Articles Posted in District Courts

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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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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Multimedia Patent Trust (“MPT”) filed a patent infringement action against several defendants, including DirecTV and Vizio, which alleged infringement of multiple patents related to video compression technology. DirecTV and Vizio answered the complaint an alleged affirmative defenses of patent exhaustion and license.

The parties filed cross motions for summary judgment on the issue of exhaustion and license. DirecTV contended that its licensed suppliers made authorized sales pursuant to a 2002 license and a 2009 license and that these authorized sales exhausted MPT’s patent rights . MPT argued that even though DirecTV’s manufacturers are licensed, the manufacturers’ sales of certain products exceeded the scope of the license. In response, DirecTV argued that patent exhaustion applied because DirecTV’s licensed suppliers’ sales to DirecTV were authorized sales, and authorized sales exhaust a patentee’s rights to sue others who subsequently use or sell the same article that allegedly infringes the patents.
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It appears that the announced death of inequitable conduct claims may have been premature. As described below, yet another court allowed such claims to survive summary judgment.

A court in the Northern District of Illinois denied summary judgment on the plaintiff’s motion for summary judgment of no unenforceability. Citing the Federal Circuit’s recent decision in Therasense v. Becton, Dickinson & Co., 2011 WL 2028255 (Fed. Cir. May 25, 2011), the court reiterated the new, heightened standard for proving inequitable conduct that to prevail on such a claim, “the accused infringer must prove by clear and convincing evidence that the applicant knew of the [prior art] reference, knew that it was material, and made a deliberate decision to withhold it.” Slip Op. at 15. Moreover, “merely proving that the applicant should have known of the reference’s materiality is insufficient. Though a district court may infer intent from indirect and circumstantial evidence, in order to meet the clear and convincing evidence standard, the specific intent to deceive must be ‘the single most reasonable inference able to be drawn from the evidence.'” Id. Finally, the accused infringer must prove that the omitted reference is but-for material by showing that the PTO would not have allowed the claim had it been aware of the undisclosed prior art. Id.

The accused infringer claimed that the patentee engaged in inequitable conduct during the prosecution of the patent-in-suit by improperly adding new matter by: (1) submitting an incorrect English translation of the international application; (2) representing to the USPTO that no new matter had been added to the substitute specification filed with the USPTO; and (3) representing that the substitute specification had been provided as required by the Examiner and omitting the proper substitute specification.
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