Articles Posted in District Courts

Activision TV, Inc. (“Activision”) filed a patent infringement action against Pinnacle Bancorp, Inc. (“Pinnacle”). Counsel for Activision, Farney Daniels, had previously sent letters to companies throughout the United States that Activision believed were infringing its patents. Five of these companies were in Nebraska. The letters requested information to determine if three was infringement of the patents.

As a result of these letters, the Attorney General’s office for the State of Nebraska opened an inquiry. After the action was filed against Pinnacle, the Nebraska Attorney General filed a cease and desist letter against the law firm of Farney Daniels. The cease and desist letter prohibited Farney Daniels from initiation new patent infringement enforcement efforts in the State of Nebraska. Because of the cease and desist order, Farney Daniels asserted it would be unable to represent Activision in this case and in other federal court cases.

Activision then moved for a preliminary injunction to permit Farney Daniels to represent it in the currently pending patent infringement case. The district court conducted a hearing at which it questioned representatives from the Nebraska Attorney General’s office.
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As this patent infringement action proceed toward trial, plaintiff Kimberly-Clark Worldwide, Inc. (“Kimberly-Clark”) filed a request with the district court on an “extremely time-sensitive case management issue concerning the use of depositions at trial and deposition designations.” During a telephonic status conference, Kimberly-Clark requested that the district require the defendants First Quality Baby Products, LLC (“First Quality”) present at trial any deposition testimony of Kimberly Clark’s testifying employee witnesses when they are called by Kimberly-Clark instead of during First Quality’s case-in-chief.

As part of its request, Kimberly-Clark asserted that its proposed procedure would be more efficient and would prevent delay and any potential confusion that would be created by calling the same witnesses to testify, whether by live testimony or by depositions, during different phases of the trial. First Quality opposed Kimberly-Clark’s request by arguing that this type of procedure would improperly permit Kimberly-Clark to dictate the manner in which First Quality presents its case.
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Orbis Corporation (“Orbis”), a manufacturer of commercial baking trays, owns U.S. Patent 6,273,259 (“the ‘259 patent”), which covers a baking tray (“the NPL663 tray”). As explained by the district court, “Orbis sells the NPL663 trays solely to Bimbo Bakeries, Inc. (“Bimbo”), and Bimbo’s affiliated brands. Several years ago, one of those affiliated brands, Sara Lee Corporation (“Sara Lee”) approached the defendant, Rehrig Pacific Company (“Rehrig”), to request that Rehrig design a tray that was both compatible with and similar to the NPL663 tray. Rehrig obliged and designed its SLBT180 tray, which it then began selling to Sara Lee. After several years of allowing Rehrig to sell its SLBT180 tray to Sara Lee, Orbis sued Rehrig, alleging that the SLBT180 tray infringed upon Orbis’ ‘259 patent.”

Rehrig moved for summary judgment based on the “on-sale bar” doctrine pursuant to 35 U.S.C. § 102, which states that “[a] person shall be entitled to a patent unless…the claimed invention was…on sale” more than one year “before the effective filing date of the claimed invention.” 35 U.S.C. §§ 102(a-b).
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In this patent infringement action between i-Tec Well Soultions, LLC (“i-Tec”) and Peak Completion Technologies, Inc. (“Peak”), the district court issued an unusual order as the case approached trial. With the case expected to be a jury trial, both sides were ordered to submit tailored jury instructions.

The district court, most likely frustrated by the unintelligible jury instructions that are frequently submitted in patent cases, issued an “Order on Confusion.” In the “Order on Confusion,” the district court stated that “the parties must give the court tailored jury instructions written in plain language if they want a jury trial in October.” Thus, the district court made it clear that it wanted jury instructions that could be understood by a jury of lay people even in a complex patent trial.
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In this patent infringement action, Defendant Sirius XM Radio, Inc. (“Sirius”) sought a “patent acquisition bar” against plaintiff’s counsel from Freitas Tseng & Kaufman, LLP (“Freitas”). In seeking the bar, Sirius asserted that the Freitas attorneys who would gain access to Sirius’ confidential technical information should be barred from advising any clients in the “acquisition of patents involving satellite radio signal processing for the purpose of asserting them against” Sirius for two years after the conclusion of the litigation, including any appeals. Freitas objected to the patent acquisition bar.
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Plaintiff Cobra International, Inc. (“Cobra”) filed a patent infringement action against several defendants, including BCNY International (“BCNY”) alleging infringement of a patent for the design of lighted footwear. The defendants create children’s shoes that have a small electrical module with an integrated circuit mounted on a chip. As explained by the district court, “[t]he chip, which is mounted on a circuit board and covered by a dot of epoxy, is a small rectangular piece of silicon less than one-quarter of an inch across on which the various electrical components are formed through a multi-layer process. The chip is connected to a switch, a battery, and a number of LED lights on the outside of the shoe. When the switch is triggered, the LEDs flash in a pattern for a short period and then stop.”

The Defendants moved to exclude two of Cobras expert opinions: (1) the opinion that the schematics relied on by Defendants do not accurately represent the circuit in the accused product; and (2) the opinion that the circuit in the accused product uses the same “logic” as Cobra’s patent.
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Englishtown, Inc. (“Englishtown”) filed a patent infringement action against Rosetta Stone, Inc. (“Rosetta Stone”) for alleged infringement of patents pertaining to language-learning products, software, online services and practice tools. Englishtown sought leave to amend its complaint to include an allegation of willfulness based solely on post-litigation knowledge and conduct. Rosetta Stone opposed the motion on the ground that the amendment would be futile.

As explained by the district court, “[t]o prevail on a claim of willful infringement, the patentee must prove that: (1) the accused infringer ‘acted despite an objectively high likelihood that its actions constituted infringement of a valid patent’; and (2) this objectively defined risk was either known or so obvious that the accused infringer should have known about it. K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1378 (Fed. Cir. 2012).”
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Plaintiff Biomet, Inc. (“Biomet”) filed a complaint for Declaratory Judgment against Bonutti Skeletal Innovations, LLC (“Bonutti”) seeking a declaration that the manufacture, use, or sale of Biomet’s products does not infringe on Bonutti’s patents. Bonutti filed a motion to dismiss for lack of subject matter jurisdiction pursuant to Fed. R. Civ.P. 12(b)(1), arguing that, at the time the complaint was filed, there was no case or controversy as defined by the Declaratory Judgment Act, 28 U.S.C. § 2201(a).

The district court explained the facts as follows. In June 2012, Acacia Research Group (ARG), Bonutti’s parent company, contacted Biomet about a new licensing agreement. Shortly afterwards, Plaintiff and ARG began negotiating the terms of the licensing agreement. The bargaining process included the signing of a Non-Disclosure Agreement (“NDA”). The NDA’s purpose was to facilitate the licensing of patents to avoid litigation. There was nothing in the NDA that prevented the parties from filing a lawsuit against each other at any point, for any reason.
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Plaintiff The Procter & Gamble Company (“Plaintiff”) filed a patent infringement action against Clio USA, Inc. (“Clio”). Plaintiff moved to compel certain opinions of counsel and other documents concerning the subject matter of those opinions. In the litigation, Clio had produced to Plaintiff copies of two abridged opinions, which were marked on their face as containing privileged communications.

Clio intentionally disclosed the abridged opinions to various third parties, including Clio’s co-Defendants, the co-Defendants’ customers, and Plaintiff. Clio claimed that it disclosed one of the abridged opinions to co-Defendants under a common interest privilege. But Plaintiff identified documents from co-Defendant Team Technologies, Inc. (“Team Tech”) showing further dissemination of counsel’s opinions to retailers. For example, CVS demanded documentation of a “legal nature” to “show there is no patent infringement,” and Clio responded that it would provide such documentation. Meijer requested a similar legal opinion, and a legal opinion letter was furnished to CVS.

Plaintiff asserted that these productions waived the attorney client privilege.
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KFx Medical Corp. (“KFx”) alleged that Arthrex, Inc. (“Arthrex”) infringed three of its patents: United States Patent Number 7,585,311 (“311 Patent”), United States Patent Number 8,100,942 (“942 Patent”) and United States Patent Number 8,109,969 (“969 Patent”). All three patents share the same name: “System and Method for Attaching Soft Tissue to Bone.” KFx’s moved for summary judgment of no inequitable conduct in connection with the ‘942 Patent and the ‘969 Patent.

As explained by the district court, Arthrex’s claim of inequitable conduct was directed to the conduct of Ryan Melnick, the attorney who prosecuted the patents. Arthrex alleged that Mr. Melnick intentionally diverted the Examiner of the ‘942 and ‘969 Patents away from a statement by KFx’s President and CEO, Tate Scott (“the Scott Statement”), and instead directed the Examiner to less relevant prior art references. Arthrex contended the Scott Statement explained that the work performed in a 2004 article by Peter J. Millett, M.D., et al., entitled “Mattress Double Anchor Footprint Repair: A Novel, Arthroscopic Rotator Cuff Repair Technique” (“the Millett article”) was prior art to all of the patents. Arthrex claimed that Mr. Melnick’s diversionary tactic caused the Examiner not to apply the Millett article, and that if the Examiner had applied that article, he would have rejected the claims. Arthrex also asserted that “Mr. Melnick failed to disclose to the Examiner the correct priority date for the ‘969 patent and, in fact, took steps to mislead the Examiner into believing the ‘969 patent was entitled to the same priority date as the ‘942 patent, when he knew it was not.”
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