Disclosure of Opinions of Counsel to Customers Waived Privilege as to the Opinions and the Subject Matter of the Opinions

Plaintiff The Procter & Gamble Company (“Plaintiff”) filed a patent infringement action against Clio USA, Inc. (“Clio”). Plaintiff moved to compel certain opinions of counsel and other documents concerning the subject matter of those opinions. In the litigation, Clio had produced to Plaintiff copies of two abridged opinions, which were…

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Adobe Moved to Disqualify Opposing Counsel Where Counsel Had Done Opinion Work and Had Never Sent a Letter Terminating the Relationship Before It Took Matter Adverse to Adobe

Plaintiff TQP Development, LLC (“TQP”) filed a patent infringement action against Adobe Systems Incorporated (“Adobe”). TQP was represented by the law firm of Russ August & Kabat in the action against Adobe (“RAK”). Based on the fact that RAK had previously represented Adobe in opinion work, Adobe moved to disqualify…

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Inequitable Conduct Claim Dismissed on Summary Judgment Motion Where Conduct of Patent Prosecutor Was Disputed and Did Not Require a Finding of Intent to Deceive

KFx Medical Corp. (“KFx”) alleged that Arthrex, Inc. (“Arthrex”) infringed three of its patents: United States Patent Number 7,585,311 (“311 Patent”), United States Patent Number 8,100,942 (“942 Patent”) and United States Patent Number 8,109,969 (“969 Patent”). All three patents share the same name: “System and Method for Attaching Soft Tissue…

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No Ongoing Royalty Allowed Where Plaintiff Failed to Request Ongoing Royalties Before Entry of Judgment

After the jury returned a verdict of $5 million, the district court denied the parties’ post-judgment motions, including plaintiff’s motion for attorney’s fees, which was the only post-judgment motion filed by plaintiff. The district court then entered judgment on the jury verdict. The defendants then appealed from the judgment and…

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Motion to Quash Deposition Subpoena for Complainant’s CFO Denied by Administrative Law Judge Where CFO’s Deposition Was Relevant to Domestic Industry Requirement

Complainant Neptun filed a motion to quash three notices of deposition served by several respondents, specifically Satco, Maxlite, and Litetronics. Neptun sought to quash the three separate notices of deposition directed to Marzenna Bobel, the CFO of Neptun. Satco opposed the motion, and cross-moved to compel Mrs. Bobel’s deposition and…

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