Articles Posted in District Courts

Motorola moved for partial summary judgment to dismiss Microsoft’s claim for a reasonable and non-discriminatory (“RAND”) license agreement to be determined by the district court. As explained by the district court, “Microsoft and Motorola are both members of the Institute of Electrical and Electronics Engineers (“IEEE”) and the International Telecommunication Union (“ITU”). The IEEE and ITU, neither of which are parties to the instant dispute, are international standards setting organizations. Standards setting organizations play a significant role in the technology market by allowing companies to agree on common technological standards so that all compliant products will work together. Standards lower costs by increasing product manufacturing volume, and they increase price competition by eliminating “switching costs” for consumers who desire to switch from products manufactured by one firm to those manufactured by another.”

Motorola asserted that it would be inappropriate for the district court to fashion a license agreement between Microsoft and Motorola for Motorola’s standard essential patents because no license agreement currently exists. The district court disagreed: “Motorola’s declaration to the ITU and IEEE constitute binding agreements to license its essential patents on RAND terms, and Microsoft is a third-party beneficiary to those agreements and therefore entitled to a license of Motorola’s essential patents on RAND terms. (6/6/12 Order at 13-14.) Indeed, Motorola has agreed that Microsoft is a third-party beneficiary to Motorola’s assurances to license its essential patents on RAND terms. [Footnote omitted.] Nevertheless, Motorola argues, in part, that no license agreement exists between Microsoft and Motorola because Motorola’s commitments to the ITU and IEEE only “bind Motorola to engage in bilateral, good-faith negotiations leading to RAND terms,” but do not require Motorola to grand licenses on RAND terms. (Mot. At 18-20.) This is not what the court held in its June 6, 2012 order, and the court declines to reach that conclusion in this order. Instead, after examining the language of Motorola’s agreements with the ITU and IEEE, the court held that Microsoft is entitled to a RAND license. (6/6/12 Order at 13-14.) To be clear, having previously determined that Microsoft has not repudiated or revoked this right, the court’s prior holding means that Motorola must grant Microsoft a RAND license to its standard essential patents.”
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Plaintiff Gen-Probe Incorporated (“Gen-Probe”) filed a patent infringement action against Becton Dickinson & Company (“Becton Dickinson”) alleging infringement of its Automation and Cap patents. The Automation patents resulted from Gen-Probe’s development of a single automated instrument to detect a target nucleic acid indicative of the presence of a target pathogen within a sample. The Cap patents are directed to a specimen collection vessel that allows the contents of the vessel to be sampled by an automated device.

In the patent infringement action, Gen-Probe accused Becton Dickinson of infringing claims of both the Automation and the Cap patents through the sale of the VIPER XTR and BD Max, which are Becton Dickinson’s automated nucleic acid test instruments and penetrable cap products. As explained by the district court, “[t]he Automation Patents describe an automated method of nucleic acid-based testing where the automated analyzer detects the presence of a particular pathogen in a sample. Nucleic acid-based testing involves the creation of a complementary nucleotide sequence that a target pathogen will bind to through complementary base pairing. The complementary nucleotide sequence is used as a probe. The probe is introduced to a sample that may contain the target nucleic acid. If the target binds to the probe, it indicates that the target nucleic acid is present in the sample. The Automation Patents automate the steps of this process in a single instrument. The Cap Patents use a seal or seals on a collection vessel that are penetrated by a fluid transfer device. The seal or seals, in conjunction with the core structure, are intended to prevent the release of aerosols from the sample and limit contamination from fluid on the fluid transfer device after removal.”
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The plaintiff, Mytee Products, Inc. (“Mytee”) manufactures and sells a sealing fan under the name Tradewind. Defendants Studebaker Enterprises, Inc. (“Studebaker”) and Dri-Eaz Products, Inc. (“Dri-Eaz”) were assigned ownership rights in the patents-in-suit, which are both entitled “Shrouded Floor Drying Fan.” Another of the defendants, Skagit Northwest Holdings, Inc. (“Skagit”) is in the business of manufacturing room drying fans that are considered to be covered by the patents-in-suit.

Counsel for Studebaker and Skagit sent a letter to Mytee asserting that Mytee’s Tradewind fan infringes their patents. Mytee then filed a declaratory judgment action asserting that the Tradewind did not infringe the patents and that the patents were invalid. Dri-Eaz and Studebaker subsequently executed a covenant not to sue to Mytee and provided the covenant not to sue to Mytee. Defendants then filed a motion to dismiss this patent infringement action for lack of subject matter jurisdiction.
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Graff/Ross Holdings LLP (“Graff/Ross”) filed a patent infringement action against the Federal Home Loan Mortgage Corporation (“Freddie Mac”) for patent infringement. Freddie Mac moved to dismiss pursuant to Fed.R.Civ.P. 12(b)(6) on the ground that the patent was invalid for claiming unpatentable subject matter. The district court referred the motion to the Magistrate Judge who recommended granting Freddie Mac’s motion after converting it into a motion for summary judgment. Graff/Ross objected to the district court.

Claim 101 of the patent-in-suit provides:

A method for making a financial analysis output having a system-determine purchase price for at least one component from property in consummating a sale, the financial analysis output being made by steps including:

Converting input data, representing at lest one component from property, wherein the property is a fixed income asset, into input digital electrical signals representing the input data;

Proving a digital electrical computer system controlled by a processor electronically connected to receive said input digital electrical signals and electronically connected to an output means;

Controlling a digital electrical computer processor to manipulate electrical signals to compute a system-determined purchase price for at least once component from property in consummating a sale and corresponding purchase of the component; and
Generating the financial analysis output at said output means.
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Plaintiff Abbott Laboratories and Abbott Biotechnology Limited (“Abbott”) filed a declaratory judgment action that defendant’s patent was invalid. After the defendant demand a jury trial, Abbott moved to strike the defendant’s demand for a jury trial on the issue of patent validity.

As the district court explained, “[t]he parties agree that whether a Seventh Amendment right to a jury trial arises here is governed by Tull v. United States, 48 U.S. 412 (1987), which “turns on whether the case ‘is more similar to cases that were tried in courts of law than to suits tried in courts of equity or admiralty’ in 1791,” when the Seventh Amendment was adopted. Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1339 (Fed. Cir. 2001) (quoting Tull, 481 U.S. at 417)). A right to a jury trial arises only if a case is more similar to those that were tried in courts of law. Id. This inquiry requires a two-part evaluation of (1) the nature of the action; and (2) the nature of the remedy sought. See id. (citing Tull, 481 U.S. at 417-18)). In this analysis, “the nature of the remedy is more important than that of the action.” Id. (citing Chauffeurs, Local No. 391 v. Terry, 494 U.S. 558, 565 (1990); Tull, 481 U.S. at 417, 421)).”
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Radiation Stabilization Solutions (“RSS”) filed a patent infringement action against Varian Medical Systems, Inc. (“Varian”) and several hospitals. The hospitals moved to dismiss the complaint on the ground that the allegations were inadequate under Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).

RSS is the exclusive licensee of the patent-in-suit, which is entitled “Systems to Stabilize an Irradiated Internal Target.” The Hospital Defendants are each health care facilities operating in the Chicago area. According to the district court, “RSS alleges, with no factual support or context, that each of the Defendants directly and/or indirectly infringes the [patent-in-suit] because the Defendants either use, offer for sale, sell, import, or induce others to use, offer, sell, or import systems that use Image Guided Radiation Therapy (IGRT).”
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Plaintiff Wisconsin Technology Venture Group, LLC (“Wisconsin Technology”) contended that Fatwallet, Inc. (“Fatwallet”) infringed its patent pertaining to Internet technology. Fatwallet filed several affirmative defenses, as well as counterclaims for invalidity and non-infringement of the patent-in-suit. Wisconsin Technology moved to dismiss the counterclaims under Fed.R.Civ.P. 12(b)(6) for defendant’s failure to comply with the pleading standards set forth in Fed.R.Civ. P. 8 and the Supreme Court’s decisions in Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009), and Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).

The district court granted the motion with respect to the counterclaim of invalidity for failing to allege facts sufficient to satisfy the pleading requirements of Rule 8 for that claim, but denied the motion with respect to the counterclaim for noninfringement. As stated by the district court, “Defendant’s only allegations in support of its counterclaim for noninfringement are that “[plaintiff] asserts in this action that [defendant] is liable for infringement of the ‘418 patent,” and that defendant “is not infringing, has not infringed, and is not liable for any infringement of the ‘418 patent. . . .” Dft.’s Ans. & Counterclaim, dkt. #5, ¶¶ 34-34. With respect to its invalidity counterclaim, defendant alleges that “[t]he ‘418 patent is invalid for failure to meet one or more of the conditions of patentability specified in Title 35, U.S.C., or the rules, regulations, and law related thereto, including, without limitation, in 35 U.S.C. §§ 101, 102, 103, and/or 112.” Id. at ¶ 38. Plaintiff contends that these allegations fail to satisfy the applicable pleadings standards because they are wholly conclusory and provide no factual details about why defendant believes its products are not infringing and why it believes plaintiff’s patents are invalid.”
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Innovatio IP Ventures, LLC (“Innovatio”) filed patent infringement actions against various hotels, coffee shops, restaurants and supermarkets for the use of wireless Internet technology located throughout the United States. Innovatio filed a motion for entry of a protocol for collection of electronic evidence and a preliminary ruling on the admissibility of the collected evidence.

As explained by the district court, “Innovatio has been using commercially-available Wi-Fi network analyzers to collect information about the Wireless Network Users’ allegedly infringing Wi-Fi networks. (Dkt. No. 329, at 2.) That process, which is known in the industry as ‘sniffing,’ requires Innovatio’s technicians to enter the Wireless Network Users’ premises during business hours with a laptop computer and a Riverbed AirPcap Nx packet capture adapter (or a similar device). (Id.) The packet capture adapter can intercept data packets that are traveling wirelessly between the Wi-Fi router provided by the Wireless Network Users and any devices that may be communicating with it, such as a customer’s laptop, smartphone, or tablet computer. Innovatio then uses Wireshark network packet analyzer software to analyze the data packets, revealing information about the configuration of the network and the devices in the network. The data packets also include any substantive information that customers using the Wi-Fi network may have been transmitting during the interception of the data packets, including e-mails, pictures, videos, passwords, financial information, private documents, and anything else a customer could transmit to the internet. Innovatio contends that the information it collects will assist in proving its infringement claims.”
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Intendis, Inc. (“Intendis”) and Dow Pharmaceutical Sciences, Inc. (“Dow”) filed a patent infringement action against River’s Edge Pharmaceuticals, LLC (“River’s Edge”). Dow owns the patent-in-suit and Intendis is the exclusive licensee. According to the district court, “[t]he ‘383 patent is listed by the Food and Drug Administration (FDA) as covering Desonate®, which is a topical aqueous gel composition indicated for the treatment of skin disorders such as acne. Intendis is the owner of an approved New Drug Application (NDA) for Desonate®.”

River’s Edge submitted an Abbreviated New Drug Application (“ANDA”), which sought to engage in the commercial manufacture, use, sale, offer for sale or importation of a generic gel based on the listed drug Desonate. River’s Edge moved for judgment on the pleadings. River’s Edge asserted that there could be no literal infringement as a matter of law because the infringement allegations were expressly contradicted by the patent specification attached to the complaint. Intendis and Dow contended, on the other hand that at this stage, the relevant inquiry should not focus on assessing the merits of the case but instead should focus on whether the plaintiff is entitled to reach the discovery stage of litigation in order to seek evidence to support their claim.
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