Articles Posted in E.D. Texas

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Defendant, Xilinx, Inc. (“Xilinx”), identified and disclosed an employee as an expert pursuant to Fed.R.Civ.P. 26 and submitted several disclosures for the employee expert as well. Plaintiff moved to exclude the employee expert’s disclosures on grounds of (a) improper hearsay, (b) undisclosed opinions regarding prior art, (c) unreliable opinions, (d) improper opinions regarding defendant’s licensing practices and (e) as an improper attempt to remedy defendant’s improper invocation of the attorney-client privilege during the employee expert’s deposition. The court denied the motion on each of these grounds.
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In this patent infringement action pending in the Eastern District of Texas between SimpleAir and a number of defendants, including Apple, the defendants filed a motion in limine to preclude SimpleAir from referencing the revenue or profits associated with Defendants’ products or Defendants’ overall economic status, profitability, or relative financial strength. In ruling on the motion in limine, the district court granted the motion in part and denied the motion in part.

The defendants apparently filed the motion in limine to prevent the plaintiff from trying to influence the jury on liability and damages by merely referencing defendants’ financial strength and profitability. The district court granted the motion in part, ordering that SimpleAir would be prohibited from discussing the total revenue or profits of defendants’ products. The district court did permit, however, SimpleAir to discuss the incremental change in revenue, but only to the limited scope the expert addressed it in his expert report.
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Plaintiff, Round Rock Research (“Round Rock”), filed a motion to compel non-infringement contentions from Defendant Dell (“Dell”) and Dell moved to limit the number of asserted complaints brought by plaintiff. Round Rock asserted ten patents against 125 products of Dell and Dell contended that Round Rock had asserted approximately 82 claims from the ten patents-at-issue. As a result, Dell asserted that the large number of claims was unmanageable for claim construction, fact discovery, expert reports, depositions and trial.

In considering Round Rock’s motion to compel non-infringement contentions, the district court noted that the plaintiff requested a response to its interrogatory seeking Dell’s non-infringement contentions. In response, Dell asserted that the interrogatory was prematurely seeking its position on claim construction and that the interrogatory was unduly burdensome and unreasonable given the number of claims asserted by Round Rock.
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Defendants filed a motion for summary judgment asserting that all claims of the patent-in-suit was invalid under 35 U.S.C. § 101 because the claims did not satisfy the machine-or-transformation test and otherwise disclosed an abstract idea. The patent-in-suit is directed to a method for computing Current Procedural Technology (“CPT”) from documents generated by physicians. CPT codes are a system of codes developed by the American Medical Association (“AMA”) in conjunction with the Health Care Financing Administration.

The CPT codes provide a uniform language, which facilitates patient billing. The invention allows a CPT code to be calculated based on the documentation process that occurs during the physician-patient meeting. During the meeting, the computer prompts the physician with a list from which the physician chooses particular descriptions that best characterize the patient’s status. All of the claims involve a process for determining CPT codes based on information that is gathered during the physician-patient meeting.
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Plant Equipment (“Plant”) filed a patent infringement action against Intrado over a patent that describes a system and method for routing incoming calls through the use of a central data manager over a wide network to multiple call centers having multiple remote terminals. Intrado provides technology for the 9-1-1 call infrastructure that delivers millions of emergency calls each year throughout the United States. Plant accused Intrado’s 9-1-1 network, called the Intelligent Emergency Network of infringing the Plant patent.

Plant served infringement contentions, which it supplemented a few weeks later at Intrado’s request. Intrado, still not satisfied with the infringement contentions, filed a motion to compel Plant to produce infringement contentions that comply with the Eastern District of Texas’ Local Patent Rule 3-1. Intrado asserted that the Plant contentions merely parroted claim language and used block quotes without specifying components or structures, failed to consistently point to the same structure for one claim limitation (“remote terminal structures”) and failed to explain how customized installations could infringe and explain how such infringement occurs.
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Microsoft and Google sued Geotag in the District of Delaware for a declaration that their customers did not infringe a Geotag patent, “Internet Organizer for Accessing Geographically and Topically Based Information,” and that the patent was invalid. Geotag had sued in excess of 450 companies in the Eastern District of Texas and many of these companies were customers of Microsoft and Google, who provide mapping services that allow interested persons to use the Internet to search for a convenient location of a business.

Geotag moved to transfer the declaratory judgment action pending in Delaware to the Eastern District of Texas. The district court in Delaware analyzed the private and public interest factors pursuant to Section 1404(a) and concluded that transfer was not appropriate.
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In a patent case filed in the Eastern District of Texas by Eon Corporation IP Holdings, LLC (“Eon”) against Cellco Partnership d/b/a Verizon Wireless (“Verizon”), along with other defendants, Eon moved to dismiss Verizon’s inequitable conduct counterclaims and strike its inequitable conduct affirmative defenses. Magistrate Judge Love recommended that Eon’s motion to dismiss be denied because Verizon’s inequitable conduct claim was sufficiently pled.

Verizon’s inequitable conduct was based on two separate instances. First, Verizon alleged that the sole inventor of the asserted ‘491 patent deliberately withheld his earlier patent from the U.S. Patent Office (“PTO”) with the intent to deceive the PTO. Second, Verizon alleged that the ‘491 patent should be found unenforceable under the “infectious unenforceability” doctrine because it was obtained due to Eon’s inequitable conduct of its parent patent application. In denying Eon’s motion, the Magistrate held that Therasense did not substantially alter the pleading requirements and that Verizon sufficiently plead inequitable conduct under the standard set forth in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009).
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Plaintiff TiVo brought an emergency motion to compel production of an e-mail that defendant AT&T produced and then clawed back pursuant to a protective order agreed to by the parties. During a deposition, TiVo marked an e-mail as an exhibit and questioned the deponent for several minutes about the e-mail before AT&T’s counsel demanded that TiVo return the e-mail. AT&T’s counsel explained that the e-mail may be subject to a common interest agreement with a third party. TiVo returned the e-mail pursuant to the parties’ protective order.

TiVo subsequently moved to compel the e-mail arguing that it did not contain attorney-client privileged or work product information. TiVo pointed out that neither the sender nor the recipient are attorneys and the subject matter of the email did not contain legal advice. In addition, the e-mail was created for a business purpose and not for purposes of litigation and therefore could not be work product. TiVo also argued that the e-mail was discoverable under the crime-fraud exception because the contents of the e-mail constitute prima facie evidence of an antitrust violation.
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The plaintiff filed multiple patent infringement actions against seven different defendants in many different district courts. The plaintiff moved to centralize the patent litigation in the Eastern District of Texas where there were seven actions pending in five separate districts. The responding defendants all opposed centralization. Based on the briefing before the panel and after a hearing, the panel held that the actions involved common questions of fact and that centralization of the actions would serve the convenience of the parties and witnesses. The panel also found that centralization would promote the just and efficient conduct of the litigation. However, the panel determined that centralization was more appropriate in the Western District of Oklahoma (where one case was pending) rather than the Eastern District of Texas (where three cases were pending).

All seven actions concerned questions regarding the infringement and/or the invalidity of three patents pertaining to “smart meters” that are used to measure energy consumption and to collect those measurements over a wireless communication network. In each action, the plaintiff alleged that the defendant, each of whom are utility companies, use infringing meters covered by the patents. As a result, the panel determined that “[c]entralization will eliminate duplicative discovery, prevent inconsistent pretrial rulings (particularly on claim construction issues), and conserve the resources of the parties, their counsel and the judiciary.”
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Internet Machines LLC (“iMac”) filed a patent infringement action against Alienware Corporation and PLX Technology, Inc. (“PLX”) and several other defendants alleging infringement of two patents pertaining to PCI Express switches. With respect to PLX, iMac moved to compel the production of various sales documentation for all sales of the accused products regardless of whether the products shipped to the United States. PLX produced a sales summary and underlying documents for all PCI Express switches shipped to the United States. PLX declined to produce any additional documentation relating to those switches shipped to international markets.

The primary disagreement centered on whether PCI Express switches which were not shipped to the United States qualify as a “sale” under 35 U.S.C. § 271. iMac contended that all sales, whether shipped domestically or internationally, are still accepted by PLX in its Sunnyvale, California office and therefore count as domestic sales and are relevant for calculating damages.
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