Articles Posted in District Courts

Published on:

by

In a patent case brought by Plaintiff Rembrandt Vision Technologies, L.P. (“Rembrandt”) against Defendant Johnson & Johnson Vision Care, Inc. (“J&J”) in the Eastern District of Texas, J&J moved to transfer the case to the United States District Court for the Middle District of Florida. Central to the Judge Ward’s grant of J&J’s motion was the fact that he and Magistrate Judge Everingham soon would be retiring effective October 1, 2011, which — along with the balance of private and public interest factors — resulted in the transferee venue being “clearly more convenient than the venue chosen by [Rembrandt].”

Initially, the district court noted that Rembrandt is a New Jersey limited liability partnership with offices in Pennsylvania and no facilities in Texas. The district court also noted that the inventors of the patent-in-suit have no connection to Texas, but own a house in the Middle District of Florida. The district court pointed out that the only connection that Rembrandt had to the Eastern District of Texas was the pending lawsuit and other lawsuits it had filed there. On the other hand, the district court countered that J&J had been involved in litigation in the Middle District of Florida involving the same accused products, J&J was a Florida corporation with its headquarters in Jacksonville, Florida, and that it employed over 1200 people to manufacture the accused product in its Florida facility.

After concluding that the threshold determination that Rembrandt’s claim could have been brought in the Middle District of Florida, the district court turned to Rembrandt’s argument that judicial economy weighed against transfer. Rembrandt argued that judicial economy weighted against transfer because of the district court’s experience with the patent-in-suit and also because J&J waited 17 months to file its transfer motion. Judge Ward stated that “[b]ecause both the undersigned and Magistrate Judge Everingham are retiring from the bench on October 1, 2011, these issues do not weigh as heavily, with respect to judicial economy, as they may have otherwise.” Judge Ward further explained that “[w]ith respect to the Court’s familiarity and experience with the patents-in-suit, due to the approaching retirement of both the undersigned and Magistrate Judge Everingham, there will no longer be a judge in the Marshall Division with familiarity of this case.”

Continue reading
Published on:

by

In a recent case from the United States District Court for the Eastern District of Virginia, the district court granted defendants’ motion to limit damages for failure to mark for all but one of the patents-in-suit. Pursuant to 35 U.S.C. §287(a), a patentee must either mark a patented product or provide actual notice of infringement in order to recover damages. Section 287 can be satisfied either by constructive notice, accomplished by marking a product or packaging with the applicable patent number, or actual notice, such as sending a cease and desist letter or providing the alleged infringer with actual notice of infringement through another affirmative act.

Defendants filed a motion for judgment as a matter of law asserting that the plaintiff had failed to introduce sufficient evidence to support a finding that it was entitled to recover pre-suit damages because it failed to comply with the marking requirements of Section 287. Plaintiff argued that Section 287 did not apply because the defendants were aware of the patents and, therefore, had actual knowledge regardless of plaintiff’s failure to mark. The plaintiff also argued that with respect to one of the patents Section 287 did not apply because the plaintiff was only asserting method claims and not apparatus claims.
Continue reading

Published on:

by

In the ongoing patent battle between Google and Oracle over aspects of the Android operating system, Oracle filed a motion seeking to take four additional depositions, including Google CEO, Larry Page. Each of these depositions would be over the ten deposition limit established by Fed.R.Civ.P. 30. Google opposed the request on the ground that these depositions would not only be over the ten deposition limit but also that Oracle was seeking “apex” depositions from the highest level of executives at Google. The court sided with Oracle.

With respect to Mr. Page’s deposition, the court noted that “Rule 30 of the Federal Rules of Civil Procedure requires a party wishing to take more than ten depositions without consent of other parties to obtain leave from the Court to proceed.” The court also noted Fed.R.Civ.P. 26(b)’s requirement that “[w]hen evaluating a party’s request to expand discovery limitations, the court must ensure that the discovery sought is ‘relevant to[the] party’s claim[s] or defense[s]’ and not unreasonably cumulative, duplicative, or burdensome.”
Continue reading

Published on:

by

Plaintiff brought suit in the United States District Court for the District of Delaware against defendants asserting declaratory judgment, antitrust, Lanham Act and state tort claims based on two patents co-owned by the defendants. The defendants moved to transfer the case to the United States District Court for the Central District of California, primarily because a related case involving the same patents was in the Central District. The District Court granted the motion to transfer.

In opposing the motion to transfer, the plaintiff argued that the case could not be transferred to the Central District of California because the Central District did not have personal jurisdiction over the plaintiff. In rejecting this contention, the district court noted that Section 1404(a) requires that “the party moving for transfer bear the burden of proving that the action properly could have been brought in the transferee court in the first instance.”
Continue reading

Published on:

by

In a recent case in the United States District Court for the District of Delaware, the district court stayed a patent infringement case pending reexamination of the patent in the Patent and Trademark Office (“PTO”). Defendant filed a motion to stay the case in light of an inter partes reexamination of the patent-in-suit that was granted by the PTO, arguing that the reexamination will simplify the issues before the parties and the court because “75% of all reexaminations granted from 1981 through June 30, 2009 have resulted in either the cancellation of all claims or at least some claims.” Plaintiff opposed the motion as a “delay tactic,” contending that “recent trends in inter partes reexaminations indicate that only 24% of reexaminations result in the cancellation of all patent claims at issue and that inter partes reexamination proceedings can last six to eight years.”

First, referring to Fed.R.Civ.P. 26(c) and noting that a district court may impose a stay of discovery on a showing of good cause, the district court stated that “[s]pecifically, a court has broad discretion to stay a case pending reexamination.” Second, the district court found that granting a stay would not cause undue prejudice to the plaintiff or allow the defendant to gain a clear tactical advantage.
Continue reading

Published on:

by

Plaintiff filed a patent infringement suit against 17 defendants alleging direct, indirect and joint infringement. The defendants moved to dismiss for failure to state a claim. The district court granted the motions to dismiss the joint infringement and indirect infringement claims, but denied the motions to dismiss the direct infringement claims.

The patent-in-suit discloses a data processing station subscriber unit that delivers interactive or television-quality entertainment and informational content to subscribers. Each of the independent claims include a limitation requiring a plurality of sources of video text and television program channels available from a wireless television program communication network.
Continue reading

Published on:

by

A Texas Court recently granted a plaintiff’s motion to strike the defendant’s non-infringement theory based on the defendant’s failure to previously disclose it. At trial, the defendant attempted to elicit testimony from the plaintiff’s expert witness that the accused website did not infringe, in light of the way it operated. Because the defendant had not previously disclosed this theory of non-infringement at any time before trial, the plaintiff moved to strike this testimony. In granting the plaintiff’s motion, the Texas court rejected the defendant’s argument that it was not required to disclose its non-infringement theory because the plaintiff bears the burden of proving infringement.

In its opinion, the Court reiterated the long held liberal discovery policies in the Eastern District of Texas: “[t]he Eastern District of Texas is well known for it liberal discovery policies and its high expectations that the parties and their counsel be forthcoming in their discovery obligations. Under the Court’s Discovery Order, requests for production are not required; parties are expected to produce all relevant documents without formal requests for production. These policies promote efficient dispute resolution and avoid trial by ambush.”
Continue reading

Published on:

by

Plaintiff filed a declaratory judgment action in California seeking to invalidate defendant’s patents and for a declaration that it did not infringe the patents. The defendant responded by filing a patent infringement lawsuit in Florida in the same court where it had previously filed and litigated a patent infringement matter on three of the four patents at issue in California against an unrelated party. In ruling on defendant’s motion to dismiss the declaratory judgment action, the district court sided with the defendant and dismissed the declaratory judgment action in California even though it was filed before the patent infringement action.

The defendant was a resident of Florida, who owned a patent portfolio pertaining to Ground Data Link (“GDL”) technology that collects flight performance data from aircraft and transmits that information wirelessly to ground-based systems. Defendant had licensed its technology to various companies and also had engaged in prior litigation over its patents in Florida, including proceeding through claim construction and obtaining a jury verdict of infringement of its valid patents.
Continue reading

Published on:

by

The plaintiff filed a patent infringement action against the defendant in the Northern District of Illinois after licensing negotiations fell apart. Defendant, a Delaware corporation, with its principal place of business in Michigan moved to dismiss for lack of personal jurisdiction or, in the alternative, to transfer. The district court granted defendant’s motion to dismiss, finding that it lacked personal jurisdiction over the defendant, but it permitted plaintiff to amend the complaint.

The plaintiff, operating out of Illinois, owned four patents pertaining to laser-etching technology, which is used to etch patterns and effects onto a wide range of materials, including fabrics and leather. Defendant sold leather for use in automotive interiors for distribution throughout the United States, including in the district. The parties had worked together since 2004, with the goal of selling leather etched with plaintiff’s technology to automotive companies. In 2009, the plaintiff sent defendant some samples on a new etching which the plaintiff alleged defendant converted for its own use and sold to an automotive company. Ultimately, the parties began to negotiate a license to resolve these issues, among others. As part of these negotiations, the parties exchanged e-mails and negotiated by telephone as well. When the negotiations ceased, the plaintiff filed suit for patent infringement, breach of a non-disclosure agreement, and trade secret misappropriation, among other claims. The defendant moved to dismiss or transfer venue.
Continue reading

Published on:

by

In a recent case from the United States District Court for the Northern District of California, the district court granted a defendant’s motion to compel an interrogatory response where the infringement contentions were inadequate to put the defendant on notice of the alleged infringement. The infringement contentions relied on a number of screenshot that referred to a specific configuration file. The defendant argued that the screenshots alone failed to explain how the products as depicted allegedly met the limitations of the asserted claims and that the citations to the documents accompanying the infringement contentions also did not supply the missing information.

The defendant served an interrogatory seeking the missing information. The plaintiff refused to respond to any portion of the interrogatory, asserting that its amended infringement contentions contained screenshots that showed the products at each stage of the infringing processes and that the claim charts also contained a detailed narrative and citations to show the infringing processes. The defendant disagreed, arguing that neither the screenshots nor the narrative disclosed the particular configurations of the accused products and were meaningless without an understanding of the custom configuration of the accused products that were used to produce the screenshots.
Continue reading