Articles Posted in District Courts

Defendants BRP US Inc. and Bombardier Recreational Products, Inc. (“Bombardier” or “BRP”) filed a motion to stay pending the inter partes reexamination of the patents-in-suit asserted by Polaris Industries, Inc. (“Polaris”). Polar manufactures recreational vehicles, including snowmobiles and Polaris obtained patents for rear suspension technology for snowmobiles. Polaris asserts the designs related to these patents improve rider comfort over rough terrain.

Bombardier is a Canadian recreational vehicle company that manufactures the “Ski-Doo” line of snowmobiles and it is also a competitor of Polaris. Bombardier introduced a rear suspension technology for snowmobiles called “rMotion.” Polaris alleged Bombardier’s suspension technology infringes the patents-in-suit. Prior to filing the patent infringement action, Polaris sent Bombardier a notice of infringement letter. As a result, Bombardier initiated an inter partes reexamination of the patents. The patent infringement action was filed one week after the reexamination. The PTO subsequently granted the request for reexamination and Bombardier moved to stay the case.
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Carnegie Mellon University (“Carnegie Mellon”) filed a patent infringement action against Marvell Technology Group, Ltd. (“Marvell”). As the parties proceeded to trial, both parties filed exhibit lists, deposition designations and objections to the exhibits and the deposition designations. In all, the parties submitted 2700 separately listed exhibits, which both parties claimed that they would or might enter at trial. The parties also listed hundreds of deposition designations and counter designations, which the parties also asserted they would or might use at trial.

The parties also submitted objections to the district court in which they objected to almost every exhibit, deposition designation and counter deposition designation. These objections were presented in a series of spreadsheets that summarized the objections. The actual exhibits or depositions were not included with the objections.
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PB&J Software (PB&J) filed a patent infringement action against defendant Backup Agent. PB&J is the assignee of the 7,356,535 patent (the ‘535 patent) and asserted that Backup Agent was infringing, inducing others to infringe and/or was contributorily infringing at least one claim of the patent by offering services and licensing software implementing what Backup Agent identified as “seed loading.”

Backup Agent moved to dismiss the claim for direct infringement on the ground that PB&J failed to identify the accused product. As explained by the district court, “Defendant maintains that plaintiff failed to state a claim for direct infringement because it fails to identify the accused product. Here, plaintiff identifies infringing activities as including, but not limited to, ‘offering services and licensing software implementing what BackupAgent identifies as a ‘seed loading.’ Defendant argues that plaintiffs pleading deprives defendant of any notice of plaintiffs claims because plaintiff fails to explain in what products, services, or documentation defendant allegedly identifies this ‘seed loading.'”
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On December 20, 2010, Plaintiff Multimedia Patent Trust (“MPT”) filed a patent infringement action against Defendants Apple, Inc. (“Apple”), LC Electronics, Inc., LC Electronics U.S.A., Inc., and LC Electronics Mobilecomm U.S.A., Inc. (collectively “LC”), and Canon USA, Inc. and Canon, Inc. (collectively “Canon”). The complaint alleged that Defendants are liable for infringement of four patents related to video compression technology: (U.S. Patent Nos. 4,958,226 (“the ‘266 patent”), 5,227,878 (“the ‘878 patent), 5,500,678 (“the ‘678 patent”), and 5,136,377 (“the ‘377 patent”) (collectively the “patents-in-suit”). After MPT served final infringement contentions, Defendants Canon, LC and Apple, Inc. (“Apple”) filed motions to strike the final infringement contentions.

Canon moved to strike MPT’s final infringement contentions on the ground that that the final contentions alleged, for the first time, that Canon hardware infringes the ‘878 Patent and that these amendments were made without leave of the district court In response, MPT argued that it was allowed to amend its contentions based on the district court’s claim construction order and newly produced discovery.
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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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