Articles Posted in N.D. California

Plaintiff GPNE Corporation (“GPNE”) filed a patent infringement action against Apple. As part of its case, GPNE wanted to retain two experts, Ghobad Heidari and Kamran Etemad, and Apple objected for two reasons. First, as explained by the court, Apple argued that if Heidari and Etemad are given access to Apple’s confidential information (as would be required for them to act as experts), Apple would suffer extreme prejudice in the marketplace as both Heidari and Etemad are active in patenting mobile technology. Second, Apple argued that the patent prosecution bar within the protective order prohibited Heidari and Etemad from being granted access to its proprietary information, as both men have patent applications now pending before the Patent and Trademark Office.

After citing some recent decisions from the Northern District of California on experts, the court considered the risk to Apple if Heidari were granted access to its confidential information. “Heidari presents precisely the same risks as the expert in Symantec. He is an active consultant in the field at issue. In the very recent past, he has worked for several of Apple’s competitors, and there has been no representation or agreement that he will not do so again in the very near future. Apple points out several ways in which the information to which he would be exposed as an expert in this case could influence his work as a consultant on patent licensing, reverse engineering, and portfolio management, even if he were to make his best efforts to cabin the information off in his mind, and the court finds these concerns persuasive. Furthermore, despite the concerns raised by Apple, GPNE has not identified any unique qualifications or knowledge that make Heidari better suited than any other expert to serve.”
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Plantronics, Inc. (“Plantronics”) filed a patent infringement action against ALIPH, Inc. (“ALIPH”). After expert reports were submitted, ALIPH moved to exclude the expert report of Plantronics’ infringement expert.

At the heart of the action is the fit of ear buds in a human ear. However, the district court found that Plantronics’ expert had done very little infringement analysis in this regard. As the district court explained, “plaintiff’s infringement expert, Professor Katz, did nothing more than try defendants’ products on various (unidentified) ear molds and state that defendants’ products infringed based on conclusory ipse dixit recitations of claim limitations with no explanation or analysis.”
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In this patent infringement action between Emblaze and Apple, Apple filed a motion to stay the case pending the recent grant of certiorari in Akamai v. Limelight Networks. In Akamai, a divided en banc Federal Circuit panel held that Akamai did not have to prove that any Limelight customer directly infringed its patent and that Limelight’s inducement alone is sufficient to prove infringement. In motion to stay, Apple argued that a reversal of the Federal Circuit’s decision could effectively end Emblaze’s case because Emblaze has no proof that any Apple customer directly infringes the method claims at issue.

Emblaze opposed the motion arguing that much of the case would not be subject to Akamai because 10 of the claims in suit are apparatus claims, which Akamai does not address. Emblaze further explained that because Emblaze’s damages theory is not dependent on the number of claims Apple infringes, a reversal in Akamai would substantially change the case.
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PersonalWeb Technologies, LLC (“PersonalWeb”) filed a patent infringement action against Google for infringement of its “Truenames” patents. Google filed a motion for sanctions based on a contention that PersonalWeb systematically deleted relevant emails when it reasonably anticipated litigation. PersonalWeb opposed the motion arguing that it had an email retention policy and timely implemented a litigation hold shortly after the filing of the lawsuit against Google.

In working on its analysis of the motion, the court stated that PersonalWeb’s duty to preserve evidence arose when litigation became reasonably foreseeable. Google asserted that PersonalWeb anticipated litigation no later than June 2011, before it even acquired the patents-in-suit because there were discussions regarding future litigation against major technology companies during weekly lunch meetings. The court agreed that “PersonalWeb probably acquired the patents with an eye toward litigation. However, it is difficult to say that litigation was reasonably foreseeable before PersonalWeb even acquired the thing which would give it standing to sue.”
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Potter Voice filed a patent infringement action against Apple, alleging infringement of U.S. Patent No. 5,729,659 (the ‘659 patent) through Apple products containing Siri. In 2010, Apple acquired a corporation called Siri, Inc., which in 2007 “spun off” from SRI International, the company that invented the Siri product now used on Apple’s iPhone 4S and other Apple products.

As part of its patent infringement action, Potter Voice alleged that Apple willfully infringed the ‘659 patent. In a motion to dismiss, Apple disputed whether the allegations in the complaint adequately pled Apple’s knowledge of the ‘659 patent.
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Flatworld Interactives (“Flatworld”) filed a patent infringement action against Apple Inc. (“Apple”). During the litigation, Apple sought the production of several documents that Flatworld claimed were protected by the attorney-client privilege and the spousal privilege.

In particular, Flatworld asserted the attorney-client privilege and the spousal privilege for certain documents. In analyzing the issue, the district court noted that “[c]ommunications that would have been made for a business purpose are not protected by the attorney-client privilege.” See McCaugherty v. Sifferman, 132 F.R.D. 234, 238 (N.D. Cal. 1990) (“No privilege can attach to any communication as to which a business purpose would have served as a sufficient cause, i.e., any communication that would have been made because of a business purpose, even if there had been no perceived additional interest in securing legal advice. Fisher et al. v. United States et al., 425 U.S. 391, 403, 96 S.Ct. 1569, 1577, 48 L.Ed.2d 39 (1975).”). The district court then concluded that one of the email chains at issue constituted a business communication and therefore, was not protected by the attorney-client privilege.
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After Single Touch Interactive, Inc. (“Single Touch”) and Zoove Corporation (“Zoove”) reached a settlement in their patent infringement action, both parties filed a stipulated motion to vacate the district court’s previous claim construction order. The parties’ settlement agreement provided that they would jointly request that the district court vacate the claim construction order.

In analyzing the parties’ joint request, the district court began by focusing on the United State Supreme Court’s decision in U.S. Bancorp Mortgage Co. v. Bonner Mall P’ship, 513 U.S. 18 (1994) where “the Supreme Court held that appellate court vacatur of district court judgments in the context of settlement agreements should be granted only in ‘exceptional circumstances,’ which ‘do not include the mere fact that the settlement agreement provides for vacatur.’ The Supreme Court emphasized the public interests at stake in considering a request to vacate an order or judgment of the court, stating that ‘[j]udicial precedents are presumptively correct and valuable to the legal community as a whole… not merely the property of private litigants[,] and should stand unless a court concludes that the public interest would be served by a vacatur.’ Id. at 26 (quoting Izumi Seimitsu Kogyo Kabushiki Kaisha v. U.S. Philips Corp., 510 U.S. 27, 40 (1993) (Stevens, J., dissenting)).
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In the continuing battle between Apple and Samsung, Samsung recently filed an emergency motion to stay pending reexamination of an Apple patent. To analyze whether the stay was appropriate, the district court provided an overview of the litigation beginning with the filing of Apple’s complaint against Samsung in April 2011 and noting that in December 2011, the district court declined to enter a preliminary injunction prohibiting Samsung from selling Samsung products which Apple claimed infringed Apple’s design patents.

As explained by the district court, the case went to trial in August 2012, where a jury found that twenty-six Samsung smartphones and tablets infringed one or more of six Apple patents. The jury also found that six Samsung smartphones diluted Apple’s registered iPhone trade dress and unregistered iPhone 3G trade dress. After the trial, the district court ruled on the parties’ post-trial motions and issued nine separate orders, including a ruling on Apple’s motion to permanently enjoin Samsung from importing or selling any of its twenty-six infringing smartphones and tablets. The district court denied Apple’s request for the permanent injunction. The Federal Circuit affirmed the denial of injunctive relief with respect to Apple’s design patents, but vacated the district court’s denial of injunctive relief with respect to Apple’s utility patents and remanded for reconsideration.
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