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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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The plaintiff sued over 500 defendants for patent infringement in multiple actions in the United States District Court for the Eastern District of Texas. The patent-at-issue claims a “‘software interface’ that may provide a ‘map of a selected geographic area’ such that ‘information which is associated with particular geographic locations,’ such as ‘good and services,’ ‘can be readily accessed.'” Eighty-one defendants in the various actions moved to stay the case pursuant to the “customer suit exception” to the first-to-file rule.

The moving defendants contended that their case should be stayed pending the outcome of a later filed declaratory judgment action brought by Microsoft and Google, among others, in the District of Delaware, because the declaratory judgment actions were manufacturer suits. The moving defendants contended that they merely license the relevant software from the manufacturers. Accordingly, the moving defendants contended a resolution of those lawsuits may resolve the cases against the licensees.
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In the continuing battle over the Android operating system, the United States District Court for the Northern District of California decided to appoint its own damage expert. The district court explained that under Fed.R.Evid. 706(a), the district court “may appoint expert witnesses of its own selection” and noted that the Supreme Court has long recognized the constitutionality of court-appointed experts. The district court also noted that the Federal Circuit and the Ninth Circuit have acknowledged and recognized that the district courts enjoy wide latitude in making such appointments.

After explaining the authority for the appointment of expert witnesses, the district court turned to why such an appointment was necessary in the ongoing battle between Google and Oracle. Stating that “[t]he damages aspect of this controversy is particularly involved,” the district court noted that “[t]he accused items are not entire products but rather elements of products, whose roles and relative importance within the larger units are disputed.” The parties also further complicated the damage analysis by using elaborate nontraditional business models for distributing and monetizing the relevant products. “For example, Google allegedly distributes its accused Android software free of charge, hoping to later benefit from improved market position and advertising revenue generated by Google searches on Android devices. Oracle, for its part, claims to have been harmed by the supposed fragmentation of its Java platform and developer community due to Google’s allegedly selective use of Java elements in Android.”
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In December 2004 and early in 2005, the plaintiff filed three patent infringement actions against several parties. The district court consolidated the cases. All of the consolidated cases were stayed by the district court pending reexamination by the Patent and Trademark Office (“PTO”). Many years later, the Board of Patent Appeals and Interferences (“BPAI”) upheld the validity of two of the patents. As a result, the plaintiff moved to lift the stay of the consolidated actions. Defendants opposed the lifting of the stay.
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In this patent infringement action, the defendant moved to exclude plaintiff’s expert witness on the basis that the expert was not disclosed on a timely basis. The plaintiff disclosed the witness on November 4, 2011, as an expert to testify as to “the molecular weigh characterization of polymers” in a claim construction hearing scheduled for November 9, 2011. The deadline for identifying witnesses to give testimony relevant to claim construction expired in July 2011.

In analyzing whether there was surprise as to the expert testimony, the district court began by noting that “[t]o name a witness so far beyond the deadline set by the scheduling order would require a strong justification.” The district court found that “[t]he issue of how molecular weight of a polymer should be measured was clearly identified as an issue for claim construction in the parties’ joint claim construction statement.” From this joint claim construction statement, the district court determined that it was established that plaintiff had notice of “differences as to how the molecular weight of a polymer was measured well before July 29, 2011.” The district court also noted that plaintiff did not suggest otherwise.
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In the wake of the new restrictions on joinder of multiple defendants after the enactment of the America Invents Act, a number of plaintiffs have still attempted to join multiple defendants in a single lawsuit. One tactic used by plaintiffs is to file suit against several customers of a supplier along with the supplier of the accused product. This type of lawsuit establishes a close connection between the defendants in that the accused product is the same across all the defendants, which likely is a permissible joinder under the new standards set forth in the America Invents Act.

Nonetheless, this new tactic is having limited success. In a recent patent infringement action in the United States District Court for the Northern District of Illinois, the plaintiff sued several customers and the supplier of an accused product. The defendants moved to sever the customer defendants from the supplier defendant and to stay the action against the customer defendant. The supplier defendant also moved to transfer the severed action against it to the Northern District of California where it was based. It also asserted that transfer was appropriate because the plaintiff was based in Southern California, much closer to the Northern District of California than the Northern District of Illinois.
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In December 2010, Indacon, Inc. (“Indacon”) sued Facebook, Inc. (“Facebook”) for patent infringement for two patents that pertain to a system for data acquisition and perusal. The plaintiff filed a Markman brief and Facebook filed an inter partes request for reexamination. Facebook then filed a motion to stay the case pending the outcome of the reexamination.

Facebook asserted that the stay was necessary because it filed the inter partes reexamination based on recent briefing by Indacon. Facebook claimed it had filed the reexamination request based on the Markman briefing filed by Indacon, asserting that it had three invalidating prior art references that were not before the PTO. Based on the reexamination filing, Facebook argued that the district court should temporarily stay the litigation because discovery “is far from complete and a trial date has not been set” and the stay would not unduly prejudice the plaintiff.
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In a patent infringement action pending in the United States District Court for the District of Colorado, one of the defendants, Hewlett-Packard (“HP”) moved for a protective order with respect to the designation of one of plaintiff’s experts. Plaintiff contended that HP infringed certain patents held by plaintiff by making and selling products that use multiple condition code registers, such as printers. HP contended that the accused products often incorporate or integrate third party technology or components and therefore HP had in its possession, custody or control of third party confidential information in the form of documents and source code.

The plaintiff notified HP that its expert would inspect the source code. HP objected to the expert’s proposed source code inspection contending that it would not produce the source code unless there was protection for third-party confidential information. HP also demanded that the expert agree not to work for non-practicing entities and not to perform work adverse to HP for several years after trial of the case. “HP asks the Court to add provisions to the Amended Protective Order that require [plaintiff’s expert] to attest that he is not working for any entity in a capacity of reviewing patens or products, services, or targets for non-practicing entities, other than as a result of this litigation, and that he will not do so for four years after trial of this lawsuit” HP also sought to preclude the expert from working on the prosecution of any patent directed or related to the field of computer processor architecture for a period of four years following trial and not to perform any work adverse to HP for a period of three years following trial.
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Sandisk Corp. (“Sandisk”) filed a patent infringement action against Kingston Technology Co., Inc. (“Kingston”). Prior to trial, Sandisk moved to exclude defendant’s expert witness on damages because the expert’s methodology was unreliable and because the supplemental report contained untimely opinions.

In terms of reliability, Sandisk asserted that the expert used an incorrect legal standard for defining the relevant geographic market and the expert’s definition did not fit the facts of the case. The expert defined the market to include “all manufacturers, regardless of where located, with the legal right to sell flash memory products in the United States.” Plaintiff asserted that this was the wrong market because the expert defined the market in terms of the location of sales instead of by the region where consumers are able and willing to purchase substitutes. The district court disagreed, finding that “[c]ontrary to plaintiff’s assertions, this definition does not exclude foreign competitors who may divert products into the United States or competitors without a license from plaintiff.”
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