Articles Posted in E.D. Texas

Published on:

by

Plaintiff Personal Audio, LLC (“Personal Audio”) filed a patent infringement action against Apple, Inc. (“Apple”) over two patents, which teach an audio program player that will play a sequence of audio program files and accept commands from the user to skip forward or backward in the sequence. After a jury trial, the jury found that the patents were infringed and awarded damages of $8 million in the form of a lump sum royalty.

After the jury verdict, Personal Audio moved for an award of ongoing royalties pursuant to 35 U.S.C. § 283. The district court denied the motion. The district court found that “the jury’s lump sum damages award represents a fully paid up license for all past and future sales of Apple products that incorporate the patented technology. The court finds that the $8 million lump sum awarded by the jury adequately compensates Personal Audio for both past and future infringement, and therefore no ongoing royalty award is necessary.”
Continue reading

Published on:

by

In a recent case in the United States District Court for the Eastern District of Texas, the court denied defendants’ motion to transfer the case to the District of New Jersey. The court’s analysis focused primarily on whether the case could have originally been filed in the District of New Jersey. The court began its analysis by noting that 28 U.S.C. § 1404(a) provides that “[f]or convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.”

Recognizing that the “first determination to be made under § 1404(a) is whether the claim could have been filed in the judicial district to which transfer is sought,” the court stated that the “‘critical time’ when making this threshold inquiry is the time when the lawsuit was filed.” Plaintiff contended that the matter could not have been filed in New Jersey initially because two of the defendants were not subject to personal jurisdiction in New Jersey. Defendants responded that the action could have been filed in New Jersey because the defendants consented to personal jurisdiction in New Jersey and were indemnified by another defendant, which was based in New Jersey.
Continue reading

Published on:

by

Plaintiff brought a patent infringement action alleging direct infringement of a single patent. The defendant, a corporation, sought an extension of time to respond to the complaint through a request from its CEO. Because corporations cannot represented themselves and must instead be represented by a licensed attorney, the district court denied the requested extension and ordered the defendant to answer within 30 days. A few months later, the CEO of the defendant filed an extension request in order to complete a re-examination of the plaintiff’s patent even though there was no re-examination request pending before the Patent and Trademark Office. The defendant still had not filed an answer to the complaint.

In response, the plaintiff requested that the district court enter a default judgment against the defendant and to set a hearing to determine the appropriate amount of damages to be awarded to the plaintiff and whether a permanent injunction should issue. More than a week later, the defendant, through an attorney, filed an answer to the complaint. Plaintiff moved to strike the answer because the defendant had failed to seek leave of court to files its late answer. The district court denied plaintiff’s motion and permitted the defendant to answer the complaint.
Continue reading

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

Defendants moved to transfer a multi-defendant patent infringement case from the Eastern District of Texas to the Eastern District of Michigan. The defendants asserted that transfer was appropriate under 28 U.S.C. §1404(a) due to factors of convenience. The plaintiff opposed the motion on the ground that the defendants had not shown that the case could have originally been filed in the Eastern District of Michigan. The court agreed with the plaintiff and denied the motion to transfer.

The court began its analysis by examining whether the action could have originally been filed in the Eastern District of Michigan. Noting that “[w]ell established authority makes clear that a transferee court must have specific jurisdiction over the defendants in the transferred complaint,” the court found that the moving parties had not established that the case could have been brought in Michigan. The court stated that the moving parties had attempted to establish jurisdiction over all the defendants in Michigan by arguing a stream of commerce theory, i.e., that defendants products were sold in the state of Michigan.
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

In a recent decision from the United States District Court for the Eastern District of Texas, the court granted in pat and denied in part plaintiff’s motion to exclude the expert testimony of defendants’ damage experts. Plaintiff argued that the opinions of defendants’ experts were unreliable and used flawed methodologies because they failed to establish that the license agreement upon which their analyses were based were comparable to the technology of the patent-in-suit.

With respect to defendants’ first expert, the district court noted that the expert had not attempted to establish a link between the technology underlying the first license and the technology underlying plaintiff’s patent. But the court noted that the expert testified he had relied upon the defendants’ technical expert to learn than that the technology in the first license agreement is more important, in the opinion of the technical expert, than the technology covered by plaintiff’s patent. The court found that this testimony and reliance was sufficient to provide a link between the technology underlying the first license and that underlying plaintiff’s patent and, accordingly, denied that part of the motion.
Continue reading

Published on:

by

Defendant contended that several claims of a patent were indefinite under 35 U.S.C. §112, ¶2. The defendant argued that the term “engine for” should be construed under §112, ¶6 because engine is only discussed in functional terms. The defendant also argued that the term “engine for” did not connote sufficient structure because it does not have a well understood meaning in the art. The district court disagreed with both points and denied the motion for summary judgment.

The patent in the case involved the creation of a web-based database application that used a data dictionary. The patent teaches that the data dictionary eliminates the need for a programmer or web-developer, which reduces the cost and time associated with creating a web-based data application. Certain claims of the patent recited “an engine for” performing various tasks, such as “determining and storing” or “building and/or updating and/or running an application.” The defendant contended that the “engine for” limitations were indefinite and should be construed as means-plus-function claims. It also contended that the “engine for” terms did not recite particular algorithms that performed the functions and were therefore indefinite.
Continue reading

Published on:

by

In a recent decision from the Eastern District of Texas, the court allowed the testimony of an expert witness on the entire market value theory even though the expert did not provide evidence of consumer demand. The court found that the expert could use the entire market value theory of the accused products in calculating the reasonable royalty because it was economically justified.

The court began by noting that the “entire market value rule” allows for the recovery of damages based on the value of an entire apparatus containing several features, when the feature patented constitutes the basis for the customer demand. Defendants moved to exclude plaintiff’s expert on the ground that the patented feature of the accused product had not been shown to provide the basis for consumer demand. The defendants also argued that it was largely undisputed that, in fact, the patented feature did not provide the basis for the consumer demand of the accused product. The plaintiff argued that the expert was justified in calculating a reasonable royalty based on the entire market value of the accused products as that is the industry standard and because nearly every comparable license in the case was based upon a percentage of the total accused product (or licensed product) sales price.
Continue reading

Published on:

by

In the first district court case applying the Federal Circuit’s new standard for proving inequitable conduct, the United States District Court for the Eastern District of Texas concluded that defendants had failed to prove by clear and convincing evidence that the patents-in-suit were unenforceable due to inequitable conduct.

The case was tried to a jury and the jury returned a verdict finding, among other things, that the asserted claims were invalid. After that finding, the defendants filed a motion arguing that the first inventor committed fraud on the Patent Office by withholding material prior art with an intent to deceive.
Continue reading