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The plaintiff filed a lawsuit against five companies in the United States District Court for the District of Delaware for patent infringement. All five companies moved to transfer the case to the Northern District of California because none of the defendants had their headquarters in Delaware and they argued it would be more convenient for the witnesses if the case proceeded in the Northern District of California. The district court denied the motion.

The district court began its analysis by noting that the various defendants were incorporated in Delaware and several had their principal place of business in California.. It also noted that the plaintiff was incorporated in Delaware and had its principal place of business in Connecticut.
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In a recent decision from the Eastern District of Texas, the court allowed the testimony of an expert witness on the entire market value theory even though the expert did not provide evidence of consumer demand. The court found that the expert could use the entire market value theory of the accused products in calculating the reasonable royalty because it was economically justified.

The court began by noting that the “entire market value rule” allows for the recovery of damages based on the value of an entire apparatus containing several features, when the feature patented constitutes the basis for the customer demand. Defendants moved to exclude plaintiff’s expert on the ground that the patented feature of the accused product had not been shown to provide the basis for consumer demand. The defendants also argued that it was largely undisputed that, in fact, the patented feature did not provide the basis for the consumer demand of the accused product. The plaintiff argued that the expert was justified in calculating a reasonable royalty based on the entire market value of the accused products as that is the industry standard and because nearly every comparable license in the case was based upon a percentage of the total accused product (or licensed product) sales price.
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Failing to act and follow up on cease and desist letters against potential infringers of a patent may preclude enforcement of the patent. This is particularly true when the patent owner does not begin litigation or execute a license for the patent and, during the intervening time, the potential infringer takes action to build its business in reliance on the patent owners failure to act. These issues were addressed by the Federal Circuit in a recent decision, Aspex Eyewear Inc v. Clariti Eyewear, Inc., 605 F.3d 1305 (Fed. Cir. 2010).

For further details, see a discussion of Aspex.

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In the first district court case applying the Federal Circuit’s new standard for proving inequitable conduct, the United States District Court for the Eastern District of Texas concluded that defendants had failed to prove by clear and convincing evidence that the patents-in-suit were unenforceable due to inequitable conduct.

The case was tried to a jury and the jury returned a verdict finding, among other things, that the asserted claims were invalid. After that finding, the defendants filed a motion arguing that the first inventor committed fraud on the Patent Office by withholding material prior art with an intent to deceive.
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In a case from the Eastern District of Texas, the district court granted an emergency motion to compel pertaining to source code contained on a stand-alone computer. In the case, Hyundai had loaded its source code on a stand-alone computer and provided a standard text-editor (Notepad), a source code editor (Notepad ++) and a comparison tool (Beyond Compare) to facilitate plaintiff’s review of the source code. The plaintiff found that this was insufficient and requested that Hyundai provide integrated development environments to facilitate the review, arguing that the integrated development environment was required to mimic the operation of the source code. Hyundai refused and the emergency motion was filed.

In filing its emergency motion to compel, the plaintiff argued that because of the modular nature of the source code, the integrated development environments would allow its experts to follow various jumps between modules contained in separate files, which would replicate the behavior of the source code during execution. The plaintiff noted that the tools it wanted installed are free and the installation is “virtually effortless.”
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In a recent case from the United States District Court for the District of Delaware, the district court held that the defendant was not liable for patent infringement based on the doctrine of divided infringement. The district court based its ruling on the Federal Circuit’s decision in Centillion Data Sys., LLC v. Qwest Communications Int’l, Inc., 631 F.3d 1279 (Fed. Cir. 2011).

In Centillion, the Federal Circuit analyzed a patent that disclosed a system for collecting, processing, and delivering information from a service provider, such as a telephone company, to a customer. The Federal Circuit focused its decision on the word “use” — agreeing that “direct infringement by ‘use’ of a system claim ‘requires a party … to use each and every … element of a claimed [system.]” Id. at 1285. The Federal Circuit also stated that “to use’ a system for the purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.”
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The United States Supreme Court affirmed the use of the clear and convincing evidence standard for challenges to the validity of patents last week in a closely watched and eagerly anticipated case, i4i v. Microsoft. The Supreme Court’s opinion re-affirmed decades of case law that the standard to challenge the validity of a patent is clear and convincing evidence rather than the preponderance of the evidence standard urged by Microsoft.

The patent held by i4i claimed an improved method for editing computer documents. The patent was asserted against Microsoft Word and Microsoft countered that the patents were invalid and challenged the standard for determining the validity of a patent, arguing that it should be by a preponderance of the evidence rather than the existing clear and convincing standard currently used in patent cases.
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In a recent decision from the United States District Court for the District of Delaware, the district court considered defendant’s motion for summary judgment of invalidity. The plaintiff’s patent is directed to a computer program for developing a component based software for the insurance industry. The patent contained both method and system claims.

Defendant’s moved for summary judgment on the grounds that the patent was invalid under Bilski v. Kappos, 130 S. Ct. 3218 (2010), contending “that the claims of the [patents] contain abstract ideas and fail the machine or transformation test.” Defendant contended that the plaintiff’s patents failed the “machine” prong of the Bilski test because the claims only require aspects of a general purpose computer. In addition, the defendant contended that the transformation test also could not be met because the transfer of data regarding insurance cases from one electronic file to another does not transform physical objects to another state or thing. According to the defendant, all of the claims reflect field of use restrictions or insignificant post-solution activity and, therefore, constitute unpatentable abstract ideas under ยง 101.
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To have a valid patent, an inventor must disclose sufficient detail in the specification to enable the patent, often referred to as the enablement requirement. To fulfill the enablement requirement, an inventor must disclose enough detail in the patent to teach a person of ordinary skill in the art to make the invention without undue experimentation. But an inventor cannot rely on the argument that one of ordinary skill in the art can fill in missing details from the specification. Indeed, recent case law demonstrates that inventors cannot rely on the person of ordinary skill in the art to serve as a substitute for missing information in the specification of the patent.

The case of Alza Corp v. Andrx Pharamaceuticals LLC, 603 F.3d 935 (Fed Cir. 2010), addressed this exact issue. For more information, please see a discussion of Alza.

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In a patent case pending against Intel in the District of New Mexico, the plaintiff sought to compel the production of Intel’s future products that were under development. The litigation involved plaintiff’s claim that Intel infringed its patent for a process called “double patterning,” which is a process that allows for the manufacture of smaller, more powerful computer processor chips.

Plaintiff sought production from Intel of a certain size of Intel chips that were not yet sold to the public and that would not be marketed until after September 2012, a date which is after the plaintiff’s patent expires. Intel argue that the information was not relevant to a reasonable royalty calculation and production of the information would be overly burdensome because the processes were likely to change multiple times before the launch of the product.

The plaintiff argued that it was entitled to production of the information under the theory of “accelerated market entry” and that production of research and development documents would not be overly burdensome.
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