Articles Posted in District Courts

Lanard Toys Limited (“Lanard”) filed a patent infringement action against Toys “R” US. Lanard subsequently filed a four-count Amended Complaint and Demand for Trial by Jury, both of which were filed in the United States District Court for the District of New Jersey. After the amend complaint was filed, the case was transferred to the Middle District of Florida.
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The district court had previously granted Defendant Respironics, Inc.’s
(“Respironics”) unopposed motion to stay the patent infringement action filed by the plaintiff, Zoll, pending an inter partes review (“IPR”) of the patent-in-suit, on which the Patent and Trademark Office (“PTO”) had instituted review. When Respironics filed the motion to stay, it had assured the district court that the length of the stay would not exceed 18 months. Based on this representation, Zoll withdrew its prior opposition to the requested stay and, based largely on the lack of opposition, the district court granted the stay.

After the completion of the IPR proceeding, the PTO confirmed the patentability of Zoll’s patent claims. As explained by the district court, “Zoll now wishes to proceed with the litigation it filed more than 2 1/2 years ago, on December 27, 2012. Oddly, however, and in tension with its prior representations that it was only seeking a stay pending IPR, and that such a stay would not exceed 18 months, Respironics opposes lifting the stay.”
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Verify Smart Corp. (“Verify”) filed a patent infringement action against Bank of America, N.A. (“BoA”), alleging infringement of United States Patent No. 8,285,648 (“the ‘648 Patent”). As part of its complaint, Verify claimed to have all substantial rights through an exclusive license. BoA filed a motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(1), contending that Verify lacked standing.
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Plaintiff West View Research (“West View”) filed five separate patent infringement complaints on the same date against various automobile manufacturers. Each action asserted a combination of patents, all from the same patent family, for a total of eleven asserted patents. The district ourt consolidated the five for purposes of discovery and claim construction.

As part of the Case Management Order, the district court ordered West View to identify no more than seven claims from each patent to assert against the Defendants. For each asserted claim, the district court ordered West View to provide preliminary infringement contentions.
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The parties filed opposing motions against each side’s expert witness over a dispute between the parties as to what the word “use” means. In its Markman order, the district court had construed the term “Internet Protocol network” (“an Internet Protocol network,” “network utilizing at least one Internet Protocol,” and “a network utilizing at least one Internet Protocol”) to mean “an untrusted network using any protocol of the Internet Protocol Suite including at least one of IP, TCP/IP, UDP/IP, HTTP, and HTTP/IP. . . .”
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Defendant Extended Disc North America, Inc. (“EDNA”) filed a motion for summary judgment of non-infringement and invalidity, and, alternatively, a motion to dismiss against plaintiff Target Training International, Ltd.’s (“TTI”). TTI had filed its complaint for patent infringement against EDNA on September 17, 2010, alleging that EDNA directly infringed at least Claim 1 of the patent-in-suit by performing the methods claimed in the patent and by using or selling services that use the methods claimed in the patent.

Extended DISC International, Ltd. (“EDI”) filed a request for ex parte reexamination of the patent-in-suit with the United States Patent & Trademark Office (“PTO”). EDNA moved to stay the case pending the outcome of the reexamination. The court initially denied the motion to stay. On January 6, 2012, the PTO issued a final office action rejecting all of the claims in the patent-in-suit. The court subsequently issued an order staying the case until the PTO concluded reexamination and a certificate of reexamination was issued.
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In this patent infringement action between Natural Chemistry LP and Orenda Technologies, Inc. (“Orenda”), Orenda’s counsel filed a notice of vacation designation, which the district court characterized as a notice of unavailability.

In considering the notice, the district court began by noting that “[t]he rules of this Court do not provide for filing a Notice of Unavailability as a method to avoid abiding by deadlines and schedules established by the Court or to extend the time for responding to motions.”
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America’s Collectibles Network (“ACN”) filed a patent infringement action in which it claimed to own U.S. Patent No. 8,370,211 (the “211 Patent”). It brought this action against the Genuine Gemstone Company (“Genuine Gemstone”). Genuine Gemstone filed a motion to dismiss contending that it is the rightful owner of the 211 Patent and that ACN lacks standing to assert infringement.

The district court explained the background facts as follows: “On June 18, 2010, The Colourful Company Group acquired Gems TV (UK) Ltd–the then owner of the 211 Patent–through a share purchase agreement. After the transaction was completed, Gems TV (UK)’s former director, Anthony Hillyer, signed a document purportedly assigning Gems TV (UK)’s interest in the patent to a US affiliate that was not part [of] the sale. ACN traces its chain of title back to that assignment. If the assignment was valid, as ACN contends, then ACN is the rightful owner of the 211 Patent, and this suit may proceed. On the other hand, if the assignment was invalid as the defendant claims, then ACN is not the rightful owner of the 211 Patent, and it lacks standing to assert its infringement claim.”
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After the district court adopted a specialized scheduling order that was based on local patent rules in other districts, the plaintiffs served detailed infringement contentions and the defendant served detailed invalidity contentions early in the case. The parties could only amend the contentions for “good cause.” As the case progressed toward trial, the parties moved to strike various portions of the opposing party’s expert reports arguing that certain references and/or theories were not properly disclosed in the contentions.
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