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In this patent infringement action, DUSA Pharmaceuticals, Inc. (“DUSA”) sought to strike the testimony of Biofrontera’s expert witness, Professor Harry Moseley, for his reliance on a non-infringing alternative, the Paterson lamp. DUSA asserted that the testimony should be stricken because the Paterson lamp had never been available in the United States.

The district court explained that the Paterson lamp was designed and built by the Paterson Institute in the United Kingdom in the early to mid-1990’s and that five articles describing the Paterson lamp were published in the United States, but there was no evidence that the lamp was ever sold, used, or exhibited in the United States. “Based on his personal involvement in the creation of the Paterson lamp, Professor Moseley testified to its composition and functionality. In particular, Professor Moseley identified the lamp’s desired treatment distance as 4 inches, a parameter not explicitly disclosed in the published references.”

DUSA challenges the testimony as impermissible (attempting to back-fill gaps in the Paterson lamp references) and as untimely. Biofrontera responded that Professor Mosleys’ testimony was admissible evidence of prior art and that the parties had agreed to modify the expert discovery schedule to give DUSAs expert witness, Dr. Zamenhof, an opportunity to submit a supplemental declaration. Continue reading

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Plaintiff Midwest Athletics and Sports Alliance LLC (“MASA”) filed a patent infringement action against Ricoh USA, Inc. (“Ricoh”) alleging infringement of certain printing-related patents. Ricoh sought production of certain categories of documents that MASA contended were privileged and, therefore, not subject to disclosure. Ricoh contended that the documents are responsive to its requests, which seek documents related to MASA’s acquisition of the patents from Kodak and various communications with litigation funding companies, for which MASA asserted a common interest privilege.

The district court explained that “the common interest doctrine protects parties, with shared interest in actual or potential litigation against a common adversary, from waiving their right to assert privilege when they share privileged information.” Gelman v. W2 Ltd., No. 14-cv-6548, 2016 WL 8716248, at *3 (E.D. Pa. Feb. 5, 2016) (quotation omitted). Unlike joint representation, the common interest exception “comes into play when clients with separate attorneys share otherwise privileged information in order to coordinate their legal activities.” In re Teleglobe, 493 F.3d at 359. The legal activities may be litigation or transactional matters, but “the privilege only applies when clients are represented by separate counsel.” Id. at 365. Continue reading

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Upcoming webinar: When Artificial Intelligence is the inventor, who owns the patent?

Join us for a one-hour webinar on the topic, “When AI is the inventor, who owns the patent?”  Register now.

Who Should Attend:  General Counsel, Patent Counsel

Date: Tuesday, October 20, 2020

Time: 11 AM – 12 PM Pacific Time


Companies that develop products and services employing artificial intelligence (AI) face unique opportunities and challenges. One such challenge is patenting inventions created by AI.

This one-hour webinar will focus on the issue of whether AI can be considered an “inventor” under United States patent law. We will discuss recent developments and the implications that can be drawn from the rejection by the U.S. Patent Office of inventions created by AI. A question and answer period will be included. Continue reading

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In this long running patent dispute, the district court denied Apple’s motion to amend the judgment based on a five month delay. The district court explained the long running history of the case as follows: “Nearly 10 years ago, VirnetX sued Apple, alleging Apple’s FaceTime and VPN on Demand features infringed VirnetX’s patents. Four trials, three appeals and a litany of parallel proceedings ensued. Almost three years ago, this Court laid to rest a portion of the parties’ quarrel, entering final judgment in the above-captioned matter. Now, under Rule 60, Apple attempts to resurrect this case for a retrial on damages.”

In its motion to set aside the final judgment under Rule 60(b)(6), Apple argued that the relief was necessary to prevent VirnetX from recovering “a massive damages judgment for patent claims that are necessarily unpatentable.” VirnetX responded that Apple’s motion was untimely, that it attempted to relitigate issues raised on direct review and failed to establish the “extraordinary circumstances” necessary for relief under Rule 60(b).

The district court agreed with VirnetX, noting that motions under Rule 60(b)(6) “must be made within a reasonable time.” FED. R. CIV. P. 60(c). “What constitutes [a] ‘reasonable time’ depends on the facts of each case, taking into consideration the interest in finality, the reason for delay, the practical ability of the litigant to learn earlier of the grounds relied upon, and prejudice to other parties.” Travelers Ins. Co. v. Liljeberg Enters., 38 F.3d 1404, 1410 (5th Cir. 1994) (quoting Ashford v. Steuart, 657 F.2d 1053, 1055 (9th Cir. 1981)). “A district court is provided wide discretion in determining whether a Rule 60(b) motion is filed within a reasonable time.” McKay v. Novartis Pharm. Corp., 751 F.3d 694, 701 n.5 (5th Cir. 2014). Continue reading

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In this patent infringement action, the plaintiff’s counsel deposed one of the defendant’s (DJO) Fed.R.Evid. 30(b)(6) witnesses during a deposition that took place remotely.  At the remote deposition, counsel questioned the witness regarding a license agreement and a privileged letter that was apparently appended to the license agreement.  Plaintiff then contended that any objections to the privileged nature of the letter were waived and that the waiver should be not just to the letter but also to the subject matter of the letter.

To analyze the waiver issue, the district court addressed whether DJO took appropriate steps to claw back the privileged letter.  DJO contended that it did promptly take reasonable steps to rectify the error, explaining that, because the deposition was remote and the letter was attached to many other non-privileged documents, DJO’s counsel could not tell from the remote display of the document whether the letter had been intentionally produced.  Although Mr. DJO’s counsel did not assert privilege over the letter during the deposition or after the letter was discussed, DJO identified the letter as inadvertently produced and requested the destruction of the letter and related testimony “within hours” of the deposition’s conclusion. Continue reading

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In this patent infringement action, Microchip accused Aptiv’s Dual Role Hub of infringing several the patents. As the district court explained, the Dual Role Hub is a media module that Aptiv manufactures and sells to automakers for incorporation into a car’s infotainment system through USB peripherals, such as a smart phone. The Dual Role Hub can also perform a more complex function. For example, when an iPhone is connected to the Dual Role Hub to start an Apple CarPlay session, the Hub detects the iPhone and requests that it re-connect as a host device instead of a peripheral device and when that happens, two hosts–the Head Unit and the iPhone—can connect to the same Dual Role Hub, which permits the user to make use of other hub ports while CarPlay is active.

Microchip served an expert report from Stephen Becker, Ph.D., which offered two damages-related opinions. First, he explained that, if Aptiv had not infringed, Microchip would have earned incremental profits of $40.9 million. Second, he determined that Aptiv and Microchip would have agreed to a reasonable royalty of $2 per Dual Role Hub in a hypothetical negotiation. Continue reading

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In this patent infringement action, the plaintiffs sought to exclude the defendant’s expert on invalidity and infringement. One of the grounds on which they sought to exclude the testimony was based on bias. The plaintiffs contended that the expert’s bias stemmed from his belief that he invented certain of the technology at issue, which the plaintiffs disputed and which they asserted would motivate him to form opinions that are not based on facts.

In analyzing the issue, the district court noted that “[a]n expert’s alleged bias, however, is not a proper basis on which to exclude his or her testimony under Daubert or Rule 702. See Cage v. City of Chicago, 979 F. Supp. 2d 787, 827 (N.D. Ill. 2013) (collecting cases); Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2005 WL 4034698, at *3 n.3 (N.D. Ill. Dec. 21, 2005) (“[A]lleged bias is fodder for cross-examination and impeachment, not a ground for exclusion [of expert testimony].”). Any bias on the part of a witness would go to the weight of a specific opinion, not to its admissibility. See Cage, 979 F. Supp. 2d at 827 (citing DiCarlo v. Keller Ladders, Inc., 211 F.3d 465, 468 (8th Cir. 2000)).

Accordingly, the district court denied the plaintiffs’ motion to exclude the expert’s testimony on invalidity and infringement.

Neurografix v. Brainlab, Inc., Case No. 12 C 6075 (E.D. Ill. July 6, 2020) Continue reading

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In the article, “Deepfakes: new California laws address dangers and development”, published by the Daily Journal, authors Stan Gibson and Jessica Newman address two new California laws that have been enacted to combat the risk of “deepfake” videos.

Deepfake videos, in which a person in an existing image or video is replaced with someone else’s likeness, have a high potential for abuse. For the victims of deepfakes, legal recourse may be difficult, as the law is just beginning to catch up with this technology.

Gibson and Newman discuss the implications of the new laws and what more needs to be done.

You can read the article, here. Continue reading

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Raffel Systems, LLC (“Raffel”) filed a patent infringement action against Man Wah Holdings (“Man Wah”).  Man Wah moved to dismiss the patent claims on the ground that Raffel did not possess title to the patents at the time the lawsuit was filed and therefore lacked standing to sue.

As explained by the district court, Man Wah asserted that Raffel lost title to the patents when Raffel mortgaged its patents to obtain loans with PrivateBank and East West Bank. Man Wah relied on the U.S. Supreme Court case of Waterman v. Mackenzie, 138 U.S. 252 (1891) for its position that because Raffel granted PrivateBank and East West Bank security interests in its patents and the banks recorded their security interests with the USPTO, this transferred title in the patents from Raffel to the banks.

In opposition to the motion, Raffel argued that its agreements with the banks are nothing more than standard security agreements granting the banks a security interest in the patents, not a conveyance of title. Continue reading

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In this patent infringement action, AT&T filed a motion to compel certain litigation-funding discovery from the plaintiff, United Access Technologies, LLC (“UAT”).  The district court reviewed documents relating to or from third parties regarding potential investments by those third parties in UAT’s lawsuits and communications to and from third parties relating to “quarterly updates” about UAT’s current lawsuits.  In its motion, AT&T contended the information was not privileged and should be produced.  UAT responded that the litigation funding was irrelevant and was protected by the work-product doctrine.

To analyze the issue, the district court explained that “[d]iscoverability of litigation funding materials under Federal Rule of Civil Procedure 26 is a contested issue on which there is no binding precedent in the Third Circuit. See In re Valsartan N-Nitrosodimethylamine (NDMA) Contam. Prod. Liab. Lit., 405 F. Supp. 3d 612, 615 (D.N.J. 2019) (collecting cases and agreeing “with the plethora of authority that holds that discovery directed to a plaintiff’s litigation funding is irrelevant”). Generally, when confronted with this sort of dispute, close consideration of the subject matter in the disputed documents (e.g., through in camera review) is a prudent approach. See, e.g., ART+COM Innovationpool GmbH v. Google, Inc., C.A. 14-217 D.I. 196 (D. Del. Sept. 11, 2015) (finding, after in camera review, agreements with plaintiff’s litigation financiers were irrelevant).” Continue reading