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In this patent infringement action, the parties filed a joint motion for a stipulated protective order where they agreed that they could designate certain documents and information produced in the case as “Confidential” or “Highly Confidential – Trial Counsels’ Eyes Only.” The protective order also provided that the confidential information could only be used for the action. The plaintiff, Static Media, designed certain testimony and exhibits from various deposition as Confidential or Highly Confidential, particularly pertaining to a licensing and royalty agreement and Static Media’s sales and revenue information.

The inventory of the patent-in-suit subsequently sent a letter to OJ Commerce alleging infringement of the patent-in-suit. Counsel for OJ Commerce then contacted the counsel for Leader regarding the pending action Static Media had filed against Leader. Leader and OJ Commerce then decided to enter into a joint defense group (“JDG”) where they agreed to work like a group of mutually retained outside counsel for the purpose of common defense and to work together to promote a common joint interest.

After Static Media filed suit against OJ Commerce in the Southern District of Florida, Leader and OJ Commerce executed a joint defense agreement (“JDA”) and Leader’s counsel shared Static Media’s confidential information with counsel for OJ Commerce pursuant to the JDA.

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In this patent infringement action, Apple filed a motion to dismiss Maxell’s induced infringement claims. In the motion, Apple asserted that the complaint did not plausibly allege Apple had “specific intent” to induce infringement, arguing that the complaint only cited broadly to Apple’s website and user manuals, without alleging how the instructions directed Apple’s customers to use the accused products in an infringing manner.

The district court stated that Apple incorrectly asserted that the complaint includes “nothing more than citations to Apple’s user guides and websites . . . .” To the contrary, the district court found that Maxell alleged significantly more. “The complaint sets out detailed allegations of direct infringement, identifying the accused functionalities and accused devices for each patent. The complaint further includes screen-shots and descriptions of Apple’s online user manuals and advertisements, which the complaint alleges contain ‘descriptions and demonstrations’ of the accused functionalities. Some of the pictured webpages appear to contain directions for customers to use the accused functionalities. … The complaint further alleges that Apple’s customers directly infringe the patents by using the accused products in accordance with Apple’s instructions and that Apple provides customers instructions on how to infringe the patents with its user manuals and websites.”
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In this patent infringement action, Plaintiff Total Rebuild (“Total”) asserted that Defendant PHC (“PHC”) infringed claims of United States Patent No. 8,146,428 (“the ’428 Patent”), which is directed to systems and methods for safely testing devices and components under high-pressure. The district court conducted a bench trial on inequitable conduct and concluded that the patent was invalid for several reasons.

First, the district court noted that the inventor, Mr. Lavergne, had a duty to disclose material information to the United States Patent and Trademark Office (“USPTO”). The district concluded that material prior art had been withheld because certain devices had been offered for sale prior to the August 8, 2007, which was one year prior to the earliest application (the “Critical Date”). The district court explained that: “Here, the Cameron MTSs, Haliburton MTS, and Superior MTS were prior art under 35 U.S.C. § 102(b) because it was an offer for sale, sale, or public use by Total, Cameron, Haliburton, or Superior of a pressure testing system prior to the Critical Date. Furthermore, the offer for sale, sale, or public use of the Cameron MTSs, Haliburton MTS, and Superior MTS was material to the patentability of the ’428 Patent because claim 1 and claim 16 would not have issued had the sale been disclosed to the USPTO. This is especially true in view of the broadest reasonable interpretation and preponderance of the evidence standards that apply to the materiality prong of claims for inequitable conduct.”

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HTC filed a motion to dismiss Motiva’s claim for willful infringement. HTC asserted that Motiva has failed to adequately allege that HTC had knowledge of the patents-in-suit. HTC also argued that Motiva’s factual allegations of willful blindness are insufficiently specific and otherwise “unsupported” as an evidentiary matter to state a claim for willful infringement.

In analyzing the motion to dismiss, the district court noted that Motiva did not allege actual knowledge for the pre-suit period, but also explained that Motiva was not required to do so as willful blindness could supply the requisite knowledge. Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1347 (Fed. Cir. 2016) (recognizing that the Supreme Court has repeatedly held that willful blindness can supply the requisite knowledge for indirect infringement) (citing Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1926 (2015); see also Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011).

Accordingly, the district court looked at whether the allegations of willful blindness were pleaded sufficiently. The district court examined two of the factual allegations pleaded by Motiva and found that either were sufficient to satisfy the plausibility standard under the Supreme Court’s decision in Twombly. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007).

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In this patent infringement action, the Plaintiff moved to exclude the defendant’s expert, Mr. Carmichael, arguing that his testimony should be stricken because Mr. Carmichael “improperly opines on what he believes a PTO examiner would have done in a specific situation had he or she had additional information Carmichael had been provided.” In making its motion, the Plaintiff asserted that Mr. Carmichael’s report and testimony constitute “retroactive mind-reading of the thoughts of patent examiners.” Barry v. Medtronic, Inc., No. 1:14-cv-104, 2016 U.S. Dist. LEXIS 104118, *6-7 (E.D. Tex. July 19, 2016).

As an example, the Plaintiff pointed out that Mr. Carmichael intended to testify that the patent-in-suit would not have “issued as it did if the PTO had been aware of those prior installations and systems” and “if Mr. Squier had disclosed [information he allegedly withheld] the PTO would not have revived the patent and would have viewed the certification as unmistakably false.”

In response, Defendants contended that the Plaintiff mischaracterized Mr. Carmichael’s opinions, asserting that Mr. Carmichael’s report and testimony would assist the trier of fact in determining whether “from the perspective of a reasonable PTO examiner — the omitted information rises to the level of but-for materiality” and that Mr. “Carmichael’s opinion is not speculative but based upon his deep understanding of, and long experience with, PTO practice and procedure.”
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Diamondback is the assignee and owner of U.S. Patent No. 9,810,035, entitled “Disposable Setting Tool” (the ‘035 Patent). Diamondback has been selling its patented setting tools and those setting tools practice and embody one or more claims of the ’035 Patent. Repeat Precision approached Diamondback about obtaining a license to the ’035 Patent, and ultimately Diamondback and Repeat Precision entered in to a Patent License Agreement (“Patent License”).

Diamondback filed a motion to dismiss Repeat Precision’s patent infringement claim for lack of subject matter jurisdiction based on the Patent License, asserting that the license grant in the Patent License was restricted and carved out Diamondback’s sales of its patented setting tools.

As explained by the district court, Diamondback’s sales of its patented setting tools began in 2017, and Diamondback contended that those sales continued without objection and with Repeat Precision’s knowledge after the parties executed the Patent License. Diamondback contended that it already had patented setting tools in inventory and that it fully intended to continue selling those tools, and that Repeat Precision was aware of these intentions. Diamondback also contended that Repeat Precision never suggested that Diamondback should discontinue its sales or otherwise destroy its existing inventory. Diamondback also argued that Repeat Precision failed to provide the “prompt written notice” of any alleged patent infringement that was required under the Patent License and that it continued to continue to make sales with the implied consent of Repeat Precision. Continue reading

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Acceleration Bay LLC (“Acceleration”) filed a patent infringement suit against Activision Blizzard Inc. (“Activision”) alleging that versions of its popular video games, World of Warcraft, Call of Duty, and Destiny infringed certain of its patents. The trial in the action was postponed when it was not clear as to whether Acceleration had a viable, admissible damage theory.

After the district court permitted the plaintiff to submit a new damage report, the plaintiff submitted a new report from a new damage expert. Activision moved to exclude the new damage report on several grounds and Acceleration also moved to exclude Activision’s damage expert as well. In addition to excluding Acceleration’s damage expert report in several respects, the district court also excluded certain aspects of Activision’s damage expert.

With respect to Activision’s expert, the district court noted that “Ms. Lawton’s assumption of non-infringement of earlier versions of the accused products is baseless and must be excluded.” Activision argued that Ms. Lawton did not opine on non-infringing alternatives but instead assumed non-infringement based on Acceleration not pursuing infringement claims prior to 2012. The district court found this explanation unavailing.

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In this patent infringement action, Plaintiffs Brian Horowitz and Creative Outdoor Distributors USA Inc. (the “Plaintiffs”) filed a motion for sanctions against Defendant Yishun Chen (“Yishun”) and his counsel, David Lin (“Lin”) for alleged misconduct that took place during the depositions of defendants. The court had previously granted a motion to compel a further deposition, noting “that Lin and Yishun left the room while questions were pending, Lin improperly instructed Yishun not to answer questions, Lin made frequent speaking objections to coach Yishun, and that Lin was disrespectful and personally attacked opposing counsel.”

The court ordered the video transcripts filed so that it could review the depositions for itself. After reviewing the transcripts, the court determined that there were several instances of inappropriate behavior by the Defendants and their counsel. For example, the court explained that:

The court also found that an off-the-record conference between the attorney and Yishun was also troubling. The Court explained as follows: “Gibby asked Yishun when he gave Defendant Kevin Xia the right to protect his patents, to which Yishun replied, “2016, the end of the year, or perhaps it was at the beginning of 2015 when I first started working with him.” Gibby asked, “So, either the end of 2015 or the beginning of 2016,” prompting Lin to object, “I don’t think that’s what he said. I think he said the end of the year, 2016,” and Yishun to answer, “That’s what I remember.” Gibby then asked, “When you gave Kevin the right to protect your patents at the end of 2015 or the beginning of 2016, did you put the right for him to do that in writing at that time?” Lin objected, “I think that misstates his prior testimony. His prior testimony, I believe he said,” causing Gibby to protest that Lin was coaching. Continue reading

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Plaintiffs, Ubisoft Entertainment, S.A. and Ubisoft, Inc. (collectively, “Ubisoft”) are developers and publishers of the video game Rocksmith and own patent no. 9,839,852 (“the ‘852 patent”), which is entitled “interactive guitar game.” Ubisoft filed a complaint against the defendant, Yousician, a software provider for learning to play musical instruments, for direct, induced, and contributory infringement in violation of 35 U.S.C. § 271. Yousician moved to dismiss the complaint on the grounds that the patent is directed to an abstract idea that does not cover patentable subject matter under 35 U.S.C. § 101.

Ubisoft responded to the motion by asserting that the patent’s claims of “assessing a user’s performance for improvement and selectively changing the difficulty level of a song based on that performance, as claimed in the ‘852 patent, is an improvement on the prior art that utilizes computer programming to receive and assess audio signals from a guitar and selectively change the difficulty level to be played by the user and/or generate a different game targeted to improve the user’s skills based on the user’s performance.”

The district court first discussed the relevant standard under the Supreme Court’s Alice decision, which delineates a two-step process for “distinguishing patents that claim of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd., v. CLS Bank Int’l, 134 S. Ct. 2347, 2354-55. The first step requires the court to determine whether the patent claims at issue are directed toward an abstract idea. Id. If the court concludes the claims are directed to an abstract idea, it proceeds to the second step. Id. At the second step, the court determines whether the patent contains an “inventive concept”– that is, whether there exists “an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Id. (internal quotations omitted). Continue reading

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Earlier this month, I participated in a roundtable discussion, hosted by Financier Worldwide, on the topic of “Resolving Patent Disputes.” The roundtable participants comprised seven experienced patent lawyers, and we each responded to the questions below.

  • In your opinion, what have been the key trends and developments shaping patent disputes over the last 12 months or so?
  • To what extent have you observed an increase in the number of patent disputes in today’s business world? What are the most common causes of conflict?
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