Articles Posted in District Courts

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In yet another multi-defendant case, a district court has severed defendants from a patent infringement suit brought by a plaintiff against many defendants. In this case, the plaintiff brought suit against eleven defendants for infringing the same four patents. The district court granted defendants’ motion to sever because the plaintiff did not allege that the defendants were engaged in the same transaction or occurrence.

The court began by noting a number of decisions that granted severance under Ninth Circuit precedent and it sharply distinguished cases from the Eastern District of Texas that denied motions to sever because those cases followed a different rule than what the Ninth Circuit employs. Based on Ninth Circuit law, the court found that the motion to sever should be granted because the defendants had not engaged in the same transaction or occurrence or series of transactions or occurrences. The fact that the defendants were allegedly infringing the patents in a similar way was not sufficient. The court stated: “”Plaintiff has not alleged that the Defendants have engaged in the same transaction or occurrence or series of transactions or occurrences. Rather, Defendants are accused of infringing the patents in similar ways, but not as part of the same transaction or occurrence or series of transactions or occurrences.
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The multitude of multiple defendants in patent infringement suits continue to increase on a daily basis. But some district courts are putting a stop to the practice, at least in certain circumstances, by severing defendants that are misjoined. In a recent case in the Central District of California, the court granted a motion to dismiss for misjoinder when a plaintiff filed a patent infringement action against three unrelated companies for dissimilar products.

The court found that dismissal of all but the first named defendant was appropriate to eliminate the prejudice to the other defendants, i.e., by allowing each defendant to prepare their own defense instead of requiring them to jointly defend an action that involves very different products. The court also found that “dismissal will remedy the burden resulting from one judge presiding over a single action that consists of three separate and distinct cases.”
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On April 7, 2011, the United States District Court for the Eastern District of Wisconsin denied plaintiff’s motion for summary judgment of direct infringement. Plaintiff’s patent, focused on graphics cutting, contained method claims that the district court concluded were not directly infringed. The district court concluded that even if defendant’s software product contained an infringing search function, there was still no direct infringement because the defendant disabled that function when it sold the software. The district court reached this conclusion even though a user or customer could enable the infringing function. “[T]he question is whether the claims read on a device that contains source code for searching, even if that code has been disabled. . . . Nothing in [plaintiff’s] apparatus claims suggests that a device that contains disabled source code for searching is within the scope of the claims. The claims are not drafted in terms of software components but in terms of the actual function of the apparatus. . . . When the code for searching is disabled, the device does not perform [plaintiff’s] methods, and thus sales of the device with the code for searching disabled is not direct infringement.”

This type of decision once again heightens the importance of including apparatus claims that closely track the method claims, if possible. Here, an apparatus claim was included but it was significantly different than the method claim. An apparatus claim that tracked the method claim would likely have survived the analysis of the district court.

The case is Mikkelsen Graphic Engineering, Inc. v. Zund America, Inc., Case No. 2-07-cv-00391 (E.D. Wis. April 7, 2011 (Adelman, J.)

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On March 31, 2011, the United District Court for the Eastern District of Texas (Judge Ward) entered a judgment against Johnson & Johnson and Cordis Corporation in the amount of $583 million. The judgment stems from a patent infringement action filed by Bruce Saffran, M.D., Ph.D. against Johnson & Johnson and Cordis over drug eluting stents (this is not the first time Dr. Saffran has won a large patent case against a medical device maker for drug eluting stents as he previously prevailed on a case against Boston Scientific for over $400 million which has since settled).

In upholding the jury verdict, the Court found that, based on the Court’s earlier claim construction (which the Court declined to reconsider), there was sufficient evidence to support the jury verdict of patent infringement. In reaching this conclusion, the Court noted the testimony of plaintiff’s expert and found that a reasonable jury could have relied on the testimony of plaintiff’s expert and that was sufficient to support the finding of infringement.

The Court also rejected defendants’ challenge to the validity of the patent and also noted that the parties had stipulated to use a preponderance of the evidence standard for prior art that was not before the patent office in light of the i4i v. Microsoft case that is currently pending before the United States Supreme Court. Such a strategic decision by the plaintiff eliminate a potential ground for reversal of this award in the event that the United States Supreme Court changes the burden of proof for validity challenges.

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On April 4, 2011, the District Court for the Eastern District of Texas set aside a jury verdict of $625 million in favor of Mirror Worlds and against Apple, Inc. Mirror Worlds, LLC v. Apple, Inc., Case No. 6-08-CV-88 (E.D. Tex. April 4, 2011) (Judge Davis). The Court set aside the jury’s finding of infringement because Mirror Worlds failed to prove that Apple directly infringed Mirror Worlds’ patents because Mirror Worlds did not present evidence that Apple performed the steps detailed in the method claims.

The Court found that it was insufficient to show that Apple sold software that could perform the steps; rather, the Court held that Mirror Worlds needed to prove through appropriate evidence that Apple performed each and every step of the method claimed in the patent, i.e., that Apple itself used the methods claimed in the patent. As Mirror Worlds failed to proceed on that theory–and relied instead on mere sales of software–there was not sufficient evidence to support the jury verdict.

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