Articles Posted in District Courts

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Plaintiff Internet Machines LLC (“iMac”) filed a patent infringement action against several defendants including, among others, PLX Technology, Inc., ASUS Computer International and CDW Corp. alleging infringement of three patents that pertain to PCI Express switches. PLX manufactures the accused products while the remaining defendants distribute the products, incorporate the accused products into other devices or sell devices that incorporate the accused devices.

The defendants, other than PLX (the “Downstream Defendants”), moved to stay the litigation between themselves and iMac pending the resolution of iMac’s claims against PLX. The Downstream Defendants argued that PLX, as the product manufacturer, was the only true defendant in the case and that the resolution of iMac’s claims against PLX would moot any dispute between iMac and the Downstream Defendants. Based on a related case against PLX, iMac asserted that this was incorrect because PLX, in that other currently pending case, argued that it does not ship the accused products in an infringing state and that it is ignorant of any downstream configuration by its distributors or retailers. Based on this argument made by PLX, iMac asserted that a stay would therefore be inefficient and financially burdensome because it would require a second suit against the Downstream Defendants.
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Plaintiff Tyco Healthcare Group and United States Surgical Corporation moved to disqualify defendant Ethicon Endo-Surgery’s attorneys of record (the law firm of Akin Gump). Tyco based the motion to disqualify on the ground that Akin Gump had improper access to privileged and confidential information of Tyco because Akin Gump hired and used a trial presentation technology consultant who had worked on a related trial involving the same patents four years earlier.

In the previous related case, Tyco’s counsel hired TrialGraphix to assist Tyco’s counsel with presenting witnesses and exhibits in a December 2007 bench trial. As a result, a trial technician provided by TrialGraphix worked directly with Tyco and Tyco’s attorneys. During and in preparation for the bench trial, the trial technician worked closely with the Tyco trial team and received confidential and privileged information.
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In an effort to encourage more participation from less experienced attorneys, the District of Massachusetts has several judges adopting standing orders that strongly encourage the participation of relatively inexperienced attorneys. Judge Casper is the most recent judge in the District of Massachusetts to adopt such a standing order.

Judge Casper explained the reason for the standing order: “The decline in courtroom opportunities for newer lawyers is widely recognized and is one of concern to both the bench and bar. A Task Force of the Boston Bar Association acknowledged this much in its report, “Jury Trial Trends in Massachusetts: The Need to Ensure Jury Trial Competency Among Practicing Attorneys as a Result of the Vanishing Jury Trial Phenomenon, issued in 2006. As a result of its year-long work exploring the statistical and anecdotal evidence regarding the rate of jury trials over time, the Task Force concluded that ‘the vanishing jury trial is actually affecting the jury trial experience of current and future generations of practitioners and made recommendations to courts, lawyers and clients to remedy this issue. Among its recommendations to the judiciary, the Task Force called upon ‘judges presiding over pre-trial conferences and related matters to identify and encourage opportunities for a junior attorney to participate in the examination of witnesses and other significant trial work.’
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The district court issued a stay pending reexamination of an inter partes reexamination of the patent at issue in the litigation. Plaintiff filed a motion to lift the district court’s stay pending re-examination based on the argument that the reexamination was nearly complete because an office action had issued invalidating many of the claims, but not all of them.

Defendants responded by asserting that the reexamination process was not yet complete and that either party to the reexamination could appeal a recent office action that had issued. In addition, one of the defendants to the action informed the court that it would appeal the office action that had issued from the PTO.
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The parties filed cross-motions for summary on the issue of inequitable conduct. The district court had previously denied summary judgment motions on the issue of inequitable conduct but that was prior to the Federal Circuit’s decision in Therasense, Inc. v. Becton Dickinson and Co., 649 F.3d 1276 (Fed. Circ. 2011) (en banc). The district court granted the parties request to re-brief the issue in light of Therasense.

The plaintiff asserted on its renewed summary judgment motion that there was insufficient evidence of specific intent to deceive the Patent and Trademark Office (“PTO”). The defendant did not dispute that there was no direct evidence of specific intent in the case. Instead, the defendant relied on circumstantial evidence, arguing that the only logical inference from the evidence is one of intent to deceive the PTO. To make this argument, the defendant relied on the fact that two of the inventors knew of two significant references and failed to disclose them to the PTO. The district court noted, relying on Therasense, that “[p]roving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” 649 F.3d at 1290. Based on this quote from Therasense, the district court concluded that the mere fact that the inventors failed to disclose these references was insufficient to defeat summary judgment in favor of the plaintiff.
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Defendant was the sole named inventor of the patent in suit. Plaintiff brought a claim for inventorship, alleging that he was the co-inventor of the patent. The parties cross moved for summary judgment and for sanctions.

The defendant and plaintiff maintained a business relationship for approximately 15 years, with plaintiff agreeing to pay the defendant $5000 in consulting fees in connection with the plaintiff’s idea for a video product to be used in automobile marketing. Defendant would act as a consultant and advise the plaintiff how to build the system. Defendant in fact designed the system, hired one or more computer programmers and had the system built.
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Plaintiff filed a declaratory judgment action of non-infringement after it received a letter from IP Navigation Group (“IP Nav”). The letter invited the plaintiff to engage in a licensing discussion regarding the patent or patent of IP Nav’s client, which remained anonymous. After filing the declaratory judgment, the plaintiff sought and was granted permission by the district court to serve a subpoena on IP asking IP Nav to identify the anonymous patent holder along with the patent numbers for the patents referenced in the letter.

IP Nav then filed a motion to quash the subpoena in the United States District Court for the Eastern District of Texas, arguing that the subpoena was invalid for lack of subject matter jurisdiction. The district court in Texas issued an order finding that IP Nav had raised “substantial questions” regarding the district court’s jurisdiction but determined it was appropriate for the district court in Wisconsin where the action was pending to determine that issue.
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Plaintiff filed a patent infringement action in the Middle District of Florida. Defendants filed a motion to transfer the case to the Eastern District of California. Defendants emphasized in its transfer motion that the Eastern District of California was clearly more convenient than the Middle District of Florida. Ten months after the motion was filed, the Middle District of Florida concluded that the Eastern District of California was indeed a more convenient forum and therefore transfer was appropriate. “The Middle District of Florida emphasized that the transfer was necessary to promote the interests of justice, because the alleged acts of infringement and the uncontested evidence of record demonstrates that the vast majority of the activities relating to the alleged infringement took place and around the Eastern District of California.”

When the case arrived in the Eastern District of California, Plaintiff filed a motion to re-transfer the case back to the Middle District of Florida. Although the parties did not argue in the Middle District of Florida that the Eastern District of California lacked personal jurisdiction over certain of the defendants, the plaintiff now moved to retransfer the case because the Eastern District of California did not have personal jurisdiction over two of the defendants.
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In a patent case filed in the Eastern District of Wisconsin by Illinois Tool Works (“ITW”) against Elektromanufaktur Zangenstein Hanauer GmbH & Co. KGaA (“EMZ”), EMZ moved to dismiss for failure to state a claim under Rule 12(b)(6) as well as for lack of personal jurisdiction under Rule 12(b)(2). EMZ alternatively moved for a more definite statement under Rule 12(e).

EMZ’s motion to dismiss for failure to state a claim rested on its assertion that ITW’s failure to identify an accused product in the complaint rendered ITW’s infringement claims ambiguous and conclusory. Specifically, EMZ argued that “the complaint’s reference to unspecified and generically-labeled ‘latching mechanisms’ as the allegedly infringing product is not sufficient to provide EMZ fair or adequate notice as to what ITW’s claim of infringement is and the grounds upon which it rests.” In response, ITW argued that the complaint was sufficient because it alleged that the infringing products “are latching mechanisms for washing machines sold to manufacturers, such as Whirlpool, that EMZ knew were bound for the United States.”
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After ActiveVideo Networks, Inc. (“ActiveVideo”) prevailed on a patent infringement action against Verizon Communications, Inc. (“Verizon”) before a jury, ActiveVideo moved for a permanent injunction. ActiveVideo moved to enjoin Verizon’s further use of Verizon’s Video on Demand (“VOD”) services offered through its FiOS system. Verizon opposed the motion and also asked for a “sunset” provision in the event the district court deemed an injunction appropriate. Verizon also asked the district court to stay any injunction pending appeal.

After reviewing the requirements of a permanent injunction in a patent infringement matter with particular reference to the Supreme Court’s decision in eBay, Inc. v. MercExchange, L.L.C. , 547 U.S. 388 (2006), the district court turned to analyzing the traditional four-factor test for determining whether an injunction was appropriate in this case.
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