Articles Posted in District Courts

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In the continuing battle over the Android operating system, the United States District Court for the Northern District of California decided to appoint its own damage expert. The district court explained that under Fed.R.Evid. 706(a), the district court “may appoint expert witnesses of its own selection” and noted that the Supreme Court has long recognized the constitutionality of court-appointed experts. The district court also noted that the Federal Circuit and the Ninth Circuit have acknowledged and recognized that the district courts enjoy wide latitude in making such appointments.

After explaining the authority for the appointment of expert witnesses, the district court turned to why such an appointment was necessary in the ongoing battle between Google and Oracle. Stating that “[t]he damages aspect of this controversy is particularly involved,” the district court noted that “[t]he accused items are not entire products but rather elements of products, whose roles and relative importance within the larger units are disputed.” The parties also further complicated the damage analysis by using elaborate nontraditional business models for distributing and monetizing the relevant products. “For example, Google allegedly distributes its accused Android software free of charge, hoping to later benefit from improved market position and advertising revenue generated by Google searches on Android devices. Oracle, for its part, claims to have been harmed by the supposed fragmentation of its Java platform and developer community due to Google’s allegedly selective use of Java elements in Android.”
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In December 2004 and early in 2005, the plaintiff filed three patent infringement actions against several parties. The district court consolidated the cases. All of the consolidated cases were stayed by the district court pending reexamination by the Patent and Trademark Office (“PTO”). Many years later, the Board of Patent Appeals and Interferences (“BPAI”) upheld the validity of two of the patents. As a result, the plaintiff moved to lift the stay of the consolidated actions. Defendants opposed the lifting of the stay.
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In this patent infringement action, the defendant moved to exclude plaintiff’s expert witness on the basis that the expert was not disclosed on a timely basis. The plaintiff disclosed the witness on November 4, 2011, as an expert to testify as to “the molecular weigh characterization of polymers” in a claim construction hearing scheduled for November 9, 2011. The deadline for identifying witnesses to give testimony relevant to claim construction expired in July 2011.

In analyzing whether there was surprise as to the expert testimony, the district court began by noting that “[t]o name a witness so far beyond the deadline set by the scheduling order would require a strong justification.” The district court found that “[t]he issue of how molecular weight of a polymer should be measured was clearly identified as an issue for claim construction in the parties’ joint claim construction statement.” From this joint claim construction statement, the district court determined that it was established that plaintiff had notice of “differences as to how the molecular weight of a polymer was measured well before July 29, 2011.” The district court also noted that plaintiff did not suggest otherwise.
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In December 2010, Indacon, Inc. (“Indacon”) sued Facebook, Inc. (“Facebook”) for patent infringement for two patents that pertain to a system for data acquisition and perusal. The plaintiff filed a Markman brief and Facebook filed an inter partes request for reexamination. Facebook then filed a motion to stay the case pending the outcome of the reexamination.

Facebook asserted that the stay was necessary because it filed the inter partes reexamination based on recent briefing by Indacon. Facebook claimed it had filed the reexamination request based on the Markman briefing filed by Indacon, asserting that it had three invalidating prior art references that were not before the PTO. Based on the reexamination filing, Facebook argued that the district court should temporarily stay the litigation because discovery “is far from complete and a trial date has not been set” and the stay would not unduly prejudice the plaintiff.
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In a patent infringement action pending in the United States District Court for the District of Colorado, one of the defendants, Hewlett-Packard (“HP”) moved for a protective order with respect to the designation of one of plaintiff’s experts. Plaintiff contended that HP infringed certain patents held by plaintiff by making and selling products that use multiple condition code registers, such as printers. HP contended that the accused products often incorporate or integrate third party technology or components and therefore HP had in its possession, custody or control of third party confidential information in the form of documents and source code.

The plaintiff notified HP that its expert would inspect the source code. HP objected to the expert’s proposed source code inspection contending that it would not produce the source code unless there was protection for third-party confidential information. HP also demanded that the expert agree not to work for non-practicing entities and not to perform work adverse to HP for several years after trial of the case. “HP asks the Court to add provisions to the Amended Protective Order that require [plaintiff’s expert] to attest that he is not working for any entity in a capacity of reviewing patens or products, services, or targets for non-practicing entities, other than as a result of this litigation, and that he will not do so for four years after trial of this lawsuit” HP also sought to preclude the expert from working on the prosecution of any patent directed or related to the field of computer processor architecture for a period of four years following trial and not to perform any work adverse to HP for a period of three years following trial.
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ActiveVideo filed a patent infringement action against several Verizon entities asserting that Verizon infringed certain of ActiveVideo’s patents. After a three week jury trial, the jury found that Verizon infringed asserted claims of four of the patents and awarded ActiveVideo $115,000,000 in damages. After the verdict, ActiveVideo sought an award of prejudgment infringement, post-judgment interest and post-discovery damages for the continuing infringement. Verizon opposed the motion.

In addressing the issue of damages for continuing infringement, the district court stated that “[w]here a patent infringer is found to have infringed one or more patents, the ‘patentee is entitled to damages for the entire period of infringement and should therefore be awarded supplemental damages for any period of infringement not covered by the jury verdict'” (citations omitted). ActiveVideo asserted that it was entitled to an award of supplemental damages because the discovery provided by Verizon only accounted for information through March 2011 and did not address the period from April 2011 to August 2011 when the jury returned its verdict. Verizon opposed the motion by contending that ActiveVideo waived any entitled to the supplemental damages because it failed to request them in the amended complaint or in the final pre-trial conference order.
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Pfizer filed a patent infringement action against Teva Pharmaceuticals (“Teva”) over a patent that claims the use of certain chemical compounds claimed as a method to treat erectile dysfunction. During the case, Teva filed a motion to amend its answer and counterclaims to alleged a defense and counterclaim for inequitable conduct. The district court granted the motion, but noted that it was a close case.

Several months later, Teva moved to amend its answer and counterclaim to change its allegations supporting the inequitable conduct claim. The district court denied the requested amendment on the ground of prejudice and futility because the amendment was late and would prejudice Pfizer and the individuals named in the proposed amendment and because the amendment failed to make any plausible showing of but-for materiality.
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In August 2011, Google filed a motion to strike portions of the opening and reply expert reports of Oracle’s expert on patent infringement. Google argued that much of the report was not supported by Oracle’s infringement contentions as required by the Northern District of California’s local patent rules. The district court noted that Patent Local 3-1 “requires detailed disclosure of a party’s patent infringement contentions. “Although Oracle supplemented its disclosures on two occasions after Google raised objections, Oracle declined to supplement a third time despite Google’s contention that they were still inadequate. Oracle was also warned that if the disclosures later proved to be inadequate to support its infringement theories, there would be no chance to cure the defects.

As part of Patent Local 3-1, Oracle was required in its infringement contentions to include a chart that identified where each limitation of each asserted claim is found within each accused product. Google asserted that two of the functions, vfork() and clone() were not identified in the claim charts, but that Oracle’s expert relied on them to satisfy certain of the claim limitations in the patents-in-suit. The district court agreed with Google on the limitation for the “process cloning mechanism”: “Oracle’s operative infringement contentions did not identify the vfork() or clone () functions as satisfying the ‘process cloning mechanism’ limitation of Claim 6. This is not disputed. Oracle therefore may not now rely on those functions as satisfying that claim limitation.”
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Plaintiff filed a patent infringement action and subsequently filed a partial motion for summary judgment. In the partial motion for summary judgment, the plaintiff contended that there were no acceptable and available, non-infringing alternatives to the claimed inventions during the relevant damage period. The district court granted the motion.

Prior to trial, the plaintiff filed a motion in limine to preclude the defendant from introducing at trial evidence or argument that tubal ligation was an acceptable non-infringing alternative during the damages period. With one caveat, the district court granted the motion.
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Plaintiff sued defendant for patent infringement for direct and indirect infringement for the commercial sale and/or use of the defendant’s asset tracking solutions product. Defendant moved to dismiss the complaint pursuant to Fed.R.Civ.P. 12(b)(6) on the ground that plaintiff failed to identify an infringing instrumentality and also failed to allege facts of indirect infringement.

Defendant’s first argument, that plaintiff failed to identify the instrumentality accused of infringement, was disregarded by the district court. The district court found that plaintiff had identified the accused instrumentality by naming the Asset Tracking Solutions product. The defendant’s argument that it did not sell or make such a product was a factual dispute that could not be resolved on a motion to dismiss. The district court also found that plaintiff’s allegations complied with Form 18 and therefore this part of the motion of the motion to dismiss was denied.
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