Articles Posted in E.D. Texas

Plaintiff Imperium (IP) Holdings, Inc. (“Imperium”) filed a patent infringement action accusing eight defendants of infringing several patents. With respect to Apple, Imperium asserted that Apple infringed all of the patents-in-suit and listed the iPhone 3G, specifically. Imperium subsequently provided detailed claim charts setting forth Imperium’s theory of infringement in relation to an exemplary device and also identified other devices with image sensors and image processors believed to infringe the asserted claims of the patents in suit in the same or substantially similar manner.

Imperium later moved for leave to amend its infringement contentions to add 74 additional products. In support of this motion, Imperium asserted, according to the district court, “[o]n May 25, 2012, Plaintiff contracted with UBM Techlnsights to obtain access to its Information Retrieval Insights System (“IRIS”) for a sum of twenty-five thousand dollars ($25,000). IRIS could provide the identity of the image sensors and processors that are incorporated into many, but not all, of Defendants’ devices. Upon receiving access to IRIS, Imperium immediately began utilizing IRIS to identify the image sensors in Defendants’ products. Through IRIS, Plaintiff identified 74 additional products containing image sensors and/or image processors manufactured, used, sold, offered for sale, and/or imported by Defendants that Plaintiff asserts infringe the patents-in-suit in the same manner as the products previously identified.”
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In this patent infringement action between Eon Corp. (“Eon”) and Alcatel-Lucent (“ALU”), among others, Eon served patent infringement contentions, which were repeatedly challenged by ALU and other defendants. As part of this process, Eon filed a further amended complaint against ALU alleging indirect infringement. In this amended complaint, ALU did not include any products by name. Eon subsequently filed a motion seeking leave to amend its infringement contentions against ALU to include seventy-six products, seventy-two of which were not included in its initial infringement contentions.

When ALU moved to strike these contentions, the court was not persuaded that the original proposed infringement contentions satisfied Local Patent Rule 3-1 because although they named infringing networks they did not show how ALU’s accused products were used in those particular networks. As a result, the court ordered Eon to modify its infringement contentions to show how particular ALU products were used in an infringing network. Eon subsequently served amended infringement contentions against ALU pursuant to the court’s order, which included more than twenty new ALU products that were not disclosed in the prior amended infringement contentions. The court then ordered the removal of the new ALU products, which Eon did a few months later.
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Plaintiff Oasis Research, LLC (“Oasis”) filed a patent infringement action against twelve defendants alleging infringement of four patents. Generally, the patents claim methods for allowing a home computer user to remotely connect to an online service system for external data and program storage in addition to increased processing capabilities in exchange for a fee. Oasis claimed that the defendants infringed the patents-in-suit by providing online backup and storage services.

Defendants asserted that joinder was not proper because Oasis had joined different defendants with different products. In May 2011, the court entered a report and recommendation denying the defendants’ motion to dismiss for misjoinder, severance and transfer. The district court adopted the recommendation. After a petition for a writ of mandamus to the Federal Circuit, the Federal Circuit granted the writ, finding that the district court had applied the wrong test and remanded for the district court to apply the correct test: “Since the district court here applied an incorrect test, the district court’s ruling must be set aside, and the issues of severance and joinder considered under the proper standard. We therefore grant the petition to the limited extent that we vacate the district court’s order denying the motions to sever and transfer, and direct the district court to reconsider those motions in light of the correct test.”
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The plaintiff filed a patent infringement action against several companies, including Apple, asserting infringement of its 6,502,135 patent (the “‘135 patent”). The ‘135 patent claims systems and methods that create a VPN based on a DNS request. The plaintiff claimed that Apple attempted to patent identical ideas in its own patent application, application no. 10/940,225 (the “‘225 application”). During discovery, the plaintiff noticed the deposition of Mr. Christopher Allie, an engineering manager at Apple who worked on Apple’s VPN on Demand and who is listed as a named inventor on the ‘225 application.

During the deposition, Mr. Allie testified that he had no knowledge of the ‘135 patent and had never seen it before. The witness was then asked to review claim 1 of the patent and, after doing so, plaintiff’s counsel asked him if he still thought Apple was the first to come up with the idea of determining whether to establish a VPN based on a domain name request. To that question, Apple’s counsel objected–with a speaking objection–stating that the witness should be given an opportunity to review and analyze the patent before answering. The witness then testified that he could not state whether there was overlap between the two patents.
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Plaintiff Soverain Software alleged infringement of patents relating to e-commerce transactions over the Internet involving the use of a shopping cart and online statements. The claims at issue required a system with a client-side buyer computer that was programmed to receive requests.

Defendants contended that they were entitled to judgment as a matter of law of non-infringement because they did not put the entire claimed system into use, citing Centillion Data Sys., LLC v. Quest Comm. Intl., Inc., 631 F.3d 1279 (Fed. Cir. 2011) (holding that the use of a system for purposes of infringement required a party to “control the system as a whole and obtain a benefit from it” but that “supplying the system software for the customer to use is not the same as ‘using’ the system”). The patented system in Centillion required that the client-side buyer computer be adapted to perform additional processing using Quest software that the user had to download and install on their computer.

Defendants argued, as did Quest in Centillion, that they did not use the claimed system because they did not use a client-side buyer computer that was programmed to receive requests. The court rejected this divided infringement argument and made a key distinction with Centillion:
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The plaintiff filed several patent infringement actions against different defendants in the Eastern District of Texas. Because of the America Invents Act (“AIA”), the plaintiff filed the actions separately. The district court scheduled a combined scheduling conference for the separate cases and prior to the scheduling conference requested that the parties address procedures for consolidation given the administrative burdens placed on the parties and the courts due to the new joinder provisions of the AIA.

As the district court explained, “Congress has recently addressed the issue of joinder in patent cases in section 19 of the Leahy-Smith America Invents Act, which was signed into law in September 2011. . . . In particular, the new joinder provision provides that accused infringers may be joined in one action as defendants, or have their actions consolidate for trial, only if the allegation of infringement arise out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process.”
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In this patent infringement action, the district court analyzed the parties’ disputes regarding whether a protective order should include a provision to restrict the transmission of center sensitive documents outside of the United States. The defendants requested a provision in the protective order that would preclude the transmission of highly confidential information outside of the United States and that would preclude the transmission of confidential information outside of the United States, except for disclosure to principals and employees of a party who agreed to be bound to the protective order and would also agree to submit to the district court’s jurisdiction.

Defendants’ requested the restriction due to the highly sensitive information:

Defendants argue that the above restrictions should be imposed because of the “extremely sensitive nature of the Protective Material, the heightened risk of an inadvertent or intentional discloser in a foreign jurisdiction beyond this Court’s reach and the myriad of jurisdictional and enforcement issues, practical and legal, that would arise in the event of a breach.” Specifically, Defendants take issue with Plaintiff’s plan to outsource litigation services to overseas vendors. In support of a complete bar on overseas transmission, Defendant point to a situation in an unrelated case before Judge Everingham in the District where a security breach occurred at an overseas third party vendor potentially causing sensitivity information to be leaked despite the existence of a protective order. See id. At 16 (citing Versata Software, Inc. v. SAP America, Inc., et al., Civ. No. 2:07-cv-153, Doc No. 572, slip op. at 13 (E.E. Tex Sept. 9, 2011)).
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Pact XPP Technologies (“Pact”) filed a patent infringement action against Xilinx, Inc. (“Xilinx”) and other defendants. Xilinx filed a motion to exclude Pact’s expert’s testimony on inducement. Pact claimed that the defendants induced Xilinx customers to infringe the asserted patents and presented expert witness to offer an opinion that Xilinx actively induces infringement, which in part relied on consumer survey evidence.

The court began it analysis by noting that “[a]n expert witness may provide opinion testimony if ‘(a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issues; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case.’ Fed. R. Evid. 702. A trial court is ‘charged with a ‘gatekeeping role,’ the objective of which is to ensure that the expert testimony admitted into evidence is both reliable and relevant.’ Sundance, Inc., v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1360 (Fed. Cir. 2008).
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