Articles Posted in District Courts

In this patent infringement action, the plaintiff, Payrange, sought to withhold as privileged a PowerPoint presentation (the “Proposal”) prepared by its current litigation counsel, Wilson Sonsini. Prior to representing Payrange, but in the hope that it would be retained, Wilson Sonsini prepared the presentation and then forwarded it to Payrange. Payrange asserted that the Proposal was a privileged communication protected by both the attorney-client and work-product privileges, that it was inadvertently produced, and that it was clawed back promptly when Defendants raised their intention to rely on the presentation in a filing.

As explained by the district court, the Proposal primarily contains background regarding Wilson Sonsini’s litigation experience, its experience in the intellectual property and patent space, information regarding attorney experience, and a proposed fee arrangement. Additionally, the Proposal contains a comparison of possible venue districts for this litigation. On the executive summary page, the Proposal recommends a preference for one of those venues, and, finally, also on the executive summary page, the Proposal offers a suggestion that Payrange discourage other companies from working with the Defendants. Continue reading

In this patent infringement action, the plaintiff, Personalized Media Communications, LLC (“PMC”), moved to exclude the testimony of Apple’s damages expert, Mr. Thomas. In rebuttal, Mr. Thomas estimated that PMC would be entitled to a lump-sum payment of $1 million per allegedly infringing patent.

PMC asserted that Mr. Thomas’ damages calculation was improper because his calculation of the value added by the patents-in-suit to the functionality of Apple’s FairPlay was flawed. As explained by the district court, PMC pointed to Mr. Thomas’ calculation when he “divided the profitability of FairPlay by 53 (50 Apple DRM patents plus the three patents-in-suit).” They state Mr. Thomas’ calculation “necessarily assumes that each of Apple’s patents has in fact contributed separate and non­cumulative benefit[s] to FairPlay.” PMC further states “[t]he Thomas Report contains no analysis of whether each (or even any) of Apple’s DRM patents were in fact used by Apple in its FairPlay technology at the time the patents-in-suit were issued, the priority date of the Apple patents, or whether the Apple patents are valid.” Continue reading

Plaintiff All Plastic contended it was a leading manufacturer of premium displays and containers for medicinal and recreational cannabis dispensaries. All Plastic filed a patent infringement action against Defendants SamDan LLC d/b/a Smokus Focus (“SamDan”), Samuel Whetsel (“Mr. Whetsel”), and Daniel Russell-Einhorn (“Mr. Russell-Einhorn”) (with Mr. Whetsel, “Individual Defendants” and collectively, “Defendants”) alleging that Defendants make, use, and sell containers for personal cannabis use, that infringe upon the patent-in-suit.

All Plastic filed a motion to compel seeking an order compelling Defendants to produce various documents, re-designate materials already produced and designated “Confidential-Attorneys’ Eyes Only,” and remove redactions applied to materials produced on Defendants’ asserted basis of “relevance.” All Plastic made three arguments to support its contention that “[m]ost of the materials designated by Defendants do not qualify as AEO,”: (1) materials designated as AEO by Defendants are not highly sensitive in nature so as to qualify as trade secrets; (2) the maintenance of Defendants’ unwarranted AEO designations will prejudice All Plastic’s ability to litigate this case because Plaintiff’s counsel can share with their client almost “no material fact” learned from Defendants in this action; and (3) Plaintiff should not bear the expense of objecting to every single one of Defendants’ designations to ensure Defendants’ compliance with their duty to review documents in good faith before designating them as AEO, as per the Protective Order. Continue reading

Plaintiff Baxter International (“Baxter”) sued CareFusion Corporation and Becton, Dickson and Company (“Defendants”) for infringement of three medical infusion pump patents, U.S. Patent Nos. 5,764,034 (the ‘034 Patent), 5,782,805 (the ‘805 Patent), and 6,231,560 (the ‘560 Patent). Baxter moved to strike portions of the Defendants’ invalidity expert, including asserting that the expert impermissibly expanded the scope of the final invalidity contentions.

As explained by the district court, in addition to using the patents for descriptions of physical prior art devices, the expert relied on them as prior art in and of themselves. Baxter contends that this was inappropriate because Defendants’ Final Invalidity Contentions identified the physical devices (the Orion Prototype and Signature Edition II (Model 7200) Pump) as the asserted prior art, not the patents. The district court disagreed finding that after a review of the final invalidity contentions, Baxter was mistaken. The district court concluded that “Defendants disclosed the Eggers, Voss, and Marston Patents as prior art” and the expert was free to rely on them as such. Continue reading

In this patent infringement action, the defendant moved to compel the production of settlement license agreements as part of its reasonable royalty analysis. The plaintiff opposed the request on the grounds that the agreements were protected by the common interest privilege and were not relevant.

The district court disagreed.

Turning to the issue of common interest, the district court explained that “[t]he protection of communications among clients and attorneys ‘allied in a common legal cause’ has long been recognized” and “has previously arisen in connection with patent rights.” In re Regents of University of California, 101 F.3d 1386, 1389 (Fed. Cir. 1996). In patent cases, “the Federal Circuit has required the entities exchanging the privileged material to have a substantially identical legal interest, as opposed to a solely commercial interest.” High Point SARL v. Sprint Nextel Corp., No. 09-2269-CM-DJW, 2012 WL 234024, at *7 (D. Kan. Jan. 25, 2012) (citing In re Regents, 101 F.3d at 1389). “An exception to the assertion of the common interest privilege exists when the participants in the common interest become adverse to each other in litigation.” Dexia Credit Local v. Rogan, 231 F.R.D. 287, 295 (N.D. Ill. 2005). Continue reading

As explained by the district court, Zadro Products, Inc. (“Zadro”) sued Feit Electric Company (“Feit”) for patent infringement alleging that Feit infringed on two of Zadro’s patents: United States Patent No. 8,162,502 (“the ’502 Patent”) and United States Patent No. 8,356,908 (“the ’908 Patent”). Zadro alleged that one of Feit’s products, the Enhance Rechargeable LED Vanity Mirror (model number VRM-1), infringed at least claims 1–9, 18, and 22–23 of the ’502 Patent under 35 U.S.C. § 271(a). Zadro also alleged that the Enhance Rechargeable LED Vanity Mirror infringed at least claims 28–32 of the ’908 Patent under 35 U.S.C. § 271(a).

In its summary judgment motion, Feit asserted that the Zadro mirrors that practice the ’502 Patent do not have marks on them that comply with the requirements of § 287(a). Both parties agreed that Zadro practices the ’502 Patent. The parties also agreed that Zadro does not mark the practicing mirrors themselves. Instead, Zadro contended that marks on the packaging of the practicing products satisfy § 287(a).

The district court explained that § 287(a) requires that a product itself be marked unless “from the character of the article, this can not be done.” “[S]ubstantial compliance may be found to satisfy the [marking] statute.” Global Traffic Technologies LLC v. Morgan, 620 Fed. Appx. 895, 905 (Fed. Cir. 2015) (alteration in original) (quoting Maxwell v. J. Baker, 86 F.3d 1098, 1111 (Fed. Cir. 1996)). No set list of factors can be used to determine whether the “character” of the product makes marking the packaging of the product permissible. Id. at 905-906. Some factors might include the size of the product, whether what is patented is a machine or a multi-part system, and whether the product is immediately installed out of public view once unpackaged. Id. at 905. Continue reading

The defendant, IBG, contended that the plaintiff, Trading Technologies (“TT”) committed patent misuse (rendering its patents unenforceable) when it tied licenses to its U.S. patents to sales of products in foreign jurisdictions where IBG did not hold any patents. TT moved for summary judgment on the patent misuse defense.

As explained by the district court, between 2004 and 2018, TT and various third parties entered into thirty-five license and/or settlement agreements with respect to the four patents-in-suit. At least seven of these agreements include language explaining that the license granted is “worldwide and is based on worldwide usage of [the competitor’s licensed products], as opposed to only usage in countries in which there is patent protection.” The license agreements also included the following or nearly identical language: “WHEREAS, TT is willing to grant the discounted license granted herein for administrative convenience because the license is worldwide and requires payments of royalties for use of Licensed Products . . . anywhere in the world as opposed to royalties based only on the usage of Licensed Products in countries in which there is patent protection.” Continue reading