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Ethicon filed a motion for summary judgment on one of the Panduit factors that are necessary to obtain lost profits. In its motion, Ethicon contended that Covidien’s alleged non-infringing alternatives were neither acceptable nor available.

https://patentlaw.jmbm.com/files/2019/01/background-close-up-court-1415558-pexels-CC0-01.14.2019-1-300x201.jpgIn evaluating the motion, the district court explained that a “noninfringing alternative need not be on the market during the infringement period to factor into a lost profits analysis.” Wechsler v. Macke Intern. Trade, Inc., 486 F.3d 1286, 1298 (Fed. Cir. 2007). But the district court also noted that where an alleged non-infringing alternative was not on the market during the relevant time period, “a trial court may reasonably infer that it was not available as a non-infringing substitute at that time. The accused infringer then has the burden to overcome this inference by showing that the substitute was available.” Grain Processing, 185 F.3d at 1353 (citation omitted). Moreover, “[t]he acceptable substitute element, though it is to be considered, must be viewed with limited influence where infringer knowingly made and sold the patented product for years while ignoring the substitute.” Panduit, 575 F.2d at 1162, n.9.

Covidien did not dispute that its alleged non-infringing alternatives were not on the market during the relevant time period and, therefore, Covidien bore the burden to overcome the inference of non-availability. See Grain Processing, 185 F.3d at 1353. Covidien contended that at least two non-infringing alternatives to its allegedly infringing device were available during the relevant time period. However, the district court noted that the record showed that it would between 46 and 62 weeks to develop such a non-infringing alternative.

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Cisco moved to dismiss the plaintiff’s patent infringement complaint pre-lawsuit willfulness allegations. As the district court explained, the allegations in the first amended complaint asserted: “(i) that an investor of both the owner of the ‘951 Patent and of OpenDNS informed unspecified employees or agents of OpenDNS that certain OpenDNS technology infringed the ‘951Patent (ii) that defendant acquired OpenDNS in 2015 and (iii) that defendant incorporated the allegedly infringing OpenDNS technology into the Accused Security Products.”

To analyze whether the allegations were sufficient, the district court explained that “[a]t the motion to dismiss stage, courts have concluded that a plaintiff must “plead facts showing willfulness” in order to avoid dismissal of a willful infringement claim. Cont? Circuits LLC v. Intel Corp., No. CV16-2026 PHX DGC, 2017 WL 2651709, at *7 (D. Ariz. June 19, 2017) (collecting cases). In this respect, the complaint must allege, as a “prerequisite” to a willfulness claim, that the defendant had “[k]nowledge of the patent alleged to be willfully infringed.” See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016). Yet, a plaintiff has not plausibly alleged willful infringement if he alleges only that “the evidence shows that the infringer knew about the patent and nothing more.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1936 (2016) (Breyer, J., concurring). As courts have sensibly concluded, the complaint must also allege facts that support a plausible inference that the defendant’s behavior was “egregious,” such as facts showing that defendant was put on notice or was otherwise subjectively aware of the risk that its conduct constituted infringement. See, e.g., Puget Bioventures, LLC v. Biomet Orthopedics LLC, 325 F. Supp. 3d 899, 911 (N.D. Ind. 2018); Finjan, Inc. v. Cisco Systems, Inc., No. 17-CV-00072-BLF, 2018 WL 7131650, at *4-5 (N.D. Cal. Feb. 6, 2018) (collecting cases).”

After reviewing the relevant case law, the district court noted that “[i]t is a close call whether the facts alleged in the First Amended Complaint are sufficient to support a plausible inference that, prior to the initiation of the instant infringement suit, defendant (i) knew of the ‘951 Patent and (ii) was subjectively aware of the risk that its conduct infringed the ‘951 Patent. In its response to defendant’s motion, plaintiff argues that OpenDNS’s knowledge of the ‘951 Patent and awareness of the infringing nature of its technology are attributable to defendant by virtue of defendant’s acquisition of OpenDNS in 2015.”

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After the district court dismissed plaintiff’s patent infringement claims, finding the patents directed to patent-ineligible subject matter, and awarded attorneys’ fees based on the exceptional case doctrine, the Federal Circuit affirmed both determinations. The defendant filed a supplemental motion for attorneys’ fees seeking to recover attorneys’ fees for the appellate process. The plaintiff opposed the motion.

https://patentlaw.jmbm.com/files/2019/05/banner-money-paper-brand-cash-illustration-815076-pxhere-cc0-05.01.2019-1024x405.jpgIn analyzing the motion, the district court explained that it had previously “determined that this case was frivolous and that plaintiff had litigated it in an unreasonable manner, rending the exceptional and entitling defendant to an award of attorneys’ fees. None of those underlying facts have changed, and plaintiff does not argue that they have.”

The court then determined that there was no need to make a second finding of exceptionality. “There is no need to make a second, separate determination under § 285 as to whether the case is exceptional. See, e.g., Dippin’ Dots, Inc. v. Mosey, 602 F. Supp. 2d 777 (N.D. Tex.2009) (rejecting plaintiffs’ argument that defendant had to “make a separate showing that the appeal itself is exceptional” and that fees “have to be separately justified in each phase of a case,” finding that defendant was entitled to fees without a second determination of exceptionality). That is, plaintiffs handling of the case since dismissal need not independently qualify as exceptional. Indeed, plaintiff does not argue here that a second, independent finding of exceptionality is required. As such, this Court’s earlier determination controls, and defendant is entitled to reasonable attorneys’ fees under 35 U.S.C. § 285.”

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In a previous litigation involving ZTE (but not the plaintiff), ZTE entered into a consulting arrangement with Dr. Madisetti. ZTE asserted that ZTE provided Dr. Madisetti with confidential information under the consulting agreement. When the plaintiff in this case, Bell Northern Research (“BNR”) retained Dr. Madisetti as an expert against ZTE, ZTE moved for a protective order to preclude BNR from using Dr. Madisetti as an expert.Image of a gavel resting on tabletop.

ZTE initially asserted that the terms of the Consulting Agreement prohibited Dr. Madisetti from serving as an expert for BNR in this case. BNR responded to that argument that the Agreement is no longer valid and Dr. Madisetti’s expertise in the current litigation would not involve products at issue in the previous matter.

The court agreed with ZTE, noting that the Consulting Agreement provided that it would terminate after the longest of three distinct time periods. “Though two years have passed from the effective date of the Agreement, the latter two time periods are not yet complete. First, Dr. Madisetti has not necessarily completed all work performed under the agreement, because the InterDigital District Litigation remains stayed, and there is a chance that more claims may arise. Second, because the InterDigital District Litigation is currently stayed and not complete—meaning the requisite one-year period following the close of that case has not yet begun—the agreement remains in effect. While BNR is correct that the InterDigital District Litigation has been stayed for a long time and that ZTE has advocated for the litigation to end, the fact remains that the litigation has not ended and therefore, the Consulting Agreement between ZTE and Dr. Madisetti remains in effect.”

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https://patentlaw.jmbm.com/files/2019/04/monument-statue-symbol-toy-sculpture-justice-1190413-pxhere.com-cc0-04.19.2019-1024x576.jpgIn this patent infringement action, the defendants, Synergistics, Inc. (“Synergistics”), filed a motion to dismiss the complaint for lack of personal jurisdiction. The plaintiff, Parabit Systems, Inc. (“Parabit”), opposed the motion on the ground that it was not required to establish personal jurisdiction in the complaint and that Synergistics had failed to come forward with any evidence that the district court did not have personal jurisdiction over it.

The district court agreed with Parabit, noting that a plaintiff does not have plead allegations pertaining to personal jurisdiction in the complaint. “The motion is mainly focused on the adequacy of allegations of personal jurisdiction in the complaint, but plaintiff has no obligation under Rule 8 to plead any allegations pertaining to personal jurisdiction, and so a complaint cannot inadequately allege the basis for personal jurisdiction.”

The district court also determined that Synergistics had not set forth any facts in any evidentiary form to switch the burden of proving personal jurisdiction to Parabit: “defendants have merely made allegations in their brief, but have submitted no affidavits or other evidence to support those statements. Although plaintiff has the burden of proving personal jurisdiction when it is properly challenged, defendants had the burden of going forward to show at least a colorable basis for challenging personal jurisdiction, and unsupported statements in a brief do not do that.”

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Plaintiff, Fox Factory, moved to amend its final infringement contentions, asserting that the defendant, SRAM, LLC, had failed to produce relevant information regarding its custom “BRAIN” product that had delayed Fox Factory from learning that the BRAIN product infringed the patent-in-suit. SRAM opposed the motion and contended that Fox Factory was well aware of the BRAIN product before the amendment deadline and that SRAM had no obligation to craft or intuit Fox Factory’s infringement position.

In analyzing whether there was good cause to permit the amendment, the court first looked at whether Fox Factory was diligent—and found that it was not. “Strikingly, Plaintiff’s arguments https://patentlaw.jmbm.com/files/2019/04/white-vintage-wheel-retro-old-bicycle-519554-pxhere.com-cc0-04.09.2019-crop-300x300.jpgsidestep its own knowledge—and when it gained such knowledge—about the existence and functionality of Defendants’ customized BRAIN shock for Specialized. Instead, FOX Factory seeks to direct the court’s attention to Defendants’ discovery shortcomings. But in considering good cause, this court first focuses on whether the original deadline could have been met with reasonable diligence by Plaintiffs, not any bad faith by Defendants. Colorado Visionary Academy, 194 F.R.D. at 687. Using this framework, based on the record before it, this court is not persuaded that FOX Factory exercised adequate diligence to warrant amendment of its Final Infringement Contentions at this late juncture.”

In reaching the conclusion that Fox Factory was not diligent, the court specifically noted that “FOX Factory carefully never argues it only learned of Defendants’ BRAIN shock at the end of the discovery period. Indeed, the record before this court belies any suggestion that FOX Factory’s knowledge of the BRAIN shock was dependent upon Defendants’ disclosures late in discovery. And while FOX Factory vigorously argues that it was diligent in pursuing Defendants’ identification of all its rear shock products so that it could pursue discovery and understand the full scope of infringement, Plaintiff never cogently explains why its own internal document related to competitive analysis from September 28, 2017 is insufficient to constitute knowledge of the BRAIN product and trigger its own independent obligation to diligently pursue discovery on the topic.”

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https://patentlaw.jmbm.com/files/2019/03/structure-wood-floor-building-steps-column-1049086-pxhere.com-cc0-03.22.2019-300x200.jpgIn this patent infringement action, the defendant moved to dismiss the plaintiff’s complaint for the plaintiff’s failure to participate in discovery and for ignoring several court orders. The motion explained that dismissal sanctions were appropriate in the light of, among other things, the plaintiff’s failure to comply with court orders, sanction order and to appear for a court hearing.

In analyzing the motion, the district court explained that Federal Rule of Civil Procedure 37 empowers the district court to compel compliance with discovery procedures though a broad choice of remedies and penalties, including dismissal with prejudice. Griffin v. Aluminum Co. of Am., 564 F.2d 1171, 1172 (5th Cir. 1977). “Dismissal of a complaint with prejudice is such a drastic remedy that a district court should only apply it only in extreme circumstances.” Id. However, dismissal with prejudice may be appropriate where a plaintiff’s failure to comply involves “either repeated refusals or an indication of full understanding of discovery obligations coupled with a bad faith refusal to comply.” Id.

The district court concluded that dismissal with prejudice was appropriate under the circumstances. As noted by the Magistrate Judge, the plaintiff had “willfully, in bad faith, and in disregard of his responsibilities failed to comply with the Court’s Order.” Furthermore, since the case was filed eight months ago, “Plaintiff has been sanctioned twice and has failed to: respond to an order to show cause; timely file a case management report; appear for a hearing; comply with the Court’s Order compelling discovery; and, most recently, respond to three separate motions by Defendant.” The district court found that these repeated violations establish a “clear record of delay or willful contempt,” far beyond mere negligence or confusion. See Goforth v. Owens, 766 F.2d 1533, 1535 (11th Cir. 2010). Given these “extreme circumstances,” the district court determined that dismissal with prejudice was warranted. See Griffin, 564 F.2d at 1172.

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https://patentlaw.jmbm.com/files/2019/03/2019-03-12_14-59-13-cc0-pxhere-03.12.2019-300x200.jpgIn this patent infringement action, the plaintiff, International Designs Corporation, LLC (“IDC”), moved to disqualify the counsel for defendant Hair Art Int’l, Inc. (“Hair Art”).   IDC moved to disqualify counsel for Hair Art on the grounds that Hair Art’s counsel also represented/represents an entity named Halo Couture, LLC, a California limited liability company (“HC1”) and, potentially, Halo Couture, LLC, a Delaware limited liability company (“HC2”), which were apparently “sister companies” of IDC and share a common parent.

The district noted that neither HC1 and HC2 were parties to the litigation.  The district court also noted that there is “no contention that IDC, Hairtalk GmbH or Günter Alex were ever clients of Defendant’s counsel. The district court also found that IDC had not “presented the Court with any case indicating that representation of an entity that serves as a ‘sister company’ to a present litigation opponent provides a basis under applicable law for disqualification of that counsel in the present litigation, either by way of an actual-conflict theory or a theory based on the presumption of possession of confidential information. Moreover, Movants’ ‘unity of interests’ theory appears to look to a unity of interest between an entity and its ‘parent,’ not between an entity and its ‘sister.’”

The district court also disregarded IDC’s other theories for disqualification, concluding that IDC had “not demonstrated a sufficient basis to conclude that there is a ‘subject matter (technology) based conflict’ because of HC1-HC2’s pending design patent application and Defendant’s product line.  Nor have Movants demonstrated that there is a realistic basis for a potential or future conflict based on the continued presence of an antitrust affirmative defense in this action. Their concern on that point is that Defendant ‘can pursue its anti-trust defense, seeking competitive sales data for the hair extension industry, including sales records of HC1 and HC2 and IDC’ and that ‘[i]f DEFENSE COUNSEL pursue the anti-trust discovery, such discovery demand to HC1 and HC2 will pass through’ an attorney who is both in-house general counsel of IDC and ‘special in-house I.P. counsel’ of the corporate parent and HC2.”

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8-o-clock-alarm-clock-analogue-1198264-300x200In this patent infringement action, the defendant, Playmonster LLC (“Playmonster”), requested that the district court stay discovery during the pendency of its forthcoming dispositive motion. As part of its request, Playmonster contended that a dispositive motion “would be the most efficient resolution of this case,” and that a stay of discovery would promote judicial efficiency and conserve the Parties’ resources, which would include reducing the attorney’s fees that would be spent on the case should the dispositive motion be granted.

The plaintiffs, Quality Innovative Products, LLC (“Quality”), opposed the stay of discovery in the case.  As its main argument, the plaintiffs asserted that the case was filed over a year ago, “and the Defendant has enjoyed substantial delay already while it pursued a first dispositive motion” that it used “as an excuse not to comply with its discovery obligations.”  Quality further argued that they “should not have to piece meal litigation for the convenience of the Defendant.” Quality also asserted that they oppose filing of dispositive motions until discovery closes.

The district court concluded that a stay of discovery was inappropriate.  “The court is disinclined to stay discovery pending the filing of a dispositive motion. While Defendant may file a dispositive motion at any time it deems appropriate on or before the set deadline, the court’s practice standards do limit parties to one dispositive motion without leave of the court. See NYW Civ Practice Standards 56.1. In addition, leave to file additional dispositive motions is only granted in exceptional circumstances. See id. Further, stays of discovery in this District are generally disfavored, see Church Mut. Ins. Co. v. Coutu, No. 17-CV-00209-RM-NYW, 2017 WL 3283090, at *2 (D. Colo. Aug. 2, 2017), and nothing in the record before the court at this juncture justifies a stay.”

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TC Technology filed a patent infringement action against Sprint alleging that Sprint infringed a patent pertaining to wireless services used on an LTE network. The complaint did not allege willful infringement.

171030-JMBM-14-Jill-Skinner-001-300x269During discovery, Sprint responded that it had received an email several years before the lawsuit was filed with an offer to purchase the patent-in-suit. An attachment to the email identified and described the patent-in-suit. Although the general counsel for Sprint forwarded the email and attachment to several Sprint employees, Sprint explained that it believed the attachment was never opened. TC Technology took the deposition of one of these employees and then filed a motion to amend the complaint to add a claim for willful infringement. Because the motion was filed after the cut-off established to amend the pleadings, TC Technology could not amend the complaint without a showing of good cause.

During deposition, the Sprint witness (Mr. Ball) testified that “there was no way to verify one way or the other” whether the attachment had been opened, other than the recollections of himself, Mr. Wunsch, and Mr. Cowan that it was not opened. As explained by the district court, Mr. Ball also testified that he did not think he, Mr. Wunsch, or Mr. Cowan would have opened the attachment in the normal course of business.

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