Published on:

by

After an appeal to the Federal Circuit, Defendant Arthrex, Inc. (“Arthrex”) filed a motion to reopen the judgment under FRCP 60(b). Arthrex premised its motion on the argument that the judgment should be reopened in light of the Supreme Court’s recent holding in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).

Plaintiffs Smith & Nephew, Inc. and John Hayhurst (collectively “S&N”) had appealed the district court’s decision to grant Arthrex’s motion for judgment as a matter of law. As set forth by the district court, under the case law in effect at the time of the appellate decision, the Federal Circuit reviewed all aspects of the district court’s claim construction de novo. The Federal Circuit ultimately reversed the decision granting Arthrex’s motion for judgment as a matter of law.
Continue reading

Published on:

by

Defendant Samsung Electronics Co. (“Samsung”) filed a motion to compel plaintiff Cascades Computer Innovation, LLC (“Cascades”) to produce additional documents and to require its trial counsel to appear for a deposition. Samsung moved to compel the deposition of Cascade’s trial counsel based on the argument that Cascades’s principal, Anthony Brown, had communicated with the trial counsel (Mr. Niro) regarding licensing and settlement negotiations.

The district court agreed that “[b]ased on the record before the Court, it is clear that Mr. Niro discussed with Brown facts and strategy for Brown’s use during licensing and settlement negotiations and also suggested appropriate outcomes.” But the district court found that this was not surprising as “[ll]awyers representing clients involved in contract or settlement negotiations do that every day. Doing so does not make the lawyer a witness in resulting litigation.”
Continue reading

Published on:

by

Apple filed a motion to compel discovery from Farstone Technology, Inc. (“Farstone”) by way of a Joint Stipulation as required by the court’s local rules. After the court reviewed the joint stipulation, it found that there were significant problems and that too many disputes remained for the court to resolve.

As a result, the court concluded that the meet and confer process had failed that the parties had not complied with Local Rule 37-1. “After reading the Joint Stipulation, the Court cannot but conclude that the meet and confer process has failed. There are far too many disputed issues. Both sides are not being as reasonable and flexible as they should be and as the Local Rules contemplate. Specifically, Local Rule 37-1 requires counsel to ‘confer in a good faith effort to eliminate the necessity for hearing the motion or to eliminate as many of the disputes as possible.’ (Emphasis added.)”
Continue reading

Published on:

by

In this patent infringement action between Natural Chemistry LP and Orenda Technologies, Inc. (“Orenda”), Orenda’s counsel filed a notice of vacation designation, which the district court characterized as a notice of unavailability.

In considering the notice, the district court began by noting that “[t]he rules of this Court do not provide for filing a Notice of Unavailability as a method to avoid abiding by deadlines and schedules established by the Court or to extend the time for responding to motions.”
Continue reading

Published on:

by

Invista North America S.A. R.L. (“Invistia”) filed a patent infringement action against M&G USA Corporation (“M&G”). As the case progressed toward trial, both parties exchanged expert reports on damages, which implicated the entire market value rule.

As explained by the Federal Circuit, the entire market value rule is derived from Supreme Court precedent requiring that the patentee ‘must in every case give evidence tending to separate or apportion the defendant’s profits and the patentee’s damages between the patented feature and unpatented features, and such evidence must be reliable and tangible, and not conjectural or speculative.’ Astrazeneca AB v. Apotex Corp., — F.3d. —, 2015 WL 1529181 at *11 (Fed. Cir. April 7, 2015).
Continue reading

Published on:

by

In this patent infringement action between Plaintiffs Good Technology Corporation and Good Technology Software, Inc. (“Good) and Defendant MobileIron, Inc. (“MobileIron”). Two months before the trial, MobileIron moved to dismiss the case based invalidity under 35 U.S.C. § 101.

The court, referencing the Supreme Court’s decision in Alice, found the claims in the patents may indeed be abstract. “In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, the Supreme Court held that 35 U.S.C. § 101 bars any patent claim directed to an abstract idea unless the claim includes “additional features” that transform the idea into a patent eligible invention. At first glance, Alice would seem to pose serious problems for each of the claims of two patents Plaintiffs Good Technology Corporation and Good Technology Software, Inc. assert against Defendant MobileIron, Inc. United States Patent No. 7.907,386 appears directed to little more than the notion of enforcing rules. United States Patent No. 7,702,322 appears no less abstract in claiming a way of ensuring the compatibility of two items used together. In the absence of a transformation of these ideas, Good would appear to be the owner of two patents worth little more than the paper they are printed on.”
Continue reading

Published on:

by

Plaintiff Stoneeagle Services, Inc. (“Stoneeagle”) filed a motion seeking sanctions against Defendant Premier Healthcare Exchange, Inc. (“PHX”) for failing to provide a prepared corporate representative to testify pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure. In response to the motion, PHX did not dispute that its corporate representative was unable to respond to all of the questions posed to him during the deposition, but instead asserted that the notice of deposition contained forty-five deposition topics covering broad topics and, therefore, lacked specificity.

The district court first analyzed the requirement of Rule 30(b)(6), noting that the corporation’s obligation under Rule 30(b)(6) “does not mean that the witness can never answer that the corporation lacks knowledge of a certain fact.” New World Network Ltd. v. M/V Norwegian Sea, 2007 WL 1068124 (S.D. Fla. 2007) (“if a witness is not prepared to answer a slew of questions that are glaringly irrelevant to the claims or defenses in a case, a requesting party who seeks to compel or sanction a deponent for not knowing such answers will not be successful before the Court, and indeed may himself be sanctioned under Rule 37 if the Court finds that the questions were so improper and the party’s position substantial unjustified”).
Continue reading

Published on:

by

America’s Collectibles Network (“ACN”) filed a patent infringement action in which it claimed to own U.S. Patent No. 8,370,211 (the “211 Patent”). It brought this action against the Genuine Gemstone Company (“Genuine Gemstone”). Genuine Gemstone filed a motion to dismiss contending that it is the rightful owner of the 211 Patent and that ACN lacks standing to assert infringement.

The district court explained the background facts as follows: “On June 18, 2010, The Colourful Company Group acquired Gems TV (UK) Ltd–the then owner of the 211 Patent–through a share purchase agreement. After the transaction was completed, Gems TV (UK)’s former director, Anthony Hillyer, signed a document purportedly assigning Gems TV (UK)’s interest in the patent to a US affiliate that was not part [of] the sale. ACN traces its chain of title back to that assignment. If the assignment was valid, as ACN contends, then ACN is the rightful owner of the 211 Patent, and this suit may proceed. On the other hand, if the assignment was invalid as the defendant claims, then ACN is not the rightful owner of the 211 Patent, and it lacks standing to assert its infringement claim.”
Continue reading

Published on:

by

Fairchild Semiconductor Corp. and Fairchild (Taiwan) Corp.’s
(collectively, “Fairchild”) moved in limine to preclude any reference to any pending reexamination proceeding or any completed reexamination proceeding of any asserted patent. Defendant Power Integrations, Inc. (“PI”) asserted that the fact the PTO finally rejected all asserted claims of the patent “is central to the ‘specific intent’ element (or the lack thereof) of Fairchild’s inducement claim” and also negated Fairchild’s proof of intent with respect to willful infringement.

The district court disagreed with PI. Noting that the Federal Circuit “has often warned of the limited value of actions by the PTO when used for” the purpose of “negating the requisite intent for inducement,” the district court stated that the “[t]he pending reexamination of Fairchild’s asserted patent is not final, as Fairchild has appellate rights. Pursuant to Federal Rule of Evidence 403, the limited probative value of evidence of the reexamination’ is substantially outweighed by the risk of unfair prejudice to Fairchild, especially the risk of confusion and the need to educate jurors on administrative proceedings governed by different standards and on the potential for reversal of the PTO on appeal.”
Continue reading

Published on:

by

Presidio Components, Inc. (“Presidio”) filed a complaint against American Technical Ceramics Corp. (“ATC”) asserting a claim for patent infringement. ATC filed a motion to stay the case pending PTO review of the patent-in-suit. Presidio opposed ATC’s motion to stay.

The district court began its analysis of the motion by noting that “this is not the first time that ATC has sought reexamination of the ‘356 patent with the United States Patent and Trademark Office (“PTO”). On July 23, 2009, ATC filed a request for ex parte reexamination of the ‘356 patent with the PTO seeking PTO review of claims 1-5, 16, 18, and 19. On July 2, 2010, ATC filed a second request for ex parte reexamination of the ‘356 patent with the PTO seeking review of the same claims. After reviewing ATC’s requests for reexamination, the PTO confirmed the patentability of claims 1-5, 16, 18, and 19.”
Continue reading