Articles Posted in N.D. California

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Method Claims Applying Conventional Techniques to a Natural Phenomenon Held to be Patent Ineligible Subject Matter

By Ali Shalchi
The U.S. District Court for the Northern District of California found Sequenom’s patent claims on a prenatal diagnostic method to be invalid and not infringed by Arisoa Diagnostic’s Harmony Test product, because the asserted claims were directed at patent ineligible subject matter. Ariosa Diagnostics, Inc. v. Sequenom, Inc., No. 3:11-cv-06391-SI (N.D. Cal. Oct. 30, 2013). The court, applying relevant Supreme Court cases, including Prometheus and Myriad Genetics, found that the patent claims were based on a routine and conventional use of natural phenomenon and were therefore patent ineligible. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) and Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013).

Sequenom is the exclusive licensee of the patent at issue, U.S. Patent No. 6,258,540 (“‘540 patent”), which it licensed from Isis Innovation Limited. The ‘540 patent is directed at non-invasive prenatal detection methods that are performed on a maternal serum or plasma sample to detect a paternally-inherited nucleic acid of fetal origin. The prenatal diagnosis may include sex determination, blood typing and other genotyping, as well as detection of pre-eclampsia in the mother. The ‘540 patent is based on the discovery in 1996-1997 that cell-free fetal DNA (“cffDNA”) is detectable in maternal serum or plasma samples, such that the process of isolating fetal cells was no longer needed.
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As a result of Samsung’s alleged violation of the protective order, Magistrate Judge Grewal previously ordered Samsung to produce to Apple emails and communications by Samsung employees that would shed light on the scope of the alleged protective order violation and to make available for deposition various witnesses by October 16, 2013. Samsung appealed from the Magistrate Judge’s order to the district court.

Samsung’s motion raised three arguments: (1) the order would “improperly abrogate privilege and work-product protection,” (2) the order may “require Samsung to violate other protective orders,” and (3) the order’s “scope of compelled information is grossly overbroad.” The district court rejected each argument.
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by Ali Shalchi
In Lewis v. Activision Blizzard, Inc., No. 4:12-cv-01096-CW (N.D. Cal. Oct. 17, 2013), an employee of Blizzard brought suit against the company for copyright infringement, alleging ownership of voiceover work used in the popular World of Warcraft online video game. The key issue on Blizzard’s motion for summary judgment of non-infringement was whether an employee’s voiceover work was within the scope of employment and thus a work made for hire. In granting summary judgment, the court applied a three-part test for scope of employment pursuant to the Restatement of Agency.

Defendant Lewis was a Blizzard employee in the role of “game master,” which involves the resolution of technical and customer services issues associated with the online gameplay. Blizzard developers invited the game masters to audition for voiceover work for various game characters. Lewis participated in the audition and developed a voice and song for the game’s aquatic character known as a “baby murloc.” According to Lewis, her belief was that the recording was only to be used for promotional videos. However, upon learning that her voice recording was used in the game itself, she sued Blizzard for copyright infringement. Blizzard argued that the recordings were works made for hire under 17 U.S.C. §201(b) and that, alternatively, it was a joint author of the recordings and was therefore its use was permitted.
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As Apple and Samsung head toward yet another trial, Apple filed a motion for sanctions, accusing Samsung of violating the protective order in the case. Apple’s motion asserted that Samsung’s counsel had improperly shared information under the protective order with executives at Samsung.

The court began its analysis with a discussion of the importance of protective orders: “Time and again in competitor patent cases, parties resist producing confidential information to their adversaries’ lawyers. They fear, among other things, that the lawyers will insufficiently shield the information from the competitors that they represent. Yet time and again, the court assuages these fears with assurances that a protective order will keep the information out of the competitors’ hands. A casual observer might reasonably wonder what magic a protective order works that allows outside counsel access to confidential information to advance the case without countenancing untoward uses by the client. The answer is not a magical one at all: confidential information remains confidential because counsel and clients alike follow court orders. If parties breach this basic rule, the court’s assurances become meaningless. There is reason to believe the rule has been breached in the present case.”
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As this patent infringement action moved closer to trial, the parties filed various motions in limine, including defendant Fortinet Inc.’s motion to strike the report and expert testimony of Network Protection Sciences, LLC’s (“NPS”) damage expert. In its motion to strike, Fortinet contended that the damage expert’s analysis improperly based royalties on the entire market value of the accused products.

To analyze the motion to strike, the district court summed up the entire market value rule as follows: “The entire market value rule — which has varied somewhat in formulation over time — has been a highly-criticized and highly-litigated methodology. In recent years, the Federal Circuit has restricted its use, most notably in LaserDynamics v. Quanta Computer, Inc., 694 F.3d 51, 67 (Fed. Cir. 2012). In that action, the Federal Circuit explained it as follows (per Judge Jimmie Reyna):
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In this patent infringement action, the patent owner sought a reasonable royalty in the form of a lump sum payment. HTC filed a Daubert motion to exclude the expert’s opinion on the ground that the lump sum royalty impermissibly included the entire market value.

The district court began its analysis with a commentary on Daubert motions in patent cases. “Another patent case on the eve of trial, another Daubert motion to strike a patent damages expert’s testimony. The undersigned only recently observed that such motions have become a routine affair in patent litigation. And yet, as routine as the motion has become, skilled experts continue to fashion new theories prompting additional lines of attacks. In short, no two motions are quite the same.”
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Plaintiff Power Integrations, Inc. (“Power Integrations” or “PI”) filed a patent infringement action against Defendants Fairchild Semiconductor Int’l, Inc., Fairchild Semiconductor Corp. (collectively, “Fairchild”) and System General Corp. (“System General”). Power Integrations is a manufacturer of power conversion integrated circuit devices, which are used in power supplies for electronic devices such as cellular phones, LCD monitors and computers.

Fairchild filed a Second Amended Answer and Counterclaims, which included the ‘700 patent, entitled “Control Circuit With Adaptive Minimum On Time for Power Converters” for the first time. The District Court issued its Claim Construction Order construing various terms in the ‘700 patent on May 6, 2013.
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In this patent infringement action, Apple moved to compel production from Emblaze based on search terms that Apple provided. Emblaze opposed the motion, arguing that it had produced all responsive documents, that Apple’s requests were overbroad and that using Apple’s search terms would be unduly burdensome.

The court began its opinion by noting that “[w]hen decrying the burden imposed by the document demands of an adversary, parties would be wise to follow Hemmingway’s advice to ‘show the readers everything, tell them nothing.’ Unfortunately, in the patent infringement case, [Emblaze] appears to have ignored Papa’s guidance.”
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Plaintiff ProconGPS, Inc. (“Procon”) filed a patent infringement action against Skypatrol, LLC (“Skypatrol”). During the expert phase of the case, a dispute arose over the deposition of plaintiff’s experts.

The parties disputed whether Skypatrol should be permitted to depose plaintiffs’ experts twice, once after Procon’s initial expert report and again after rebuttal reports are issued. Skypatrol contended that Skypatrol’s experts should be able to take Procon’s experts’ depositions into account when preparing their own reports. Procon asserted that the purpose of expert deposition is to develop cross-examination for trial and/or for a Daubert motion, but not for building a case for one’s own expert. Procon also asserted that two rounds of depositions would be impractical and would be wasteful.
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Volterra Semiconductor (“Volterra”) filed a motion to prevent Primarion from offering evidence regarding the subjective prong of the Seagate test on willful infringement. See In re Seagate Technology, LLC 497 F.3d 1360 (Fed. Cir. 2007). As explained by the district court, “Volterra argues that Primarion’s Seventh Supplemental Responses to Volterra’s Interrogatory No. 7 demonstrate that the willfulness witnesses identified by Primarion (Sandro Cerato, Arun Mittal and Ken Ostrom) may offer testimony at trial that Primarion’s decision to continue to market and produce infringing devises after receiving Volterra’s cease and desist letter was based, in part, on an investigation undertaken by counsel.”

Based on this interrogatory response, Volterra contended that Primarion was seeking to use the privilege as both a sword and a shield by presenting evidence of counsel’s investigation to show that it took the cease and desist letter seriously, while also asserting the attorney client privilege to block any discovery as to the investigation.
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