Articles Posted in E.D. Texas

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Plaintiffs Ericsson Inc. and Telefonaktiebolaget LM Ericsson’s (“Ericsson”) filed a motion to compel discovery of source code and technical documents, pursuant to Local Patent Rule 3-4 in the Eastern District of Texas. As explained by the district court, Patent Local Rule 3-4 requires the party opposing a claim of infringement to produce or make available “[s]ource code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its P. R. 3-1(c) chart.”
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The district court had previously ordered plaintiffs to produce certain documents to the extent that documents containing communications between plaintiff and its non-attorney patent agents were not subject to the attorney-client privilege. The district court ordered a one-week stay to allow the filing of any appeal. Rather than producing the documents in compliance with the order, the plaintiffs filed a petition for Writ of Mandamus with the United States Court of Appeals for the Federal Circuit.

The district court elected to stay plaintiffs’ production “pending disposition of the petition or other order of the Court of Appeals” and that production remained stayed pending resolution by the Federal Circuit. “A failure to stay the production would have forced the Circuit to consider an emergency motion to stay. Plaintiffs knew that their decision to forego compliance with the discovery order endangered the trial date.”
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Defendants Motorola Mobility, LLC, Amazon.com, Inc., Apple Inc., Huawei Technologies Co., Ltd., Huawei Device USA, Inc., HTC Corp., HTC America, Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Defendants”), filed a Joint Renewed Motion for Judgment on the Pleadings Declaring All Asserted Patent Claims Invalid Pursuant to 35 U.S.C. § 101. The Plaintiff ContentGuard Holdings, Inc. (“ContentGuard”) opposed the motion arguing that the claims were patentable.

The district court began by explain that: At a high level, the Stefik Patents are generally directed toward systems and methods for controlling the use and distribution of digital works in accordance with “usage rights” through the use of “trusted” systems. See claim 1 of the ‘007 Patent (“sending the digital content . . . to the at least one recipient computing device only if the at least one recipient device has been determined to be trusted”). The Court construed “trusted” to require that three types of “integrities”–physical, communication, and behavioral–be maintained. Similarly, the Nguyen Patents are generally directed toward systems and methods for controlling the use and distribution of digital works in accordance with “usage rights”–and more particularly, “meta-rights”–through the use of “trusted” systems.
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The court had previously stayed a cased pending between Smartflash LLC and Amazon and simultaneously declined to stay an earlier-filed case between Smartflash LLC and Apple, Inc. because the stay request came after a jury trial. The court was perplexed that despite Apple’s argument for a stay in the first case well after conclusion of a jury trial, Apple had “curiously not requested a stay in this case even though CBM review has been instituted on all but one of the asserted patents.”

The court then found that “[a]lthough the Court denied Apple’s motion to stay in the earlier Apple case, this case is procedurally more similar to the Amazon case. This case involves the same asserted patents at the Amazon case. As with Amazon, this case is in its very early stages; the court has not yet held a scheduling conference. Similarly, substantial opportunities remain for cost-savings and issue simplification.”
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Mobile Telecommunications Technologies, LLC (“Mobile”) filed a patent infringement action against LG Electronics Mobilecomm U.S.A. (“LG”). As trial approached, LG filed a motion to disqualify Mobile’s infringement expert, Dr. Bims, on the grounds of conflict of interest arising from his retention by LG to serve as its expert in connection with two ITC proceedings in 2011-2012.

LG asserted that the ITC proceedings related to the same products accused by Mobile in this case. Mobile responded by arguing that Dr. Bims’ contract with LG expired in February 2015, before his retention by Mobile in March 2015 and that the subject of his work during the ITC proceedings did not relate to his current work for Mobile in this case.
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Defendants LG Electronics Inc. and LG Electronics U.S.A., Inc. (collectively, “LG”) filed a motion to clarify the district court’s order transferring the case to the district of New Jersey, seeking a ruling that the court’s deadlines were suspended in view of the transfer order. The district court had granted LG’s motion to transfer on § 1404(a) convenience grounds.

Prior to the transfer order, the district court had entered a scheduling order that set a number of deadlines through trial, including a deadline for LG’s Responsive Claim Construction brief. LG’s motion asked the court to find that the transfer order suspended all pending deadlines.
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Defendants filed an emergency motion to stay the case pending an appeal of the PTAB’s decision that invalidated all of the asserted claims in the patent-in-suit. Earlier in this case, Defendants had petitioned for inter partes review (“IPR”) of all of the claims at issue in the patent. The PTAB granted review, and the Defendants subsequently moved for a stay pending completion of the IPR.

Although the court acknowledged that the IPR process had the potential to simplify issues for trial, the court determined “that a stay was not justified because the parties had made significant progress toward trial and a stay would deny the Plaintiff an expeditious resolution of its patent rights.” As a result, the litigation and the IPR proceeded concurrently.
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Defendants filed a motion to compel Adaptix to re-produce documents that Adaptix had clawed back on the grounds of privilege. Adaptix had early produced the documents in several productions. The Defendants argued in the motion that even if Adaptix could demonstrate the documents are privileged, Adaptix waived the privilege because Defendants had notified Adaptix that they were relying on the documents at least nine months before Adaptix sent its clawback letter. Defendants pointed out that they had relied on information disclosed in the documents in depositions, expert reports, and briefing, all without any objection from Adaptix.

In response, Adaptix asserted that its data vendor erroneously produced the documents to Defendants without Adaptix knowledge even though they had been properly tagged as privileged. Adaptix also asserted that the documents fell within the protections of the attorney client work product doctrine because they pertained to testing that was performed for purposes of litigation at the direction of Adaptix’s attorneys. Adaptix then argued that it was only in March of 2015 that it “eventually realized the error of Defendants’ access to the documents at issue and promptly sent a letter clawing them back.”
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Defendant Murphy USA Inc. (“Murphy”) filed a motion for summary judgment of invalidity as to certain claim U.S. Patent No. 6,076,071 (“the ‘071 Patent”) and one claim of U.S. Patent No. 6,513,016 (“the ‘016 Patent”) on the grounds that the patents are directed to non-patentable subject matter under 35 U.S.C § 101. In its motion, Murphy contended that “[t]he Asserted Claims, directed to an ‘automated product pricing system,’ cover nothing more than the abstract idea of changing prices from a central location using known electronic components, and are not patent-eligible under § 101.” Murphy also presented a chart of one of the claims to demonstrate why each discrete claimed “principle” is purportedly accomplished in a conventional manner.

The district court began its analysis by noting that”[p]atent claims enjoy a presumption of validity. 35 U.S.C. § 282. Beyond listing the claimed elements in a column entitled ‘Abstract Commercial Principle,’ Defendant has failed to articulate convincingly why it believes the ‘automated product pricing system’ of the Asserted Claims is considered abstract under the law. By evaluating Claim 24 of the ‘071 Patent as a whole, the court concludes the Asserted Claims are not abstract under the law.”
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Defendants sought to exclude the testimony of Plaintiff’s expert Joseph C. McAlexander III in its entirety because he lacked the appropriate technical background. In their motion, Defendants alleged that Mr. McAlexander’s testimony was inadmissible because he did not meet the requirements of one of ordinary skill in the art.
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