Published on:

by

In this patent infringement action, the defendant moved to compel the production of settlement license agreements as part of its reasonable royalty analysis. The plaintiff opposed the request on the grounds that the agreements were protected by the common interest privilege and were not relevant.

The district court disagreed.

Turning to the issue of common interest, the district court explained that “[t]he protection of communications among clients and attorneys ‘allied in a common legal cause’ has long been recognized” and “has previously arisen in connection with patent rights.” In re Regents of University of California, 101 F.3d 1386, 1389 (Fed. Cir. 1996). In patent cases, “the Federal Circuit has required the entities exchanging the privileged material to have a substantially identical legal interest, as opposed to a solely commercial interest.” High Point SARL v. Sprint Nextel Corp., No. 09-2269-CM-DJW, 2012 WL 234024, at *7 (D. Kan. Jan. 25, 2012) (citing In re Regents, 101 F.3d at 1389). “An exception to the assertion of the common interest privilege exists when the participants in the common interest become adverse to each other in litigation.” Dexia Credit Local v. Rogan, 231 F.R.D. 287, 295 (N.D. Ill. 2005). Continue reading

Published on:

by

In this patent infringement action, the City of Hope filed a motion for summary judgment. The district court denied the motion without prejudice for failing to comply with the Local Rules meet and confer requirement.

Central District Local Rule 7-3 provides that “counsel contemplating the filing of any motion shall first contact opposing counsel to discuss thoroughly, preferably in person, the substance of the contemplated motion and any potential resolution” at least seven days before filing a motion. C.D. Cal. L.R. 7-3. “The purpose of Local Rule 7-3 is to help parties reach a resolution which eliminates the necessity for a hearing,” which “further[s] judicial economy and the administration of justice.” James R. Glidewell Dental Ceramics, Inc. v. Phila. Indem. Ins. Co., No. 8:16-cv-01155-JLS-E, 2016 U.S. Dist. LEXIS 189416, at *1 (C.D. Cal. Sept. 12, 2016) (internal quotation marks omitted); accord Caldera v. J.M. Smucker Co., No. CV 12-4936-GHK (VBKx), 2013 U.S. Dist. LEXIS 183977, at *2 (C.D. Cal. June 3, 2013) (noting that the rule “enables the parties to brief the remaining disputes in a thoughtful, concise, and useful manner” (internal quotation marks omitted)).

The district court explained that the City of Hope did “not present a statement of compliance with the prefiling conference requirement, as required by the Local Rule. Although the record shows that the parties long have contemplated filing motions for summary judgment, the motion itself is devoid of any information showing that counsel discussed the issues in the motion thoroughly such that the briefing will be “directed to those substantive issues requiring resolution by the Court.” (Initial Standing Order § 9(c).)” Continue reading

Published on:

by

As explained by the district court, Zadro Products, Inc. (“Zadro”) sued Feit Electric Company (“Feit”) for patent infringement alleging that Feit infringed on two of Zadro’s patents: United States Patent No. 8,162,502 (“the ’502 Patent”) and United States Patent No. 8,356,908 (“the ’908 Patent”). Zadro alleged that one of Feit’s products, the Enhance Rechargeable LED Vanity Mirror (model number VRM-1), infringed at least claims 1–9, 18, and 22–23 of the ’502 Patent under 35 U.S.C. § 271(a). Zadro also alleged that the Enhance Rechargeable LED Vanity Mirror infringed at least claims 28–32 of the ’908 Patent under 35 U.S.C. § 271(a).

In its summary judgment motion, Feit asserted that the Zadro mirrors that practice the ’502 Patent do not have marks on them that comply with the requirements of § 287(a). Both parties agreed that Zadro practices the ’502 Patent. The parties also agreed that Zadro does not mark the practicing mirrors themselves. Instead, Zadro contended that marks on the packaging of the practicing products satisfy § 287(a).

The district court explained that § 287(a) requires that a product itself be marked unless “from the character of the article, this can not be done.” “[S]ubstantial compliance may be found to satisfy the [marking] statute.” Global Traffic Technologies LLC v. Morgan, 620 Fed. Appx. 895, 905 (Fed. Cir. 2015) (alteration in original) (quoting Maxwell v. J. Baker, 86 F.3d 1098, 1111 (Fed. Cir. 1996)). No set list of factors can be used to determine whether the “character” of the product makes marking the packaging of the product permissible. Id. at 905-906. Some factors might include the size of the product, whether what is patented is a machine or a multi-part system, and whether the product is immediately installed out of public view once unpackaged. Id. at 905. Continue reading

Published on:

by

In this patent infringement action, Plaintiff Personalized Media Communications, LLC (“PMC”) filed a motion seeking (1) a court order compelling Defendant Netflix Inc. (“Netflix”) to provide PMC with on-site access to Netflix’s source code after the close of fact discovery or, in the alternative, (2) an extension of the fact discovery deadline to allow review of the source code. Netflix opposed the motion asserting that PMC should have completed review of the source code prior to the close of fact discovery and that there was no good cause to extend the fact discovery deadline.

In support of its positon, PMC did not cite to any case law that supported its argument that a party producing confidential source code through on-site access procedures must allow further review of this source code after the fact discovery deadline. The district court did not find persuasive the cases cited by PMC, which concern inspection of physical sites rather than review of confidential source code. Continue reading

Published on:

by

The defendant, IBG, contended that the plaintiff, Trading Technologies (“TT”) committed patent misuse (rendering its patents unenforceable) when it tied licenses to its U.S. patents to sales of products in foreign jurisdictions where IBG did not hold any patents. TT moved for summary judgment on the patent misuse defense.

As explained by the district court, between 2004 and 2018, TT and various third parties entered into thirty-five license and/or settlement agreements with respect to the four patents-in-suit. At least seven of these agreements include language explaining that the license granted is “worldwide and is based on worldwide usage of [the competitor’s licensed products], as opposed to only usage in countries in which there is patent protection.” The license agreements also included the following or nearly identical language: “WHEREAS, TT is willing to grant the discounted license granted herein for administrative convenience because the license is worldwide and requires payments of royalties for use of Licensed Products . . . anywhere in the world as opposed to royalties based only on the usage of Licensed Products in countries in which there is patent protection.” Continue reading

Published on:

by

In this patent infringement action, defendant Athenahealth, Inc. (“Athenahealth”) moved to exclude the plaintiff CliniComp International Inc.’s damage expert testimony of Dr. Nisha Mody, which included a check on the reasonableness of the damage calculation based on an incremental-value analysis.

As explained by the district court, Dr. “Mody’s damages model is based on a reasonable-royalty-rate analysis, which calculates the royalty the parties would have agreed to during a hypothetical negotiation that would have occurred on the eve of infringement. Her analysis multiplies the number of infringing customers by the cost to design around the claimed invention per customer to determine the amount of damages. Mody also performs a second calculation to check the reasonableness of her damages calculation. She refers to this as an “incremental-value” analysis. For the incremental-value analysis, Mody determines that Athenahealth estimated that the athenaOne suite would increase revenue by 10 percent. She then calculates the damages by multiplying 10 percent by the total revenue Athenahealth earned from the athenaOne suite.”

Continue reading

Published on:

by

SIMO Holdings Inc. (“SIMO”) prevailed on its patent infringement claims against defendant Hong Kong uCloudlink Network Technology Limited (“uCloudlink”) at trial. SIMO asked the district court twice to use confidential uCloudlink documents produced in pretrial discovery in a trade secret misappropriation lawsuit in Shenzhen, China between SIMO subsidiary Skyroam Shenzhen and a uCloudlink subsidiary (the “Chinese lawsuit”).

As explained by the district court, when it made the request to disclose the confidential information in the Chinese lawsuit, SIMO informed the district court for the first time that “[i]n late November 2018” plaintiff’s counsel at K&L Gates LLP “made the . . . uCloudlink Confidential Documents available to the [King & Wood Mallesons] attorneys” who at that time represented Skyroam Shenzhen in a related Chinese patent infringement lawsuit and who now represent Skyroam Shenzhen in the Chinese lawsuit. Defendants not only opposed disclosure but also requested that the district court impose sanctions for the unauthorized disclosure to King & Wood Mallesons.

The district court found it significant that SIMO admitted that it shared the uCloudlink confidential documents with four King & Wood Mallesons attorneys in late November 2018. The district court noted that paragraph 5(c) of the Protective Order prohibits disclosure of confidential discovery material except to court personnel, stenographers, “counsel retained specifically for this action,” and those “retained by a party to serve as an expert witness or otherwise provide specialized advice to counsel in connection with this action.” Continue reading

Published on:

by

After it prevailed on a motion for judgment on the pleadings, ShopperChoice argued that no reasonable patentee in the plaintiff’s position could have believed that Claim 11 of 261 patent covered patent eligible subject matter at the time suit was filed. ShopperChoice based its argument on the prior opinion of a California Federal District Court, which invalidated claims of patents in the ‘261 patent’s family based on the finding that they were directed to “the abstract idea of asking people, based on their location to go place[]s,” and implemented with only “‘generic computer[s]’” that did not transform the claims into patent eligible subject matter. McKinley, 2014 WL 4407592, at *11 (quoting Alice, 573 U.S. at 223, 134 S. Ct. 2347). ShopperChoice also noted that three years later, in True Grit, a sister court in the Central District of California cited McKinley as authority for invalidating Claim 11 of the ‘261 patent – the same patent and claim as that at issue in the instant suit — finding that this claim “suffers from the same type of obvious defect as the asserted claims in McKinley.” Continue reading

Published on:

by

As the district court, explained the “case present[ed] the Court with a disturbing and unfortunate situation. Puneet Chawla, Defendant Workspot, Inc.’s (“Workspot”) co-founder, former Chief Technology Officer (“CTO”), and former member of the Board of Directors, sent harassing and threatening email messages to executives of Plaintiff Citrix Systems Inc. (“Citrix”), and posted additional messages to intend sites. In connection with opposing Citrix’s motion for a preliminary injunction and temporary restraining order (“PI Motion”), Workspot then filed a declaration from Mr. Chawla, which contained knowingly false statements, including denials of Chawla’s harassing conduct. At a December 2018 hearing denying Citrix’s PI Motion, the Court imposed monetary sanctions on Workspot, which ultimately totaled $271,963. The Court also ordered limited, expedited discovery relating to the sanctionable conduct and authorized Citrix to move for additional sanctions after the completion of that discovery.”

Citrix then moved for additional sanctions, including additional monetary sanctions, jury instructions and the striking of Workspot’s equitable defenses. Although the district court denied the additional monetary sanctions and jury instructions, the district court did strike Workspot’s equitable defenses. Continue reading

Published on:

by

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