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After the Patent Trial and Appellate Board (“PTAB”) instituted inter partes review (“IPR”) of all asserted claims in three of the Patents-in-Suit and with the PTAB’s decision on FMC’s petition for IPR of the fourth challenged patent pending, the district court received briefs on whether the case should be stayed pending the IPRs.

The district court analyzed the issued by nothing that it had authority to stay the case pending IPRs based on a three factor test. See, e.g., Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848-49 (Fed. Cir. 2008) (citing 35 U.S.C. § 318). “District courts typically analyze stays under a three-factor test: (i) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (ii) whether a stay will simplify the issues in question and trial of the case; and (iii) whether discovery is complete and whether a trial date has been set.” Murata Mach. USA v. Daifuku Co., Ltd., __ F.3d __, 2016 WL 4073320, *3 (Fed. Cir. Aug. 1, 2016).
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MAX Encryption Technologies (“MAZ”) filed a patent infringement action against Blackberry for patent entitled “Method of Transparent Encryption and Decryption for an Electronic Document Management System,” U.S. Patent No. 6,185,681 (the “‘681 patent”). As the case progressed toward trial, Blackberry filed a motion to exclude the testimony of MAZ’ damages expert, Chase Perry.

As explained by the district court, “[i]n reaching his baseline estimate for damages, Mr. Perry relied on a previous license agreement involving the patent-in-suit. The previous license agreement, however, was made in the context of settling a litigation dispute, and thus did not reflect the royalty the parties would have reached ‘just before infringement began.’ Therefore, the damages amount arrived at in the settlement agreement had to be translated into a damages number that the same parties would have arrived at just before infringement began had they, instead, assumed that the patent was infringed and valid. This implies that the amount of the previous settlement would need to be increased to arrive at the royalties that would have been agreed to in a hypothetical negotiation.’
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The plaintiff, [24]7 Customer, Inc. (“[24]/7”), filed a lawsuit against Defendant LivePerson, Inc. (“LivePerson”) alleging that LivePerson infringed several patents pertaining to a customer engagement software platform. After the lawsuit was filed, the parties entered into a stipulated protective order in which the parties agreed that “[a]ny source code produced in discovery shall be made available for inspection, in a format allowing it to be reasonably reviewed and searched, during normal business hours or at other mutually agreed times, at an office of the Producing Party’s Counsel or another mutually agreed upon location.”

Furthermore, the Protective Order provided that “[a]ll source code shall be made available by the Producing Party to the Receiving Party’s Outside Counsel of Record and/or experts on a secured computer in a secured room without Internet access or network access to other computers, as necessary and appropriate to prevent and protect against any unauthorized copying, transmission, removal or other transfer of any source code outside or away from the computer on which the source code is provided for inspection (the “Source Code Computer” in the “Source Code Review Room”).
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The plaintiff, Grecia, alleged that McDonald’s infringe certain claims of U.S. Patent No. 8,533,860 (“the ‘860 patent”) and of U.S. Patent No. 8,402,555 (“the ‘555 patent”) through its use of the “tokenization systems” of several credit card companies.

As explained by the district court, Grecia alleged that McDonald’s uses the claimed systems when a McDonald’s customer purchases a McDonald’s food item with a credit card, the credit card company’s server acts as a receipt module by receiving the primary account number (“PAN”) assigned to the credit card. The credit card company’s authentication module authenticates the PAN with the issuer of the credit card. Then the credit card company’s connection module establishes a connection between the credit card company’s payment processor and its token service provider. A token is data that serves as a surrogate for the PAN.) The payment processor then acts as a request module and requests from the token service provider the token associated with the PAN. The payment processor then acts as the second receipt module by receiving the token.) The credit card company then writes the token to the token vault, or branding module, so that when the same credit card is used for subsequent McDonald’s purchases, the token associated with the PAN is available to be cross-referenced.
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Plaintiff Sprint Communications Company brought suit against Defendants Comcast Cable Communications, LLC and Comcast IP Phone, LLC alleging infringement of six of its patents related to telecommunications and data networking. After the district court denied summary judgment, Sprint prevailed in a jury trial on some of the patents and Sprint was award $27.6 million in damages. Subsequently, the district court granted Comcast’s motion for judgment as a matter of law and Sprint appealed.

Comcast requested attorney’s fees under 35 U.S.C. § 285. Sprint argued that the district court should defer ruling on the motion until the appeal was determined and asserted that the Federal Circuit’s decision may moot the motion, or may clarify some issues relating to it. Comcast opposed Sprint’s request and encouraged a “swift resolution” with the idea that the Federal Circuit may be able to decide both issues at once.
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In September 2013, Murata filed a patent infringement action alleging that Daifuku infringed three of its patents (the “Original Patents”). A year later, in September 2014, Murata moved to amend its Complaint to add two patents that Murata alleged were also infringed by Daifuku (the “Additional Patents”). Daifuku filed an inter partes review (“IPR”) of the Original Patents and then moved to stay the case pending the outcome of the IPRs.

The district court then stayed the case and simultaneously granted permission for leave to amend the complaint to add the Additional Patents. After the PTAB instituted review of the Original Patents, Murata moved to lift the stay with respect to the Additional Patents and moved for a preliminary injunction on the Additional Patents. Daifuku also filed IPRs with respect to the Additional Patents. The district court denied the motion for preliminary injunction as untimely because it declined to lift the stay.
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Apple filed an objection to EON’s plan to present a technology tutorial through its expert consultant. Apple asserted that the consultant was not disclosed as an expert on whom EON intended to rely upon during claim constructions, as required by the Local Patent Rules. Apple also asserted that the disclosure, which came only two days before the tutorial, was prejudicial because Apple did not have sufficient time to learn about and/or test the consultant’s opinions and credentials.

EON opposed the objection on the ground that Apple already knew of the consultant because he was disclosed under the protective order as someone who would have access to technical information. EON also argued that the consultant did not need to be disclosed because he was not testifying in support of EON’s claim construction positions. EON also argued that it would be prejudiced if the consultant was disclosed since it would be too late for EON to use another expert or present the tutorial through its counsel.
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After a jury awarded the Trustees of Boston University (“BU”) a $9.3 million dollar one-time lump-sum payment from Epistar and a $4 million dollar one-time lump-sum payment from Everlight, the district court denied the defendants’ motions for judgment as a matter of law and/or a new trial, other than with respect to the issue of damages. On the damage issue, the district court granted a remittitur because the lump-sum damages awards were not supported by the evidence.

After the district court denied a motion for reconsideration, BU notified the district court that it elected to have a new trial on damages or, in the alternative, to permit an interlocutory appeal.
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Posted in: Damages
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In this patent infringement action, Apple filed a motion to add additional Acacia entities as plaintiffs in the action. Apple’s primary argue was that the Acacia entities were the alter egos of the plaintiff and that the plaintiff is undercapitalized, which would mean that Apple might be unable to collect attorney’s fees and costs it might be awarded against the plaintiff at the end of the litigation.
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In this patent infringement action, the defendant sought the production of documents that the plaintif, IOENGINGE, had provided to potential companies that could fund litigation. IOENGINGED claimed that the documents were protected by the work product doctrine. The defendant sought production of the withheld documents.

IOENGINE explained that the approximately 70 documents listed on the privilege log were prepared by its counsel and by the inventor of the patent-in-suit, Mr. McNulty, for litigation funders in anticipation of and during litigation.
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Posted in: Discovery
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