Articles Posted in District Courts

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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Plaintiff filed a patent infringement action again AT&T Mobility LLC (“AT&T Mobility”) for “either literally or by equivalents, and either directly or by inducement or contribution” infringing the patent-in-suit. AT&T moved to dismiss.

AT&T made three arguments in its motion. First, AT&T argued that the plaintiff’s claims should be dismissed because they were plead conditionally. Second, AT&T asserted that the plaintiff had failed to adequately allege direct equivalent infringement. Third, AT&T contended that the plaintiff had failed to properly plead the indirect infringement claims.
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In December 2010, Multimedia Patent Trust (“MPT”) filed a patent infringement action against a number of defendants asserting infringement of a number of patents. Although MPT asserted the 5,500,678 (the “‘678 patent”) against several defendants, as well as other patents against several defendants and Apple, it did not assert the ‘678 patent against Apple. Over a year and a half later and only five months before trial, MPT sought to amend its complaint to include the ‘678 patent against Apple. Apple opposed the motion.

The district court concluded that the motion was not timely based on the following facts, among others: “The record indicates that MPT waited over six months from when it determined that Apple “likely” infringed the ‘678 patent to bring the present motion to amend the complaint. . . . Specifically, MPT had access to Apple’s source code and developed a theory that the code infringes the ‘678 patent, MPT served supplemental infringement contentions on Apple alleging infringement of the ‘678 patent on May 1, 2012. . . . MPT then waited over one additional month to file the present motion to amend its complaint on June 7, 2012. . . . The total delay between MPT developing its theory of infringement and seeking leave to amend its complaint spans more that six months.”
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In this patent infringement action, the defendant, Faro Technologies (“Faro”), moved to exclude the plaintiff’s expert with respect to the expert’s opinion regarding the absence of acceptable non-infringing alternatives as a basis for lost profits. Faro moved to exclude on the basis that the plaintiff’s expert economist lacks the expertise to opine on Faro’s likely redesign to avoid infringing the patent-in-suit. The plaintiff’s expert relied on the expert report of another expert of plaintiff’, who specialized in computer science and electronics.

As the district court analyzed the motion, it explained that “‘[a]n expert may express and opinion that is based on facts that the expert assumes, but does not know, to be true. It is then up to the party who calls the expert to introduce other evidence establishing the facts assumed by the expert.’ Williams v. Illinois, No. 10-8505, 2012 WL 2202981, at *2 (U.S. June 18, 2012). To be sure, Faro challenges Hager’s technical analysis of the external box option. However, when ‘experts rely on conflicting sets of facts, it is not the role of the trial court to evaluate the correctness of facts, it is not the role of the trial court to evaluate the correctness of facts underlying one expert’s testimony.’ Micro Chem., Inc. v. Lextron, Inc., 317 F. 3d 1387, 1392 (Fed. Cir. 2003).”
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SAP AG and SAP America (“SAP”) filed a motion for partial summary judgment against DataTern for failing to serve infringement contentions charting the patents-in-suit against SAP’s accused products. The district court’s order specified that the infringement contentions were required to be served on or before March 23, 2012.

In analyzing the motion for summary judgment, the district court noted that the deadline for DataTern to serve its infringement contentions was originally March 16, 2012 but was moved back to March 23, 2012 at the request of DataTern. DataTern admitted that it had not served infringement contentions in compliance with the district court’s order, but instead argued that the reason it had failed to do so was because SAP had failed to timely provide it with the source code necessary to create the contentions.
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Plaintiff Forest Laboratories, Inc. (“Forest”) moved to centralize their litigation in the District of Delaware. The litigation consisted of two action pending in the District of Delaware and the Northern District of Illinois. The defendants in the Delaware action did not oppose centralization, but one of the defendants suggested selection of the Northern District of Illinois as the transferee district. The defendants in the Northern District of Illinois opposed centralization and, alternatively, suggested selection of the Northern District of Illinois as the transferee forum.

Forest brought the actions in this litigation after various generic drug manufacturer defendants submitted Abbreviated New Drug Application seeking the approval of the Food and Drug Administration to make and sell generic versions of the patented Forest drug Bystolic before the drug’s patent expires. Bystolic reportedly contains a beta-adrenergic blocking agent, or “beta blocker,” called nebivolol hydrochloride and is indicated for the treatment of hypertension, to lower blood pressure. Alkem and Indchemie oppose centralization by arguing, inter alia, that (1) centralization is unnecessary Alkem and Indchemie oppose centralization by arguing, inter alia, that (1) centralization is unnecessary because only two actions are pending in two districts, and (2) the facts among the different actions will vary, given the difference proposed generic formulations at issue. We respectfully disagree with these arguments. Even though only two actions are pending, the Panel has recognized that “actions involving the validity of complex pharmaceutical patents and the entry of generic versions of the patent holder’s drugs are particularly well-suited for transfer under Section 1407.” In re Alfuzosin Hydrochloride Patent Litig., 560 F.Supp. 2d 1372, 1372 (J.P.M.L. 2008). Indeed, the Panel has frequently centralized litigation compromised of only two Hatch-Waxman Act cases.
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Apple moved for summary judgment with respect to Claim 5 of Motorola’s U.S. Patent No. 6,175,559 (the ‘559 patent). Claim 5 of the ‘559 patent provides for a A method of generating preamble sequences in a CDMA system, the method comprising” steps of forming an outer code, forming an inner code and multiplying the outer code by the inner code to generate a preamble sequence.

A couple of weeks earlier, the district court interpreted the claim language to mean that the third step of multiplying the chips of the inner code by the chips of the outer code only occurs after the inner code and outer code are completed. Apple argued on summary judgment that its devices do not completely form the alleged inner and outer codes before those codes are combined to generate the preamble sequence.
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In this patent infringement action, plaintiff Hoyt Fleming (“Fleming”) moved to strike certain paragraphs of the report of Escort’s expert on its defense of non-infringement. One of Escort’s defenses to the charge of infringement was that Escort’s devices lock out false signals by using a process different from that described in Fleming’s patents. Escort asserted that false signals are locked out of Fleming’s invention when the device reaches a predetermined distance from the predetermined position of a false signal, but with Escort’s devices, the distance from a lockout varies.

Accordingly, as the district court explained, “Escort’s expert, Dr. Grindon, concluded, among other things, that ‘the asserted claims of the ‘038 patent are not infringed’ by Escort’s devices. Id. at pp. 1-8. In his claim-by-claim analysis set forth in that Supplemental Report — at paragraphs 21 through 42 — he concludes that Escort’s products do not infringe claims 1, 3, 5, 6, 7, 8, 23, 25, 26, and 27 of the ‘038 patent because those claims describe a device that locks out an alert if the device is a predetermined distance from a predetermined false signal, while with the Escort products, ‘the distance from a lockout varies.’ Id.”
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In this dispute over the inventorship of a patent that is integral to BlackBerry products, the district court held a bench trial on the applicability of laches. The issue at the bench trial turned on whether RIM suffered economic prejudice as a result of plaintiff’s delay in bringing the lawsuit.

The complaint to correct the inventorship of the patent-in-suit was filed on August 1, 2011. After a summary judgment motion disposed of the state law claims, the district court found that RIM had established a presumption of laches on the correction-of-inventorship claim but the plaintiff had rebutted the presumption by showing a lack of evidentiary or economic prejudice that resulted from the unreasonable delay in bringing the lawsuit. The district court then ordered a bench trial to resolve the disputed issues of fact as laches is an equitable defense that is heard by the court and not a jury. After the bench trial, the district court made various findings of fact.
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