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Google filed a motion to strike the revised damages expert report submitted by Oracle in their continuing battle over Android. In the second expert report, Oracle’s expert “estimated damages, from 2007 through 2011, to be $201.8 million for patent infringement, $823.9 million in unjust enrichment for copyright infringement (not deducting for expenses or apportionment), and $136.2 million in lost profits or $102.6 million in lost licensing fees for copyright infringement.” For the patent infringement matter, Oracle’s expert calculated damages using a hypothetical negotiation method beginning with a $100 million starting value that was based on real-world negotiations between the parties in 2006, then adjusted downward for patent apportionment, then adjusted upward for lost revenue that was expected from the licensing agreement.

Google moved to exclude the patent damages, among others, arguing that the damages cannot be based on a hypothetical lost license fee because Sun (Oracle’s predecessor) would never have licensed an incompatible version of Java to Google. The district court disagreed. The district court found that Oracle’s expert had “a non-speculative factual basis to value a license for an incompatible version of Java.” The district court found this appropriate because the analysis started with the real-world negotiations between Sun and Google for a compatible Java, and then adjusting that amount up to compensate for the incompatibility. “The amount of the upward adjustment was based on Sun’s own revenue projections for the value of compatibility. Dr. Cockburn’s calculation was based on real-world facts and not incurably speculative. Google fights the hypothetical by ignoring the legal requirement for a hypothetical negotiation that the licensing agreement must be reached as the result of a hypothetical meeting between the parties.”
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Plaintiffs filed a patent infringement action against National Semiconductor Corporation alleging that National Semiconductor’s WEBENCH tools infringed plaintiff’s’ patent. National Semiconductor filed an amended answer and counterclaim asserting, among other things, that plaintiffs patent was invalid due to inequitable conduct based on plaintiffs’ failure to disclose material information about WEBENCH and other third-party tools to the Patent and Trademark Office (“PTO”) during prosecution of the patent-in-suit.

National Semiconductor filed a motion to compel after, as it alleged, plaintiffs disclosed only certain privileged information that it considered helpful to its position during the deposition of individuals involved in the prosecution of the patent. Two of the inventors testified that they understood and complied with the duty of candor and one of the inventors testified that he relied on the advice of counsel. In addition, one of the prosecutors testified that he acted in good faith before the PTO. Other than disclosing this information, plaintiffs instructed the witnesses not to answer based on the attorney-client privilege, including, for example, whether one of the inventors provided patent counsel with documents such as prior art references.
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Plaintiff filed a patent infringement action in the Middle District of Florida. Defendants filed a motion to transfer the case to the Eastern District of California. Defendants emphasized in its transfer motion that the Eastern District of California was clearly more convenient than the Middle District of Florida. Ten months after the motion was filed, the Middle District of Florida concluded that the Eastern District of California was indeed a more convenient forum and therefore transfer was appropriate. “The Middle District of Florida emphasized that the transfer was necessary to promote the interests of justice, because the alleged acts of infringement and the uncontested evidence of record demonstrates that the vast majority of the activities relating to the alleged infringement took place and around the Eastern District of California.”

When the case arrived in the Eastern District of California, Plaintiff filed a motion to re-transfer the case back to the Middle District of Florida. Although the parties did not argue in the Middle District of Florida that the Eastern District of California lacked personal jurisdiction over certain of the defendants, the plaintiff now moved to retransfer the case because the Eastern District of California did not have personal jurisdiction over two of the defendants.
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Internet Machines LLC (“iMac”) filed a patent infringement action against Alienware Corporation and PLX Technology, Inc. (“PLX”) and several other defendants alleging infringement of two patents pertaining to PCI Express switches. With respect to PLX, iMac moved to compel the production of various sales documentation for all sales of the accused products regardless of whether the products shipped to the United States. PLX produced a sales summary and underlying documents for all PCI Express switches shipped to the United States. PLX declined to produce any additional documentation relating to those switches shipped to international markets.

The primary disagreement centered on whether PCI Express switches which were not shipped to the United States qualify as a “sale” under 35 U.S.C. ยง 271. iMac contended that all sales, whether shipped domestically or internationally, are still accepted by PLX in its Sunnyvale, California office and therefore count as domestic sales and are relevant for calculating damages.
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After ActiveVideo Networks, Inc. (“ActiveVideo”) prevailed on a patent infringement action against Verizon Communications, Inc. (“Verizon”) before a jury, ActiveVideo moved for a permanent injunction. ActiveVideo moved to enjoin Verizon’s further use of Verizon’s Video on Demand (“VOD”) services offered through its FiOS system. Verizon opposed the motion and also asked for a “sunset” provision in the event the district court deemed an injunction appropriate. Verizon also asked the district court to stay any injunction pending appeal.

After reviewing the requirements of a permanent injunction in a patent infringement matter with particular reference to the Supreme Court’s decision in eBay, Inc. v. MercExchange, L.L.C. , 547 U.S. 388 (2006), the district court turned to analyzing the traditional four-factor test for determining whether an injunction was appropriate in this case.
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Spine Solutions, Inc. (“SSI”) sued Medtronic Sofamor Danek (“Medtronic”) for patent infringement alleging that three of Medtronic’s artificial disc implants infringed an SSI patent. The case proceeded to trial and the jury awarded $5.7 million in lost profits and an 18 percent royalty on the other infringing sales. The jury also determined that the infringement was willful.

Following the jury verdict, the district court doubled the damages and awarded attorneys’ fees against Medtronic. The district court also entered a permanent injunction. On appeal, the Federal Circuit reversed the decision in part, vacated in part and affirmed in part. With respect to the finding of lost profits, the Federal Circuit determined that lost profits were unavailable due to lack of standing. It also reversed a finding of the district court that one of the Medtronic products (the O-Mav) infringed the patent-in-suit and directed that the district court enter a finding of non-infringement with respect to that product. The Federal Circuit also reversed the willfulness finding and the injunction due to certain extraterritorial restrictions in the injunction. On remand, the Federal Circuit directed that, among other things, the district court determine the proper reasonable royalty to which SSI might be entitled on the infringing sales for which the jury awarded lost profits.
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In the ongoing action between Apple and Samsung, Apple filed a motion for a protective order seeking to prohibit one of Samsung’s attorneys from participating in any further depositions. Alternatively, Apple sought an order restricting the attorney from engaging in particularly abusive deposition acts, including belligerent and insulting treatment of witnesses, repeated interruptions, unilaterally terminating a deposition, uncivil treatment of opposing counsel, engaging in lengthy colloquy on the record, among other things.

Samsung objected to the order and denied that any in appropriate conduct had occurred at all Samsung also noted that Apple’s witnesses were Apple’s patent lawyers and agents who are accustomed to the adversarial process.
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In a case pending in the United States District Court for the Eastern District of Texas, the district court entered an order that leave of court must be obtained before a summary judgment motion may be filed. Defendant filed a letter brief with the district court seeking leave to file a motion for summary judgment of invalidity based on indefiniteness.

The letter brief asserted that the claims in the patent-in-suit were indefinite based on the Federal Circuit’s decision in Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005). In Datamize, the Federal Circuit affirmed a summary judgment in favor of a competitor on the basis that the claims that disclosed a software program which allowed people to author user interfaces for electronic kiosks were indefinite. The Federal Circuit focused on the patent’s use of the term “aesthetically pleasing” and whether that term met the standard for definiteness. The Federal Circuit found that definition of “aesthetically pleasing” could not depend on an undefined standard and that the definition could not be based on subjective opinion.
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Oracle served an opening damages expert report in May 2011 and it did not serve any other opening damages expert reports. Google challenged the expert report with a Daubert motion, which the district court granted in July 2011.

In the order granting the Daubert motion, the district court allowed Oracle an opportunity to cure the defects in the expert report. During a case management conference a month later, Oracle stated that it might present a second, additional damages expert. Oracle served a revised opening damages expert report in September 2011 from the same expert that it had used to prepare the May 2011 report. It did not submit an additional expert report on damages at that time.
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In the ongoing trial over damages for several Microsoft products between Lucent and Microsoft, the United States District Court for the Southern District of California has reduced the damage award against Microsoft from $70 million to $26.3 million, plus prejudgment interest. The new trial on damages occurred after the Federal Circuit affirmed a jury’s finding that the so-called Day patent was valid and infringed but reversed the jury’s determination of damages. The Day patent claims a date-picker feature in the calendar function of Outlook, one of just many uses for Microsoft’s popular Outlook program. The Federal Circuit remanded the case for a new trial on damages to determine an appropriate royalty based on one feature of Outlook.

After the jury returned a verdict of $70 million, the district court addressed whether the amount should be reduced on post-trial motions. Before addressing that issue, the district court noted that “[t]his case illustrates the difficulty of properly valuing a small patented component, without a stand-alone market, within a larger program.” Lucent’s damage calculation was based on a lump-sum license in the form of an upfront, paid-in-full royalty. The royalty calculation is particularly difficult in this case because the date-picker feature is just one among many Outlook features and Outlook, although sold separately, is much more commonly purchased as part of the suite of products found in Microsoft Office.
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