Articles Posted in District Courts

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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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In the ongoing action between Apple and Samsung, Apple filed a motion for a protective order seeking to prohibit one of Samsung’s attorneys from participating in any further depositions. Alternatively, Apple sought an order restricting the attorney from engaging in particularly abusive deposition acts, including belligerent and insulting treatment of witnesses, repeated interruptions, unilaterally terminating a deposition, uncivil treatment of opposing counsel, engaging in lengthy colloquy on the record, among other things.

Samsung objected to the order and denied that any in appropriate conduct had occurred at all Samsung also noted that Apple’s witnesses were Apple’s patent lawyers and agents who are accustomed to the adversarial process.
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In the ongoing trial over damages for several Microsoft products between Lucent and Microsoft, the United States District Court for the Southern District of California has reduced the damage award against Microsoft from $70 million to $26.3 million, plus prejudgment interest. The new trial on damages occurred after the Federal Circuit affirmed a jury’s finding that the so-called Day patent was valid and infringed but reversed the jury’s determination of damages. The Day patent claims a date-picker feature in the calendar function of Outlook, one of just many uses for Microsoft’s popular Outlook program. The Federal Circuit remanded the case for a new trial on damages to determine an appropriate royalty based on one feature of Outlook.

After the jury returned a verdict of $70 million, the district court addressed whether the amount should be reduced on post-trial motions. Before addressing that issue, the district court noted that “[t]his case illustrates the difficulty of properly valuing a small patented component, without a stand-alone market, within a larger program.” Lucent’s damage calculation was based on a lump-sum license in the form of an upfront, paid-in-full royalty. The royalty calculation is particularly difficult in this case because the date-picker feature is just one among many Outlook features and Outlook, although sold separately, is much more commonly purchased as part of the suite of products found in Microsoft Office.
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In three patent cases brought by the same plaintiff, Raylon LLC, against numerous defendants, Judge Davis of the Eastern District of Texas denied Rule 11 sanctions and motions for attorneys’ fees under Section 285 of the Patent Statute, and Section 1927 of Title 28.

Following the grant of summary judgment of noninfringement, Defendants filed motions contending that Raylon’s infringement theory was “so legally untenable” that fees and costs should be awarded under Sections 285 and 1927. Defendants earlier had filed a Rule 11 motion seeking sanctions. Raylon asserted U.S. Patent No. 6,655,589 (“the ‘589 patent”) against all of the defendants. All of the claims of the ‘589 patent require a “display being pivotably mounted on said housing.” Raylon argued that this should be construed to mean “an electronic device attached to a housing that visually presents information and allows the display to be moved or pivoted relative to the viewer’s perspective” and alleged that infringement was found where the entire device, not just the display, could be pivoted to the view. Defendant EZ Tag sought a construction of the term to mean that “an integral computer screen which can move positions with regard to the computer housing and is not maintained in a fixed position.” The remaining defendants argued that it should mean “the display must be mounted on the housing and the mounting of the display on the housing must be pivotable so that the display and housing may pivot with respect to each other.” The Court construed the term as “the display must be mounted on the housing so that the display and housing may pivot with respect to each other.” Because it was undisputed that all of the defendants’ accused products had displays that were rigidly mounted as to the housing, the court granted summary judgment of noninfringement, both literally and under the doctrine of equivalents.
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