Articles Posted in District Courts

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Plaintiff, Two Moms and a Toy, filed an emergency motion to stay the expert phase of their case pending the court’s ruling on claim construction. The plaintiff’s motion was based on the argument that “expert reports and expert discovery in a patent infringement case is extremely expensive and that a ruling on claim construction could end this case and at the very least will provide the parties with needed guidance and information for assessing the patent’s strength which will hopefully result in a settlement of the case.”

The court was not persuaded by the plaintiff’s argument. Indeed, it agreed with the defendant that it was “thinly veiled request for reconsideration of my two previous ruling denying motions to extend or otherwise modify the case schedule.” The court noted that these argument could have, and should have been, raised in connection with the earlier requests to amend the schedule that were denied by the court. “All of the arguments about expense and efficiency could have been made in connection with the parties’ previous Joint Motion to Amend Scheduling Order.”
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Defendant moved to compel the deposition of a member of Plaintiff ‘s trial counsel regarding Plaintiff’s pre-filing investigation. Despite Defendant’s attempt to withdraw the motion based on a representation (not disclosed in the opinion) made by the Plaintiff in its sur-reply, the Court granted the Defendant’s motion and required the Plaintiff to produce a member of its trial counsel for his deposition over this topic.

The Defendant originally sought to depose Plaintiff’s trial counsel over information relating to his pre-filing investigation of the claims in the lawsuit. The pre-filing investigation included obtaining and photographing the accused product. According to the Plaintiff, the information obtained was never intended to be used as evidence of any actual infringement. In fact, the Plaintiff represented that its trial counsel would not be a witness nor would it use anything from his examination as evidence in the case. The Court noted that while normally this would end the inquiry regarding the necessity of the deposition, the Defendant had raised counterclaims asserting that the Plaintiff “has violated the antitrust laws by bringing suit against competitors without adequate justification in order to stifle competition.”
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Defendants moved to dismiss a patent infringement complaint pursuant to Fed.R.Civ.P. 12(b)(6) on the theory that the complaint failed to allege facts showing that a single party performed each and every limitation of the method claim.

The district court noted that “the Federal Circuit Court of Appeals has ‘instructed that ‘[d]irect infringement requires a party to perform or use each and every step or element of a claimed method or product.’ . . . Nevertheless, ‘[w]hen a defendant participates in or encourages infringement but does not directly infringe a patent, the normal recourse under the law is for the court to apply the standard for liability under indirect infringement. Indirect infringement requests, as a predicate, a finding that some party amongst the accused actors has committed the entire act of direct infringement.'” Thus, there is no finding of indirect infringement without a finding that there is a direct infringer.
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In a patent case filed in the Eastern District of Texas by Eon Corporation IP Holdings, LLC (“Eon”) against Cellco Partnership d/b/a Verizon Wireless (“Verizon”), along with other defendants, Eon moved to dismiss Verizon’s inequitable conduct counterclaims and strike its inequitable conduct affirmative defenses. Magistrate Judge Love recommended that Eon’s motion to dismiss be denied because Verizon’s inequitable conduct claim was sufficiently pled.

Verizon’s inequitable conduct was based on two separate instances. First, Verizon alleged that the sole inventor of the asserted ‘491 patent deliberately withheld his earlier patent from the U.S. Patent Office (“PTO”) with the intent to deceive the PTO. Second, Verizon alleged that the ‘491 patent should be found unenforceable under the “infectious unenforceability” doctrine because it was obtained due to Eon’s inequitable conduct of its parent patent application. In denying Eon’s motion, the Magistrate held that Therasense did not substantially alter the pleading requirements and that Verizon sufficiently plead inequitable conduct under the standard set forth in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009).
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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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