Articles Posted in District Courts

After it prevailed on a motion for judgment on the pleadings, ShopperChoice argued that no reasonable patentee in the plaintiff’s position could have believed that Claim 11 of 261 patent covered patent eligible subject matter at the time suit was filed. ShopperChoice based its argument on the prior opinion of a California Federal District Court, which invalidated claims of patents in the ‘261 patent’s family based on the finding that they were directed to “the abstract idea of asking people, based on their location to go place[]s,” and implemented with only “‘generic computer[s]’” that did not transform the claims into patent eligible subject matter. McKinley, 2014 WL 4407592, at *11 (quoting Alice, 573 U.S. at 223, 134 S. Ct. 2347). ShopperChoice also noted that three years later, in True Grit, a sister court in the Central District of California cited McKinley as authority for invalidating Claim 11 of the ‘261 patent – the same patent and claim as that at issue in the instant suit — finding that this claim “suffers from the same type of obvious defect as the asserted claims in McKinley.” Continue reading

In this patent infringement action, DUSA Pharmaceuticals, Inc. (“DUSA”) sought to strike the testimony of Biofrontera’s expert witness, Professor Harry Moseley, for his reliance on a non-infringing alternative, the Paterson lamp. DUSA asserted that the testimony should be stricken because the Paterson lamp had never been available in the United States.

The district court explained that the Paterson lamp was designed and built by the Paterson Institute in the United Kingdom in the early to mid-1990’s and that five articles describing the Paterson lamp were published in the United States, but there was no evidence that the lamp was ever sold, used, or exhibited in the United States. “Based on his personal involvement in the creation of the Paterson lamp, Professor Moseley testified to its composition and functionality. In particular, Professor Moseley identified the lamp’s desired treatment distance as 4 inches, a parameter not explicitly disclosed in the published references.”

DUSA challenges the testimony as impermissible (attempting to back-fill gaps in the Paterson lamp references) and as untimely. Biofrontera responded that Professor Mosleys’ testimony was admissible evidence of prior art and that the parties had agreed to modify the expert discovery schedule to give DUSAs expert witness, Dr. Zamenhof, an opportunity to submit a supplemental declaration. Continue reading

Plaintiff Midwest Athletics and Sports Alliance LLC (“MASA”) filed a patent infringement action against Ricoh USA, Inc. (“Ricoh”) alleging infringement of certain printing-related patents. Ricoh sought production of certain categories of documents that MASA contended were privileged and, therefore, not subject to disclosure. Ricoh contended that the documents are responsive to its requests, which seek documents related to MASA’s acquisition of the patents from Kodak and various communications with litigation funding companies, for which MASA asserted a common interest privilege.

The district court explained that “the common interest doctrine protects parties, with shared interest in actual or potential litigation against a common adversary, from waiving their right to assert privilege when they share privileged information.” Gelman v. W2 Ltd., No. 14-cv-6548, 2016 WL 8716248, at *3 (E.D. Pa. Feb. 5, 2016) (quotation omitted). Unlike joint representation, the common interest exception “comes into play when clients with separate attorneys share otherwise privileged information in order to coordinate their legal activities.” In re Teleglobe, 493 F.3d at 359. The legal activities may be litigation or transactional matters, but “the privilege only applies when clients are represented by separate counsel.” Id. at 365. Continue reading

In this patent infringement action, the plaintiff’s counsel deposed one of the defendant’s (DJO) Fed.R.Evid. 30(b)(6) witnesses during a deposition that took place remotely.  At the remote deposition, counsel questioned the witness regarding a license agreement and a privileged letter that was apparently appended to the license agreement.  Plaintiff then contended that any objections to the privileged nature of the letter were waived and that the waiver should be not just to the letter but also to the subject matter of the letter.

To analyze the waiver issue, the district court addressed whether DJO took appropriate steps to claw back the privileged letter.  DJO contended that it did promptly take reasonable steps to rectify the error, explaining that, because the deposition was remote and the letter was attached to many other non-privileged documents, DJO’s counsel could not tell from the remote display of the document whether the letter had been intentionally produced.  Although Mr. DJO’s counsel did not assert privilege over the letter during the deposition or after the letter was discussed, DJO identified the letter as inadvertently produced and requested the destruction of the letter and related testimony “within hours” of the deposition’s conclusion. Continue reading

In this patent infringement action, the plaintiffs sought to exclude the defendant’s expert on invalidity and infringement. One of the grounds on which they sought to exclude the testimony was based on bias. The plaintiffs contended that the expert’s bias stemmed from his belief that he invented certain of the technology at issue, which the plaintiffs disputed and which they asserted would motivate him to form opinions that are not based on facts.

In analyzing the issue, the district court noted that “[a]n expert’s alleged bias, however, is not a proper basis on which to exclude his or her testimony under Daubert or Rule 702. See Cage v. City of Chicago, 979 F. Supp. 2d 787, 827 (N.D. Ill. 2013) (collecting cases); Baldwin Graphic Sys., Inc. v. Siebert, Inc., No. 03 C 7713, 2005 WL 4034698, at *3 n.3 (N.D. Ill. Dec. 21, 2005) (“[A]lleged bias is fodder for cross-examination and impeachment, not a ground for exclusion [of expert testimony].”). Any bias on the part of a witness would go to the weight of a specific opinion, not to its admissibility. See Cage, 979 F. Supp. 2d at 827 (citing DiCarlo v. Keller Ladders, Inc., 211 F.3d 465, 468 (8th Cir. 2000)).

Accordingly, the district court denied the plaintiffs’ motion to exclude the expert’s testimony on invalidity and infringement.

Neurografix v. Brainlab, Inc., Case No. 12 C 6075 (E.D. Ill. July 6, 2020) Continue reading

Raffel Systems, LLC (“Raffel”) filed a patent infringement action against Man Wah Holdings (“Man Wah”).  Man Wah moved to dismiss the patent claims on the ground that Raffel did not possess title to the patents at the time the lawsuit was filed and therefore lacked standing to sue.

As explained by the district court, Man Wah asserted that Raffel lost title to the patents when Raffel mortgaged its patents to obtain loans with PrivateBank and East West Bank. Man Wah relied on the U.S. Supreme Court case of Waterman v. Mackenzie, 138 U.S. 252 (1891) for its position that because Raffel granted PrivateBank and East West Bank security interests in its patents and the banks recorded their security interests with the USPTO, this transferred title in the patents from Raffel to the banks.

In opposition to the motion, Raffel argued that its agreements with the banks are nothing more than standard security agreements granting the banks a security interest in the patents, not a conveyance of title. Continue reading