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In STC.UNM v. Intel Corp., Fed. Cir., No. 2013-1241 (June 6, 2014), The Federal Circuit found that the plaintiff patent owner did not have standing for its infringement claims because one of the four co-owners had not been joined and could not be involuntarily joined.

The asserted patent, U.S. Patent No. 5,705,321 (“Method for Manufacture of Quantum Sized Periodic Structures in Si Materials”) issued in 1998 with four named inventors: three employees of the University of New Mexico (“UNM”) and the fourth an employee of Sandia Corp. A joint assignment made two years prior to issuance incorrectly identified all four inventors as UNM employees. This was subsequently corrected with an assignment by UNM to Sandi Corp. Before the issuance of the ‘321 patent, two of the UNM inventors filed another patent, U.S. Patent No. 6,042,998, that incorporated the ‘321 patent by reference and issued in 2000. During the prosecution of the ‘998 patent, the PTO rejected the application for double-patenting in view of the ‘321 patent. UNM filed a terminal disclaimer to overcome the double-patenting rejection, which represented that “any patent granted on this instant application shall be enforceable only for and during such period” that the two patents were commonly owned, and that UNM was “the owner of record of a 100 percent interest.” However, Sandia never claimed ownership in the ‘998 patent.
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After a hearing in an Investigation occurred between February 24 and March 7, 2014 and with the parties having submitted their opening post-hearing briefs on March 21, 2014 and their reply post-hearing briefs on March 28, 2014, the Administrative Law Judge determined that supplemental briefing was necessary after the Supreme Court’s decision in Nautilus v. Biosig.

Noting that the final initial determination on violation in the Investigation was currently due to be issued no later than June 20, 2013, the Administrative Law Judge pointed out that “among the material issues involved in this investigation is whether certain claims of the asserted patents are indefinite under 35 U.S.0 § 112.”
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Two weeks earlier, the court excluded the expert opinion and testimony of Plaintiff Golden Bridge Technology’s (“GBT”) damages expert. Nonetheless, the court gave GBT one week to submit a new report based on a new theory. After GBT met its deadline, Apple moved to exclude the second report as well.

As explained by the court, “Apple’s motion points out several of the significant flaws in Schulze’s current report: (1) Schulze improperly and sub silencio allocated the entire value of Apple’s portfolio licenses with Ericsson and Nokia to a tiny subset of a subset of a subset of a subset of the patents and standards in those portfolios; (2) Schulze improperly tripled the per-unit rate that Apple would have paid to GBT based on purely academic articles; (3) Schulze improperly failed to compare the patent-in-suit’s technical merits to those of other standards essential patents and (4) Schulze improperly failed to allocate any value to the non-license terms of the Ericsson and Nokia agreements.”
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Echostar Satellite L.L.C. (“Echostar”) moved to compel the production of settlement agreements from the plaintiff. Several issues arose on the motion, including whether the Magistrate Judge had jurisdiction to grant the motion even though the discovery cutoff date had passed, whether a party has an obligation to supplement its prior production with documents that were not created until after the discovery cutoff, and whether the settlement agreements were responsive to the prior document requests.

Turning to the first issue, the court found that it had jurisdiction because of an extension due to a mediation date. “Ordinarily, any motion concerning discovery must be filed sufficiently in advances of the discovery cutoff to allow any production to be completed prior to the cutoff date. Here, however, the parties had obtained an extension of the mediation date from the District Judge in order to allow the instant motion to be decided before the mediation. The Court concludes that, given the foregoing, it has jurisdiction to entertain the instant motion.”
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In this patent infringement action, a dispute arose over whether the defendant B/E Aerospace could rely on declarations from one or more of the inventors of the asserted patent in support of its claim construction position. As explained by the district court, “[i]n the Joint Claim Construction Statement (“Joint Statement,” ECF No. 45) filed on May 9, 2014, Plaintiff MAG Aerospace Industries, Inc. (“Plaintiff”) and Defendant B/E Aerospace, Inc. (“Defendant”) dispute whether, in its claim construction briefing, Defendant may rely on declaration evidence from one or more of the individuals named as inventors on U.S. Patent Nos. 6,353,942; 6,536,054; and 6,536,055 (the “Asserted Patents”).
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For over a decade, to show that a claim term is invalid as indefinite under 35 U.S.C. §112, ¶2, the Federal Circuit has required that such terms be “not amenable to construction” or “insolubly ambiguous.” The Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. has rejected that standard on the grounds that it tolerates too much imprecision. Under the new standard, a claim term is indefinite if it, instead, fails to define “the scope of the invention with reasonable certainty.”

The patent at issue, assigned to Biosig Instruments, Inc. (“Biosig”), involves a heart-rate monitor used with exercise equipment. Prior heart-rate monitors, the patent asserts, were often inaccurate in measuring the electrical signals accompanying each heartbeat (electrocardiograph or ECG signals) because of the presence of other electrical signals (electromyogram or EMG signals) generated by the user’s skeletal muscles. The invention claims to improve on prior art by detecting and processing ECG signals in a way that filters out the EMG interference.

Claim 1 of the patent, which contains the limitations critical to the case, recites a “heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures.” The claim comprises, among other elements, a cylindrical bar with a “live” electrode and a “common” electrode “mounted . . . in spaced relationship with each other.” Biosig filed the underlying patent infringement suit, alleging that Nautilus, Inc. (“Nautilus”) infringed on its patented claims by selling exercise machines containing Biosig’s patented technology.

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In the long-awaited decision in Limelight Networks, Inc. v. Akamai Techs., Inc., the Supreme Court once again reversed the Federal Circuit. This time, the Court’s reversal involved the issue of indirect infringement. Specifically, the Court held that an accused infringer cannot be liable for inducing infringement under §271(b) where no one has directly infringed under §271(a) or any other statutory provision.

By way of background, Akamai Technologies, Inc., (“Akamai”) is the exclusive licensee of a patent that claims a method of delivering electronic data using a content delivery network (“CDN”). Limelight Networks, Inc., (“Limelight”) also operates a CDN and carries out several of the claimed steps in the patent. But, its customers, rather than Limelight itself, perform a claimed step of the patent known as “tagging.”

Under Federal Circuit case law, most recently refined in Miniauction, Inc. v. Thomson Corp., liability for direct infringement of a method patent requires performance of all steps to be attributable to a single party. The District Court concluded that Limelight could not have directly infringed the patent at issue because performance of the “tagging” step could not be attributed to Limelight. In an en banc decision, the Federal Circuit reversed, holding that a defendant who performed some steps of a method patent and encouraged others to perform the rest could be liable for inducement of infringement even if no single entity was liable for direct infringement.

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In these patent infringement actions, the defendants moved to transfer to three different district courts. As explained by the district court, “[t]here are currently six pending actions in the District of Delaware involving LifePort, LifeScreen, or both. All of the infringement cases involve technology pertaining to the field of minimally invasive vascular repair and many of the actions share overlapping patents-in-suit, which will require claim construction. LifePort has asserted the most patents against the defendant W.L Gore & Associates, Inc. (“Gore”), which must be litigated in this district because Gore is a Delaware corporation with its principal place of business in Newark, Delaware. Five of the patents asserted against Gore overlap with the defendant Endologix, Inc. (“Endologix”). LifePort has also asserted another patent against Gore that overlaps with the defendants Medtronic, Inc. and Medtronic Vascular, Inc. (collectively, “Medtronic”). Similarly, LifeScreen has asserted a patent against C.R. Bard, Inc. and Bard Peripheral Vascular, Inc. (collectively, “Bard”), and Cook Incorporated and Cook Medical Incorporated (collectively, “Cook”), but Bard has not sought transfer.”
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After the district court issued a Markman ruling, the parties informed the court that they had reached an agreement in principle to settle the action. The plaintiff, FlatWorld, then moved to vacate the claim construction order. The district court noted that it had only adopted FlatWorld’s proposed construction for one out of nine terms. “Now plaintiff FlatWorld Interactives LLC wants me to vacate the claim construction order, in which I adopted only one of its proposed constructions out of nine terms to be construed, because it is concerned about the potential collateral estoppel effects of my order in two actions pending before the United States District Court for the District of Delaware.”

The district court then explained that Federal Rule of Civil Procedure 60 provides that a court may relieve a party from an order if “applying it prospectively is no longer equitable” or for “any [ ] reason that justifies relief.” FED. R. CIV. P. 60(b). “Although the Court may vacate an order upon settlement there is no requirement to do so; otherwise any litigant dissatisfied with a trial court’s findings would be able to have them wiped from the books.” White v. Shen, No. 09-cv-989-BZ, 2011 WL 2790475, at *1 (N.D. Cal. July 13, 2011) (internal quotation marks omitted). A “district court can decide whether to vacate its judgment in light of ‘the consequences and attendant hardships of dismissal or refusal to dismiss’ and ‘the competing values of finality of judgment and right to relitigation of unreviewed disputes.'” Dilley v. Gunn, 64 F.3d 1365, 1371 (9th Cir. 1995).
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Plaintiff Trading Technologies International, Inc. (“TT”) moved to strike the invalidity expert report of the defendant, CQG. TT made two arguments its motion: “(1) that Dr. Mellor failed to conduct a proper written description analysis because, according to TT, he incorrectly focuses on features that are not recited in the claims and concludes that there is no written description to support the unclaimed features; and (2) that Dr. Mellor failed to consider the perspective of one of ordinary skill in the art in his written description analysis.”

CQG responded that TT mischaracterized Dr. Mellor’s opinions and that Dr. Mellor correctly applied the written description test to determine whether a person of ordinary skill in the art would understand whether the inventors were in possession of TT’s asserted Static Limitation. CQG further asserted that TT misrepresented Dr. Mellor’s explanation of a person of ordinary skill in the art and offered no explanation why the district court should adopt TT’s definition.
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