Articles Posted in District Courts

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Plaintiffs filed the declaratory judgment complaint in this patent case after receiving a letter from defendants alleging that Plaintiffs’ products infringe two of defendants’ patents. Plaintiffs sough declaratory judgment that Defendants’ patents, U.S. Patent Nos. 6,830,014 (filed Aug. 5, 2003) (“the ‘014 Patent”) and 7,267,082 (filed Dec. 30, 2005) (“the ‘082 Patent”), were invalid and/or that Plaintiffs’ products do not infringe the patents. Defendants asserted counterclaims of infringement. The remaining issues for trial involved the scope and validity of the ‘082 Patent and whether Plaintiffs’ product design infringed the ‘082 Patent.

The individual defendant filed a motion to re-align the parties to allow himself to present his case first because he had the burden of proof on the “most important issue” remaining for trial. Plaintiffs opposed the motion on the grounds that they bore the burden of proof on the declaratory judgment claim of invalidity and because they initiated the lawsuit.
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Plaintiffs Alpha One Transporter, Inc. and American Heavy Moving and Rigging, Inc. (collectively “Alpha One”) filed a complaint against Defendant and Third-Party Plaintiff Perkins Motor Transport, Inc. (“Perkins”). Perkins subsequently filed a motion to dismiss Alpha One’s complaint for lack of standing on one of the patents-in-suit (the ‘897 Patent) because a co-inventor of the patent had not assigned his rights to Alpha One.

In its opposition, Alpha One did not dispute that the co-inventor status but argued that the co-inventor’s (Mr. McGhie’s) prior assignment of rights in a 2002 provisional patent application (“2002 Assignment”) provided Alpha One ownership of the ‘897 Patent. Because the parties disputed these jurisdictional facts, the district court determined that Alpha One bore the burden of proof to show it had standing to sue on the ‘897 patent.
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In Masimo Corporation v. Philips Electronic North America Corporation, et al., the Philips Defendants moved for leave to amend their answer to add a defense of inequitable conduct based on Masimo’s alleged inequitable conduct during the ex parte reexamination of the patent-in-suit. Masimo opposed the amendment on the grounds that it was futile and unduly prejudicial. As summarized below, the Court sided with Philips and allowed the amendment and related discovery.

After setting forth the good cause standard for leave to amend after a deadline in the scheduling order, the Court recited the substantive elements of inequitable conduct required to plead this defense:

“(l) an individual associated with the filing and prosecution of a patent application made an affirmative misrepresentation of a material fact, failed to disclose material information, or submitted false material information; and (2) the individual did so with a specific intent to deceive the PTO.” Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009). “[I]n pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” Id. at 1327. Generally, the materiality required to establish inequitable conduct is “but-for materiality.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1291 (Fed. Cir. 2011). As for the intent prong, Rule 9(b) states that “[m]alice, intent, knowledge, and other conditions of mind of a person may be averred generally.” The relevant “conditions of mind” for inequitable conduct include: “(l) knowledge of the withheld material information or of the falsity of the material misrepresentation, and (2) specific intent to deceive the PTO.” Exergen, 575 F.3d at 1327.

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In CTP Innovations, LLC v. Solo Printing, Case No. 1:14-cv-21499-UU, the Court denied, without prejudice, Defendant’s motion to stay the litigation pending the inter partes review of the two patents-in-suit.

In its motion to stay, the Defendant argued the traditional factors considered by court favored a stay, including that the USPTO’s analysis will simplify the issues in litigation because third party petitions have challenged all claims of the asserted patents, that the case was in its earliest stages having just been filed a little over two months ago, and that there would be no prejudice to the plaintiff because, as a non-practicing entity, it does not compete in the marketplace with the Defendant and thus any infringement, if proven, could be adequately remedied by monetary damages.
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Pipeline Technologies Inc. (“Pipeline”) filed a patent infringement action against Telog Instruments Inc. (“Telog”). Telog filed a motion for summary judgment, seeking summary judgment on the ground that the disputed claims of U.S. Patent 7,219,553 (‘553 patent) are invalid for indefiniteness under 35 U.S.C. § 112(b).
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In this patent infringement action, the defendants, Hangzhou Langhong Technology Co., Ltd. and Langhong Technology USA Inc., moved to exclude the testimony of plaintiff’s experts on infringement and damages. The district court had previously issued a scheduling order setting March 26, 2014 as the deadline for the parties to designate their experts and to make the disclosures required by Rule 26(a)(2) of the Federal Rules of Civil Procedure.

As explained by the district court, Rule 26(a)(2) requires that the expert’s report must contain, inter alia, a complete statement of all opinions the witness will express and the basis and reasons for them. Fed. R. Civ. P. 26(a)(2)(B)(i). The district court then found that “[t]he report prepared by Rogers provides virtually none of the information required by Rule 26(a)(2)(B)(i). Plaintiff’s response to the motion asserts as an excuse for noncompliance lack of sufficient discovery before Rogers prepared his report for him to have the information he would need to comply with the requirements of Rule 26(a)(2)(B). After a thorough review of the material provided by the parties, the court is not persuaded that plaintiff’s excuse for noncompliance with the scheduling order as to Rogers has merit. Plaintiff had ample time before Rogers prepared and submitted his report for the collection of whatever information it needed for Rogers to provide the information in his report required by Rule 26(a)(2)(B)(i).”
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On May 16, 2014, the district court entered Judgment on a jury verdict in favor of Plaintiff Global Traffic Technologies, LLC (“GTT”) in the amount of $5,052,118, enhanced damages in the amount of $2,526,059, and prejudgment interest in the amount of $923,965, plus $1,384.14 for each day after October 31, 2013. Defendants Morgan and KME requested that the district court stay execution of judgment and waive the supersedeas bond requirement. Defendant STC requested that the district court stay execution of judgment with an authorized bond of $100,000, together with pending patent applications in the field of traffic signal preemption.

As the district court explained, “[a]n appellant may obtain a stay of execution of judgment pending appeal when an appellant posts a supersedeas bond, “in the full amount of the judgment plus interests, costs, and damages for delay.” Fed.R.Civ. P. 62(d); Corporate Comm’n of the Mille Lacs Band of Ojibwe Indians v. Money Ctrs. of Am., Inc., No. 12-1015, 2013 U.S. Dist. LEXIS 176796, at *2 (D. Minn. Dec. 17, 2013) (citing New Access Commc’ns LLC v. Qwest Corp., 378 F. Supp. 2d 1135, 1138 (D. Minn. 2005) (Tunheim, J.)). The Court maintains the discretion, however, to waive the bond requirement and stay enforcement of the judgment without a bond.”
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Plaintiff Hill-Rom Company, Inc. (“Hill-Rom”) filed a motion for a preliminary injunction against General Electric Company (“GE”). The district court began its discussion by noting that “[t]he Federal Circuit has said that preliminary injunctions are a “drastic and extraordinary remedy” that should not routinely be used. Nat’l Steel Car. Ltd. v. Canadian Pac. Rv., Ltd., 357 F.3d 1319, 1324 (Fed. Cir. 2004). There are four factors to consider when determining whether to grant a preliminary injunction in a patent infringement case: 1) likelihood of success on the merits; 2) irreparable harm; 3) the balance of hardships; and 4) the public interest. Celsis In Vitro. Inc. v. CellzDirect. Inc., 664 F.3d 922, 926 (Fed. Cir. 2012).”

The district court then focused on the irreparable harm factor. “The most salient of the factors in the present case is the second, concerning irreparable harm. The Court FINDS that the Plaintiffs have not made a sufficient showing that., without a preliminary injunction, they will suffer irreparable harm. General Electric Company (“GE”) is a very large and well established corporation; any harm that Hill-Rom may suffer from GE manufacturing and selling its AgileTrac Hand Hygiene System (“AgileTrac”) can be quantified and the Plaintiffs will be able to be made whole. There is no question that the Plaintiffs will be able to collect on a judgment, should they win one.
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Plaintiff Fleet Engineers, Inc. (“Fleet”) develops, manufactures, and sells after-market products for the trucking industry. Defendant Tarun Surti, the president of Mudguard Technologies, LLC (“Mudguard”), owns a mud flap patent on which this lawsuit is focused. Fleet filed a complaint which asserted three claims: (1) a request for a declaratory judgment of non-infringement, (2) a request for a declaratory judgment of patent invalidity, and (3) tortious interference with a business relationship. Defendants answered the complaint and filed three counterclaims: (1) patent infringement, (2) breach of contract, and (3) misappropriation of trade secrets.

After the Court held a claim construction hearing, counsel for the defendants requested leave to withdraw from the lawsuit. On September 24, 2013, the Court granted the motion and ordered the defendants to retain new counsel within 30 days. Defendants requested an extension until December 20. On October 25, 2013, this Court gave Defendants an additional 28 days to find new counsel, extending the deadline to November 25, 2013. On November 22, Defendants again requested additional time to hire counsel, which the district court granted but warned Defendants that if counsel did not enter an appearance by December 20, default would enter against Mudguard.
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Digitech Image Technologies (“Digitech”) asserted U.S. Patent No. 6,128,415, directed to the generation and use of device profiles for digital image processing system against numerous defendants, including Xerox and Fujifilm Corporation. Digitech appealed the district court’s finding on summary judgment that the asserted claims were invalid under 35 U.S.C. §101. Specifically, Digitech argued that the district court erred in finding (1) that the device profile claims are directed to a collection of data that lacks tangible or physical properties and (2) that the asserted method claims encompass an abstract idea not tied to a specific machine or apparatus. The Federal Circuit affirmed the decision of the district court.

The ‘415 patent was aimed at reducing distortion of an image’s color and spatial properties caused by imaging devices (e.g. digital cameras, TVs, printers) due to the fact that such devices differ in the range of colors and spatial information that they utilize. According to the court, independent claims 1 and 26 described a device profile as “a collection of information; specifically, a description of a device dependent transformation of spatial and color information”:

1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:

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