Articles Posted in C.D. California

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Defendant Farpointe Data (“Farpointe”) served invalidity contentions on HID Global that identified twenty-two prior art patents, as well as many devices and publications that Farpointe alleges constitute prior art. After the invalidity contentions were served, the parties exchanged claim construction positions and a claim construction hearing was held later in the year. The district court followed HID Global’s recommendation and declined to construe some of the claims presented by the parties, which Farpointe argued caused it to revisit the invalidity contentions. As a result, Farpointe sought to add four patents and two HID Global products to the invalidity contentions.

The district court noted that it was following the Local Patent Rules from the Northern District of California and under Patent Local Rule 3-6, a party may amend its preliminary contentions “only by order of the Court upon a timely showing of good cause.” The party seeking to amend its contentions bears the burden of establishing due diligence and must show “that it was diligent in moving to amendment of the invalidity contentions and diligent in discovering the basis for the proposed amendment.”
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Plaintiff Intertainer, Inc. brought an action for patent infringement against Defendant Hulu, LLC. Hulu moved to dismiss Intertainer’s first amended complaint pursuant to Fed.R.Civ.P. 12(b)(6). In the first amended complaint, Intertainer alleged infringement of a patent entitled, “Method for Interactive Video Contention Programming,” which according to the district court, “relates to a method of creating and streaming an interactive video stream permitting a user to view ancillary content, such as advertisements.”

Intertainer also alleged that the interactive video program includes an interface which when selected, displays ancillary material for the user and interrupts the running of the video and when the user returns to watching the video content, the video program resumes streaming from the point in time at which it was interrupted. Intertainer’s first amended complaint alleged that Hulu operated a website at www.hulu.com, which displays video content to users over the Internet and that the Hulu media player displays video content and video advertisements as well as advertising banners on its website.

Intertainer further alleged that users watching videos on the Hulu website can choose to view additional advertising content by clicking on the advertisement or the advertisement banner, which will then direct the user to another webpage displaying the advertisement content and will interrupt the streaming of the content from the web server. The video content can be resumed when the user returns to the Hulu website and clicks play. Intertainer contended that these steps directly infringed the patent-in-suit.
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Plaintiff filed a patent infringement action against several defendants. After the district court’s Markman decision, the parties filed cross-motions for summary judgment regarding patent infringement and the scope of damages. After denying the parties’ respective cross-motions for summary judgment, the district court addressed the defense motion for a limitation on damages due to plaintiff’s failure to properly mark his device.
The defendant argued that even if it did infringe the patent-in-suit, plaintiff would not be entitled to any damages for any infringement between the issuance of the patent and the filing of the complaint because plaintiff failed to mark his product with the patent number.

As the district court noted, “[a] patentee may only recover damages for patent infringement that occurs after the patentee provides notice to an accused infringer under 35 U.S.C. § 287(a).” Notice can be satisfied either by constructive notice or actual notice. Constructive notice is satisfied if the patentee marks the product consistently and continuously with the word patent or “pat.” and the patent number or, if the product cannot be marked, the product’s packaging can be marked. Actual notice is satisfied by an affirmative communication from the patentee regarding a specific charge of infringement by a specific accused product or device.
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Plaintiffs filed a lawsuit for patent infringement, unfair competition and breach of fiduciary duty against several defendants, including AIM Sports. Plaintiffs design, develop and distribute firearm related tools, accessories and sporting optics. Defendants and plaintiffs had a business relationship that permitted Defendants to access trade secret information that belonged to the plaintiffs, including trade secrets regarding manufacturing, product development and plaintiffs’ patented products. After the plaintiffs sued defendants for patent infringement and settled the lawsuit, plaintiffs discovered that defendants had formed a new company that continued to infringe the patent and violated the settlement agreement.

After both parties filed motions to compel the production of documents, the Magistrate Judge granted both motions in part and denied both motions in part. Plaintiffs’ motion with respect to two of the requests was denied because the defendants represented in declarations signed under penalty of perjury that they had no responsive documents. Plaintiffs then conducted fact witness depositions and alleged, after conducting these depositions, that defendants had withheld responsive documents and that declarations filed with the district court were false. At this point, the Magistrate Judge granted plaintiffs’ motion, ordered the production of the responsive documents and ordered defendants to file new declarations. When the defendants failed to produce the financial and design documents sought and filed no new declarations, the plaintiffs moved for monetary sanctions and evidentiary sanctions.
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A recent decision from the Central District of California held that a deposition of the author of source code, or similar engineers, cannot be withheld until the producing party, i.e., the party providing the witness, is satisfied that the pinpoint infringement contentions are sufficient. In so holding, the Court indicated that such a determination typically is fact-specific and that given the circumstances in this case the deposition was relevant and not an abuse of the discovery process.

In this instant case, the defendant took the position that until the plaintiff provided sufficient pinpoint citations to the source code, it would not permit the deposition of its principal systems architect over its source code. The defendant expressed its concern that, absent such pinpoint citations, the plaintiff would use the deposition as a “fishing expedition.” The plaintiff, on the other hand, argued that it could not supplement its infringement contentions to provide pinpoint citations to the source code until it took the deposition. Both sides supported their positions with expert testimony. Thus, the Court was faced with the proverbial “chicken and egg question.”
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The Federal Circuit’s en banc decision in Therasense v. Becton, Dickinson & Co., is having its intended effect of reigning in inequitable conduct claims. In a recent decision, Judge Otero of the United States District Court for the Central District of California granted summary judgment of no unenforceability on defendant’s inequitable conduct claim. Plaintiff U.S. Rubber Recycling, Inc. filed suit alleging, among other things, that Defendant Ecore International, Inc. fraudulently procured and wrongfully enforced its patent relating to rubber acoustical underlayment (insulating material for use with floor tile) in order to monopolize the market for such products. Specifically, the Plaintiff asserted that, “during the prosecution of the [patent], Defendant intentionally failed to disclose to the PTO material prior art that showed the claimed invention had been sold in the United States and described in printed publications more than one year prior to the [patent] application.” In its summary judgment motion, the Defendant alleges “that the issuance of the reissue patent demonstrates that the alleged prior art are not material as a matter of law” and that the “Plaintiff cannot raise an issue of genuine fact that the Defendant failed to disclose any reference with bad intent.”
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The United States District Court for the Central District of California denied a motion for partial summary judgment finding that certain means-plus-function limitations were sufficiently definite to survive a challenge to the patent’s validity. The plaintiff filed a patent infringement action against the defendant over a patent that relates to a computer mouse with a roller element for scrolling in computer application programs. The defendant argued that the patent was invalid because the patent includes means-plus-function limitations that do not identify corresponding structure in the specification.

In analyzing the definiteness of the means-plus-function limitations, the district court noted that construction of such a limitation is a two step process involving first determining the function of the term and second connecting that function to sufficient structure. The district court also stated that “[w]hen a function is implemented in software, identification of a general purpose computer, microchip, or software program will not suffice as description of its structure.”
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Plaintiff’s complaint alleged a single count for patent infringement, which asserted that the defendant infringes its patent through the use of an online dating website. The particular feature accused is called “QuickMatch,” which notifies two users who demonstrate mutual interest in each other. The patent is directed to a computerized method of notifying individuals of reciprocal interest that offers confidentiality and anonymity. The method described in the patent provides for confidentiality by allowing only the computer system to be aware of each user’s expressed interests until the computer determines that there is mutual interest.

The defendant moved to dismiss the complaint pursuant to Fed.R.Civ.P. 12(b)(6) for failure to state a claim upon which relief can be granted. The defendant based its argument on the United States Supreme Court’s recent decision in Bilski v. Kappos, 130 S.Ct. 3218 (2010). The defendant argued that the subject matter of the patent is an abstract idea not eligible for patent protection, asserting that the invention is the idea of having an intermediary determine whether two people (or other entities) may be interested in one another and, if so, introducing the two. Defendant also argued that the patent preempts a broad range of human activity including match-making, headhunting and silent auctions.
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Plaintiff filed a declaratory judgment action in California seeking to invalidate defendant’s patents and for a declaration that it did not infringe the patents. The defendant responded by filing a patent infringement lawsuit in Florida in the same court where it had previously filed and litigated a patent infringement matter on three of the four patents at issue in California against an unrelated party. In ruling on defendant’s motion to dismiss the declaratory judgment action, the district court sided with the defendant and dismissed the declaratory judgment action in California even though it was filed before the patent infringement action.

The defendant was a resident of Florida, who owned a patent portfolio pertaining to Ground Data Link (“GDL”) technology that collects flight performance data from aircraft and transmits that information wirelessly to ground-based systems. Defendant had licensed its technology to various companies and also had engaged in prior litigation over its patents in Florida, including proceeding through claim construction and obtaining a jury verdict of infringement of its valid patents.
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Recently, a Court in the Central District of California, applying the Patent Rules from the Northern District of California, held that the plaintiff failed to demonstrate the requisite good cause to amend its infringement contentions to add additional accused products. In particular, Plaintiff Kruse Technology Partnership (“Kruse”) sought to add new engines to its infringement contentions based on its recent testing of the engines. In denying Kruse’s motion for leave to amend its infringement contentions, the Court took issue with Kruse for failing to explain why it had not tested the accused engines before it filed its infringement contentions. In doing so, the Court held that “[m]erely stating the tests are expensive is insufficient,” particularly where Kruse was able to later acquire and test the engines at issue. The Court also noted that Kruse never did disclose the cost of the testing. The Court further rejected Kruse’s argument that any disruptions caused by its amended contentions were contemplated by the Patent Rules. The Court found that, while the Patent Rules allow for disruptions caused by timely amending infringement contentions, the disruptions resulting from Kruse’s proposed amendments were not contemplated because Kruse was not diligent in discovering the engines it now seeks to add, and thus its amendments were not justified. The Court found that Kruse’s failure to move to compel discovery on these engines was further evidence of Kruse’s lack of diligence.
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