Articles Posted in District Courts

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In this patent infringement action, the plaintiff, Stuebing Automatic Machine Co. (“Stuebing”) filed a motion for violation of multiple discovery orders against the defendant. As part of the motion, Stuebing sought issue sanctions, including to have certain sales information deemed established. had previously served multiple discovery requests, including interrogatories and document requests. Over a year after responses to the discovery requests were due, the district court ordered the defendant to fully respond to the requests in several different court orders. Despite these orders, the defendant provided Stuebing with incomplete discovery information.

In analyzing the motion, the district court explained that “[a] party becomes vulnerable to sanctions upon the party’s failure to comply with a court’s discovery order. See U.S. v. $49,000 Currency, 330 F.3d 371, 379 (5th Cir. 2003). “A court has broad discretion to determine an appropriate sanction under [Federal Rule of Civil Procedure (hereafter “FRCP”)] 37(b), […] which may include an order directing that certain designated facts be taken as true.” Bradt v. Corriette, No. 16-CV-805-LY, 2018 WL 1866112, at *2 (W.D. Tex. April 18, 2018) (citing Pressey v. Patterson, 898 F.2d 1018, 1021 (5th Cir. 1990)). FRCP 37(b)(2) authorizes the imposition of a “concurrent sanction of reasonable expenses, including attorney’s fees, caused by the failure obey a discovery order.” Smith & Fuller, P.A. v. Cooper Tire & Rubber Co., 685 F.3d 486, 488 (5th Cir. 2012).”

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The plaintiff, Bayer, moved to exclude the opinion of the defendant’s damage expert, Dr. Rausser, for failing to show that the licenses that he used for his reasonable royalty analysis were technologically or economically comparable to the license resulting from the hypothetical negotiation.  The district court agreed with Bayer on the economically comparable point and granted the motion to exclude on that basis. explained by the district court, Bayer asserted that the license resulting from the hypothetical negotiation would be a non-exclusive, running royalty license between competitors, and of Dr. Rausser’s four selected licenses, only one was a non-exclusive license, two were between competitors, and none of them used a running royalty.

The district court stated that the strongest argument by Bayer “relates to Dr. Rausser’s use of lump-sum licenses to support a running royalty hypothetical license. ‘Significant differences exist between a running royalty license and a lump-sum license.’ Lucent, 590 F.3d at 1326. A lump-sum license can still be relevant to running royalty damages, but “some basis for comparison” must exist. See id. at 1330. Defendants argue that Lucent is inapposite because here, unlike in Lucent, the parties agree that damages should be in the form of a running royalty. Defendants further argue that, “while it may be difficult to determine a lump sum from a running royalty,” as shown in Lucent, “the opposite is not true.”

Published on: the ongoing litigation war between Qualcomm and Apple, spanning multiple forums around the country, Qualcomm moved to exclude Apple’s technical experts’ reliance on certain license agreements by asserting that the agreement involved technology that was not sufficiently comparable.  After reviewing the license agreements, the experts’ opinions, and the law, the district court concluded that Qualcomm’s motion should be granted.

After reviewing the license agreements at issue (which have been redacted as confidential), the district court explained that “the first question is whether Apple’s technical experts have shown that any patents underlying these License Agreements are technologically comparable to the at issue here. The Federal Circuit has cautioned “that ‘district courts performing reasonable royalty calculations [must] exercise vigilance when considering past licenses to technologies other than the patent in suit,’ and ‘must account for differences in the technologies and economic circumstances of the contracting parties[.]’” VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1330 (Fed. Cir. 2014) (citations omitted). “When relying on licenses to prove a reasonable royalty, alleging a loose or vague comparability between different technologies or licenses does not suffice.” LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 79 (Fed. Cir. 2012).

The district court then explained that “Apple’s experts have gone through the License Agreements and found at least one patent from each Agreement that they believe is technologically comparable to the patents in suit. Qualcomm’s motion goes directly to those opinions, and asserts they are conclusory and do not meet the standard for technological comparability.”

Published on: a patent infringement action, Takeda Pharmaceuticals America, Inc., and Takeda Pharmaceuticals U.S.A., Inc.’s (collectively, “Takeda”) filed a motion to disqualify Baker Botts, L.L.P. (“Baker Botts”) from representing Defendants Zydus Pharmaceuticals (USA) Inc. and Cadila Healthcare Limited (collectively, “Zydus”). Takeda moved to disqualify Baker Botts from representing Zydus based on Baker Botts’ alleged previous representation of Ethypharm S.A. (“Ethypharm”) in earlier litigation involving Takeda’s Prevacid® SolutabTM product.

Takeda asserted that the law firm should be disqualified from representing Zydus based on a Common Interest & Confidentiality Agreement (the “Agreement”) Ethypharm entered into with Takeda and TAP Pharmaceutical Products Inc. (“TAP”) in the Delaware Action.

In this regard, Takeda claimed that the Agreement created an implied attorney-client relationship between Takeda and Baker Botts. As explained by the district court, Takeda argued that the current litigation was substantially related to the prior litigation involving Ethypharm, arguing that even though the patent infringement claims were dismissed, leaving only Zydus’ antitrust counterclaims, the matters remained substantially related because the critical issue in deciding Zydus’ antitrust counterclaims is whether Takeda’s assertion of the dismissed patent claims was objectively baseless. Takeda also contended that facts and theories from the prior litigation, including arguments concerning commercial success were relevant and long-felt because, in order to succeed on its antitrust counterclaims, Zydus must establish a monopoly, and, consequently, Zydus has sought discovery on Takeda’s sale and marketing of Prevacid® SoluTab.TM

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National Products, Inc. (“NPI”) filed a patent infringement action Akron Resources, Inc. (“Akron”), among others.  The parties filed several cross motions for summary judgment, including a motion for summary judgment based on the failure to mark.

As explained by the district court, the parties did not dispute that:

“1) NPI sells products that practice the ’212 Patent;

Published on: this patent infringement action, the plaintiff, Whirlpool Properties (“Whirlpool”) noticed several depositions of third-party witnesses near the discovery cut-off.  The defendant, Filters Fast, moved for an order to stop the depositions.

As explained by the district court, “[t]he crux of the pending motion is that the Whirlpool Plaintiffs emailed Defendant on November 28, 2018, the dispositive motions deadline, attaching two third-party deposition subpoenas that noticed depositions for December 6 in Windsor, Va. and December 7 in Simpsonville, S.C.  Defendant contends that Plaintiffs had never identified these potential witnesses, nor even disclosed the possibility of deposing them.  Moreover, Defendant notes that these newly noticed depositions overlapped with already scheduled depositions of Whirlpool witnesses to be held in Chicago, Il. on December 5, 7, and 11. According to Defendant, Whirlpool Plaintiffs then emailed a notice on December 2, regarding a third third-party witness it intended to depose in Texas on December 11 or 12.”

In opposition, Whirlpool asserted that witnesses in question “were disclosed within three days of confirming them for depositions.”  Whirlpool argued that the notice of depositions in dispute here was “reasonable under the circumstances.” ((citing Fed.R.Civ.P. 30(b)(1)).  Whirlpool further argued that the third-party depositions could have been conducted by the parties’ stipulated extension of the discovery deadline – December 12, 2018. Whirlpool also contended that the depositions address non-complicated issues that would require minimal preparation.

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After that analysis, the district court determined that it would join the majority of “district courts in the Ninth Circuit in finding that allegations of knowledge alone are not sufficient to state a claim for willful infringement. See XpertUniverse, Inc. v. Cisco Sys., Inc., No. 17-cv-03848-RS, 2017 WL 4551519, at *6 (N.D. Cal. Oct. 11, 2017) (“Although [plaintiff] has alleged knowledge and continued infringement, it needs to do more to show that [defendant] has engaged in ‘egregious cases of misconduct beyond typical infringement’ that could possibly warrant enhanced damages.” (quoting Halo, 136 S. Ct. at 1935)); Cont’l Circuits, 2017 WL 2651709, at *8 (“The Court continues to conclude that willfulness must be pled, and that allegations of knowledge alone are insufficient.”); Finjan, Inc. v. Cisco Sys. Inc., No. 17-cv-00072-BLF, 2017 WL 2462423, at *5 (N.D. Cal. June 7, 2017) (“[E]ven if [plaintiff] had adequately alleged that [defendant] had pre-suit knowledge of the Asserted Patents, dismissal would also be warranted because the FAC does not contain sufficient factual allegations to make it plausible that [defendant] engaged in ‘egregious’ conduct that would warrant enhanced damages under Halo.”).

Following that reasoning, the district court reviewed DSS’ allegations and found that they were insufficient to state a claim for willful infringement. “The Court finds that DSS’s allegations are not sufficient to state a claim for willful infringement of the patents-in-suit. Although, DSS has alleged knowledge and continued infringement, it has failed to allege facts suggesting that Lite-On’s conduct amounts to an “egregious case[] of misconduct beyond typical infringement.” Halo, 136 S. Ct. at 1935. “Disagreement about the existence of continued infringement does not necessarily indicate willful or deliberate misconduct.” XpertUniverse, 2017 WL 4551519, at *6. Thus, without more, the facts as alleged do not support a plausible inference that Lite-On’s conduct warrants enhanced damages under Halo and § 284.”

As a result, the district court granted Lite-On’s motion to dismiss the claims of willful infringement.

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In this patent infringement action, Plaintiff Wright’s Well Control Services, LLC (WWCS) filed a motion to voluntarily dismiss defendant Christopher Mancini pursuant to Federal Rule of Civil Procedure 41(a)(2) with prejudice, but with a “reservation of all rights and actions against co-defendant Oceaneering International, Inc., and any other parties and solidary obligors.”

Defendant Mancini opposed the reservation of rights against unnamed third parties. Mancini also moved for summary judgment on plaintiff’s claims, and WWCS filed a moved for an extension of time to respond to Mancini’s motion for summary judgment.

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Defendant Baker Hughes Incorporated (“Baker Hughes”) filed five inter partes review (“IPR”) proceedings before the Patent Trial and Appeal Board (“PTAB”) asserting that the plaintiff Lubrizol’s patents were invalid because of obviousness. Baker Hughes and a third-party, Flowchem LLC (“Flowchem”) had previously produced documents in the underlying case that they designated “Confidential” or “Highly Confidential” under the district court’s Protective Order.

Lubrizol asserted that the confidential documents would refute Baker Hughes’s obviousness argument in the IPR proceedings and sought a modification of the district court’s Protective Order to allow Lubrizol to use the confidential documents in the IPR proceedings. In particular, Lubrizol asserted that the Baker Hughes documents would reveal evidence of copying, which would refute any contention that the patents were obvious.
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In this patent infringement action, MMEI, owns U.S. patent 6,234,099 (“the ‘099 patent”). Fineline Industries, Inc. (“Fineline Inc.”) entered into a license agreement with MMEI that permitted Fineline Inc. to use the ‘099 patent for its products for the payment of royalties The agreement also provided that any change of majority control in Fineline Inc. had to be agreed to by MMEI in writing. Fineline Inc. converted into a Florida LLC–Defendant Fineline LLC. Fineline LLC continued to use the 2010 license agreement as a successor to Fineline Inc when . MMEI terminated the 2010 license agreement, arguing that Fineline Inc. had breached the license agreement.

On the same day that MMEI filed the patent infringement action, MMEI filed a lawsuit in state court against Fineline Inc. and Fineline LLC for, among other things, breach of contract and breach of the covenant of good faith and fair dealing, including that Fineline LLC was an “unauthorized successor” to the license agreement.
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