Articles Posted in District Courts

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After the plaintiff, Peerless Industries, Inc. (“Peerless”) produced an arguably privileged document to the defendant, Crimson AV LLC (“Crimson”), Peerless asserted that the document was inadvertently disclosed and was privileged. Crimson filed a motion to compel production of the document, particularly asserting that it should be produced under an exception to the attorney-client privilege.

As explained by the district court, “Defendants have filed a motion for an in-camera inspection of a particular document inadvertently produced by plaintiff [dkts. 230, 231]. Defendants seek a ruling that this document is discoverable, and not to be returned to plaintiff based on the inadvertent disclosure provision of the parties’ protective order, because of the crime-fraud exception. We deny that request and find plaintiff’s inadvertent disclosure did not waive the attorney-client privilege.”
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James R. Taylor (“Taylor”) filed a patent infringement action against Taylor Made Inc. (“Taylor Made”). Taylor Made filed a motion to dismiss the action on the ground that Taylor did not have standing to maintain the patent infringement action because Taylor’s ex-wife had not been made a party to the lawsuit and she had an ownership interest in the asserted patent.

As explained by the district court, “[t]he Plaintiff and Ms. Taylor were married on February 14, 1987. Dkt. 24-1. The Plaintiff subsequently obtained the Patent on September 15, 1998 for a storm drainage conduit plug and sealing band. Dkt. 1. The Plaintiff and Ms. Taylor obtained a Final Judgment of Dissolution of Marriage (A “Divorce Settlement”) from a Florida state court on March 7, 2011. Dkt. 24-1; see also In re the Marriage of James R. Taylor and Mary Louisa Taylor, Case No. 2006-Dr-10057-NC. The Divorce settlement subjects the Taylors’ marital assets to equitable distribution, in so doing notes that the primary assets of the marriage are three United States patents, specifically: (1) ‘5,224,514/July 6, 1993;” (2) “5,316,045/May 31, 1994;” and (3)[5], 806566/September 15, 1998.”
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Plaintiff Unwired Planet (“UP”) filed a patent infringement action against Apple asserting over 247 claims in ten different patents. Apple filed a motion to limit the number of claims. In the motion, Apple asserted that UP had included approximately 80% of the total number of claims in the patents. Apple asserted that if the claims were not narrowed, then the case would be unmanageable and would unfairly burden Apple.

As justification for its motion, Apple also pointed to the parties’ prior litigation history in 2011 at the International Trade Commission. As explained by Apple, UP accused the same products in this case, the iPhone, the iPad and the iPod Touch, in the ITC action. Therefore, Apple assert, UP should know how the products work, what they do, and should have an adequate understanding of the case to narrow the claims. Apple argued that the asserted claims should be reduced to fifty or sixty claims.
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Potter Voice filed a patent infringement action against Apple, Google, HTC, Sony, LG, Motorola, ZTE, Kyocera, Sharp, Huawei, Pantech, Research in Motion, Microsoft and Nokia. Many of the defendants filed several motions to dismiss pursuant to Fed.R.Civ.P. 12(b)(6).

After addressing the pleading standard for determining a Rule 12(b)(6) motion and denying certain motions without prejudice based on severance and transfer issues, the district court turned to the allegations of induced infringement. As explained by the district court, “[e]ach of the defendants who filed a motion to dismiss argues that the allegations in the plaintiff’s complaint are not sufficient to state a claim for inducement of infringement. To allege induced infringement, the plaintiff must allege direct infringement by another, knowing inducement of that infringement by the defendant, and the defendant’s specific intent to encourage another’s infringement. Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1363 (Fed. Cir. 2012). In addition, the plaintiff must allege that the defendant had knowledge of the plaintiff’s patent. Global-Tech Appliances, Inc. v. SEB S.A., ___ U.S. ___, ___, 131 S. Ct. 2060, 2068-69 (2011). “The requirement that the alleged infringer knew or should have known his actions would induce actual infringement necessarily includes the requirement that he or she knew of the patent.” DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006).”
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As the litigation between Motorola and Apple rages on throughout the country, one judge has had enough of an ever increasing number of claims and patents asserted by both companies. As explained by the district court, “[b]oth Apple and Motorola greatly expanded the scope of this patent litigation by, among other things, supplementing patent infringement and invalidity contentions.”

As part of these supplemental infringement and invalidity contentions, the asserted claims and patents dramatically increased. “The litigation now includes over 180 claims asserted from the 12 patents, and the parties dispute the meaning of over 100 terms from those claims.”
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Princeton Digital Image Corporation (“PDIC”) filed several patent infringement actions against Hewlett-Packard, Fujifilm, Xerox, Facebook and Ricoh, among others. The Defendants moved to dismiss the complaint for lack of standing. The case is based on two patents for digital image processing technology in cameras, computers and other devices. In May 2009, a predecessor to PDIC purchased the patents from GE.
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Plaintiffs Transunion Intelligence LLC and Trans Union LLC (collectively, “Transunion”) filed a patent infringement action against Search America over two patents that are directed to a computer-implemented method and software that is used to access a person’s eligibility to receive financial assistance for healthcare services. Transunion asserted both direct infringement and inducing infringement of one of the patents-in-suit.

Search America moved to dismiss the inducing infringement claim, asserting that Transunion had failed to plead that Search America had the specific intent to infringe the patent-in-suit. The district court disagreed. “As discussed at he hearing on Search America’s motion, however, the Court believes that Transunion has pleaded a plausible claim of induced infringement against Search America. In its complaint, Transunion pleads that Search America knew of the ‘937 patent, and Transunion pleads specific facts in support of that allegation – namely, that Search America studied the ‘937 patent to distinguish it from Search America’s own patent application. Fourth Am. Compl. para. 11. Transunion also alleges that Search America performed all but one of the steps of the ‘937 patent and that either Search America or a customer working with Search America performed the remaining step – namely, the inputting of patient data. Fourth Am. Compl. Ex. B at 2. Transunion further alleges that Search America’s customers performed the ‘inputting’ step by populating an on-line form created, controlled, and provided by Search America. Id.”
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In Gunn v. Minton, 2013 WL 610193 (Feb. 20, 2013), a unanimous United States Supreme Court determined that state courts can address legal malpractice disputes even though the underlying action may turn on issues involving patents. As expected, this ruling, which significantly narrowed federal court jurisdiction, is likely to impact many cases pending in district courts around the country.

As an example, in a case pending against Boston Scientific in district court, Boston Scientific immediately challenged the district court’s jurisdiction after the Gunn decision. “Just seven days before the jury trial schedule in this case, the United States Supreme Court handed down Gunn v. Minton, 2013 WL 610193 (Feb. 20, 2013). In a letter dated February 21, 2013, Boston Scientific brought this case to the Court’s attention, suggesting that under Gunn, the Court lacks jurisdiction over this case. By response dated February 22, 2013, Mirowski contended that jurisdiction existed and urged the Court to hold fast to the trial date.”
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In this patent infringement action between Microsoft and Motorola, Motorola asserted certain claims of various patents against Microsoft, including claims that included “means for decoding” and “means for using” limitations. Motorola asserted that Microsoft’s Windows 7 operating system and Microsoft’s Internet Explorer 9 infringed the asserted claims of the patents-in-suit. Microsoft moved for partial summary judgment that the claims that included these means-plus-function limitations were indefinite under 35 U.S.C. §112.

As explained by the district court, “[a]t a high level, the Patents-in-Suit disclose systems and methods for encoding and decoding a bitstream (or sequence) of digital video data.3 (See generally ‘374 Patent; ‘375 Patent; ‘376 Patent.) The Patents-in-Suit explain that a picture in a digital video sequence can either be encoded as a “frame,” comprising consecutives lines of the picture, or as two “fields,” with the top field comprising the odd-numbered lines of the picture and the bottom field comprising the even-numbered lines of the picture. (‘374 Patent at 1:42-58.) While encoding a picture in frame or field mode was done in prior art on a picture-by-picture basis (id. at 4:17-34), the summary of the invention states, “[t]he method entails encoding and decoding each of the macroblocks in each picture in said stream of pictures in either frame mode or in field mode.” (Id. at 2:58-60 (emphasis added).)”
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ABT Systems, LLC (“ABT”) filed an action against Emerson Electric Co. (“Emerson”). As the case proceeded to trial, the district court made some key rulings on motions in limine. In particular, the district court addressed whether customer product reviews on the Internet were admissible over a hearsay objection.
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