Articles Posted in District Courts

After the parties settled the lawsuit, the district court dismissed the case without prejudice, subject to the right of any party to re-open the action within sixty days, upon good cause shown, or to submit a stipulated form of final order or judgment (the “60-Day Order”). Sixty-five days after the district court entered the 60-Day Order, the parties filed a joint motion to extend the 60 day deadline and enter a proposed consent judgment and permanent injunction pursuant the parties’ settlement agreement.

In the joint motion, the parties told the district court that a “disagreement arose concerning the terms of the settlement that required the settlement hearing to be transcribed.” The district court noted that “whatever disagreement arose between the parties, it arose and was resolved prior to the expiration of the 60-day period. Yet, the parties did not move to extend the deadline within that period.”
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In this patent infringement action, Mobile Telecommunications Tech., LLC (“MTel”) filed against Blackberry Corp., MTel moved to exclude certain exhibits that were archived press releases published by RCR Wireless and SkyTel webpage screenshots of advertisements. MTel objected that these exhibits are inadmissible because they have not been authenticated by a representative from the Internet Archive service, or “Wayback Machine.” MTel also objected that all of the exhibits constitute hearsay and that none of the exhibits were produced during discovery.

BlackBerry conceded that none of the exhibits were previously produced. It contended that the failure to produce the documents was harmless because they were publicly available. The district court disagreed.
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After the district court granted the plaintiff’s motion for summary judgment of patent infringement, the district court addressed whether a permanent injunction was appropriate. The patent at issue, U.S. Patent No. 6,065,794 (‘794 Patent), which is titled “Security Enclosure for Open Deck Vehicles,” relates to storage management devices, or “trunk enclosures,” that partition and establish a lockable trunk in the rear of convertible cars.

The district court then proceeded to address the four factor for determining whether an injunction should issue. Addressing irreparable harm, the plaintiff argued that it had suffered and will continue to suffer irreparable harm as a result of the defendant’s infringement because the defendant is a direct competitor and the plaintiff has lost sales and market share due to Defendant’s infringement. In response, the defendant argued that the plaintiff could not show irreparable harm because it had not demonstrated that customers purchase the infringing devices because of the patented features and therefore, the plaintiff had failed to satisfy the “causal nexus” requirement.
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In this patent infringement action, the plaintiff, BRP, alleged three counts of patent infringement against Arctic Cat concerning snowmobile frame construction and snowmobile rider positioning. BRP alleged patent infringement by at least 91 Arctic Cat snowmobiles regarding two frame patents and infringement by at least 95 Arctic Cat snowmobiles regarding the seat position patent.

During expert discovery, Arctic Cat moved the district court for an order compelling BRP to produce any documents, notes or emails exchanged between BRP experts Larson and Raasch, particularly focused on draft expert reports exchanged between the two experts.
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The parties in this patent infringement action could not agree on the order of proof at trial. Defendants sought to present their invalidity defense first, arguing that if the patent is invalid, they could not be liable for infringement. The plaintiffs opposed the request to re-order the proof at trial and contended that their infringement claim should be presented first.

The district court noted that it had broad discretion to “exercise reasonable control over the mode and order of examining witnesses and presenting evidence.” Federal Evidence Rule 611(a); see also Matter of Yagman, 796 F.2d 1165, 1171 (9th Cir. 1996) (“[T]he conduct and order of the trial are matters vested in the discretion of the district judge.”); Gen. Signal Corp. v. MCI Telecomm. Corp., 66 F.3d 1500, 1507 (9th Cir. 1995) (reviewing district court’s trial management for abuse of discretion).
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After a district court in the Eastern District of Virginia invalidated the patent-in-suit because it did “not pass the two part test laid out by the Supreme Court in Mayo and Alice.” Peschke Map Techs. LLC v. Rouse Properties Inc., No. 1:15-cv-1365, — F. Supp. 3d —-, 2016 WL 1031295, at *7 (E.D. Va. Mar. 8, 2016), the plaintiff moved to dismiss a patent infringement action pending in a different district while a motion for judgment on the pleadings was pending.

The defendant had moved for judgment on the pleadings in its favor, arguing it cannot infringe on an invalid patent and that plaintiff is collaterally estopped from continuing to pursue its infringement claim. As noted by the district court, it is well known that a patentee is estopped from pursuing infringement claims for a patent that has been invalidated by another federal court, even if that action involved a different defendant. See Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 333 (1971).
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In this patent infringement action, the parties reported that they had settled their dispute while it was pending before the Federal Circuit. The settlement was contingent upon the district court’s granting an indicative motion that it would vacate the underlying judgment.

The district court began its analysis by noting that “Federal Rule of Civil Procedure 60(b) grants district courts the authority to relieve a party from a final judgment when ‘applying [the judgment] prospectively is no longer equitable’ or for ‘any other reason that justifies relief.’ Fed. R. Civ. P. 60(b)(5), (6). Rule 60(b) ‘vests power in courts adequate to enable them to vacate judgments whenever such action is appropriate to accomplish justice.’ Klapprott v. United States, 335 U.S. 601, 614-15 (1949). Whether to grant a Rule 60(b) motion ‘lies within the sound discretion of the district court.’ Neuberg v. Michael Reese Hosp. Found., 123 F.3d 951, 955 (7th Cir. 1997).”
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The plaintiff filed a motion to dismiss the defendants’ patent invalidity counterclaims for lack of subject matter jurisdiction pursuant to Fed.R.Civ.P. Rule 12(b)(1) because the plaintiff withdrew its patent infringement claims and filed a covenant not to sue regarding those claims. In the motion to dismiss, the plaintiff asserted that the patent invalidity claims are therefore rendered moot by the covenant not to sue.

The district court then noted that in Dow Jones & Co., Inc. v. Ablaise, 606 F.3d 1338 (Fed. Cir. 2010), the court found that the offer of a covenant not to sue for patent infringement for any acts of infringement of a patent (past or future) was sufficient to divest the court of subject matter jurisdiction over a suit for declaratory judgment of invalidity. This was because the covenant “extinguished any current or future case or controversy between the parties.” Id. at 1348. The Ablaise court noted that whether a covenant not to sue divests the court of jurisdiction depends on what is covered by the covenant. 606 F.3d at 1346-47. In Ablaise, the plaintiff “on behalf of itself and any successors-in-interest to the ‘530 patent”, released and unconditionally covenanted not to sue Down Jones or any of its subsidiaries or divisions for infringement of the ‘530 patent “as of the date of this agreement based on Dow Jones’ manufacture, importation, use, sale and/or offer of currently existing products or use of methods.” Id. at 1345. When Dow Jones asserted that the covenant did not extend to Dow Jones’ past products or existing licenses, Ablaise clarified that the covenant extended to past products and use. Id. The Court held that this “extinguishe[d] the controversy” between the parties, and divested the court of its Article III jurisdiction.” Id. at 1349.
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Following up on the district court’s previous ruling barring the use of jury questionnaires, the district court addressed the issue of whether any Internet research of the potential jurors should be permitted. After analyzing the reasons to issue an outright ban on such research, the district court explained that it would instead request that the parties agree not to conduct Internet research on the potential jurors.

The district court explained that “[t]rial judges have such respect for juries — reverential respect would not be too strong to say — that it must pain them to contemplate that, in addition to the sacrifice jurors make for our country, they must suffer trial lawyers and jury consultants scouring over their Facebook and other profiles to dissect their politics, religion, relationships, preferences, friends, photographs, and other personal information.”
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