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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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The Defendant QxQ Inc. (“QxQ”), which is a California company, moved to transfer a patent infringement case from the Eastern District of Wisconsin to the Northern District of California. QxQ asserted that the connections between the Eastern District of Wisconsin and the case were so limited that litigating the action in Wisconsin would be less convenient than litigating in the Northern District of California. Plaintiff Circuit Check Inc. (“Circuit Check”), which is a Minnesota company, opposed the motion, in part, because QxQ delayed filing the motion to transfer.

QxQ moved to transfer based on 28 U.S.C. § 1404(a), which, as explained by the district court, authorizes changes of venue “for the convenience of parties and witnesses, in the interest of justice.” As noted by the district court, “[w]ith respect to the convenience evaluation, courts generally consider the availability of and access to witnesses, and each party’s access to and distance from resources in each forum. Other related factors include the location of material events and the relative ease of access to sources of proof.” Research Automation, Inc. v. Schrader-Bridgeport Intern., Inc., 626 F.3d 973, 978 (7th Cir. 2010) (citations omitted). In assessing the interest of justice, “courts look to factors including docket congestion and likely speed to trial in the transferor and potential transferee forums, each court’s relative familiarity with the relevant law, the respective desirability of resolving controversies in each locale, and the relationship of each community to the controversy.” Id. (citations omitted).
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Automatic Data Processing, Inc. (“ADP”) filed a declaratory judgment action against Wellogix, Inc., and Wellogix Technology Licensing LLC (“Wellogix”) for a determination that ADP does not infringe a Wellogix method patent on comparing data from purchase orders, field data, and invoices. After the action was filed, ADP moved for summary judgment on the ground that not all of the allegedly infringing steps were performed in the United States.

The district court began its analysis by stating that “[a] machine patent may be infringed if the protected technology is used, sold, or offered for sale ‘within the United States.’ Unlike a machine patent, a foreign method cannot be patented if its sold or offered for sale in the United States. All steps of the method must be done domestically.’
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Bonutti Skeletal Innovations LLC (“Benutti”) filed a patent infringement action against Conformis, Inc. (“Conformis”). Conformis moved to dismiss on several grounds, including that the complaint asserted an infringement theory based on “joint infringement” and therefore did not state a claim for relief.

In analyzing the claim at issue, the district court first noted that “in order to adequately state a claim for direct infringement of method claims, the complaint must allege that the accused infringer “perform[ed] all the steps of the claimed method, either personally or through another acting under his direction or control.” Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012). Where the complaint alleges that the accused infringer personally performed all the steps of the claimed method, Form 18 of the Federal Rules of Civil Procedure provides the pleading standard by which the plaintiff’s allegations are to be measured. See Superior Indus., LLC v. Thor Global Enter. Ltd., 700 F.3d 1287, 1295 (Fed. Cir. 2012); Pragmatus AV, LLC v. Yahoo! Inc., Civ. Action No. 11-902-LPS-CJB, 2012 U.S. Dist. LEXIS 161874, at *9-12 (D. Del. Nov. 13, 2012), adopted by 2013 U.S. Dist. LEXIS 73636 (D. Del. May 24, 2013). Where the complaint implicates a theory of joint infringement, and thus alleges what is known as divided infringement, however, a plaintiff must allege much more than merely the requirements of Form 18. See Pragmatus, 2013 U.S. Dist. LEXIS at *11. Specifically, the complaint must also plead facts sufficient to allow the court to reasonably infer that one party exercises “direction or control” such that performance of every step is attributable to the controlling party. Id. at *15.
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In UbiComm LLC v. Zappos IP Inc., No. 1-13-cv-01029 (D. Del. Nov. 13, 2013), the court dismissed the asserted patent claims as being directed at an abstract idea that was patent ineligible. Plaintiff UbiComm LLC (“UbiComm”) alleged that Zappos IP Inc.’s (“Zappos”) websites infringed method claims of United States Patent No. 5,603,054 (“‘054 patent”). Zappos moved to dismiss the asserted claims as ineligible subject matter.

The patent describes the invention as “a method for superimposing prespecified locational, environmental, and contextual controls on user interactions, including interactions of mobile users, with computational resources of a distributed computer system and with equipment residing on processes running on said system.” Claim 1 of the ‘054 patent, the only independent claim, reads:
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Personalized Media Communications, LLC “PMC”) filed a patent infringement action against Zynga, Inc. (“Zynga”). Prior to trial, PMC sought to use an exhibit created by Ocean Tomo, entitled “Patent Quality Inventor Study.” The study purported to rank “John Harvey (the inventor of the patents in suit) as the “top rated inventor” in the “wireless” invention category.” Zynga moved to exclude the study.

In response, PMC asserted that the exhibit was properly offered “as a secondary consideration of nonobviousness – specifically, praise by others.” The district court disagreed and found that the potential for unfair prejudice was high. “The Court notes that the study does not pertain specifically to any of the patents-in-suit, much less the asserted claims. The Court finds that the probative value of the study is minimal, as it lacks the requisite nexus to the claims at issue in this case. See, e.g., Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, (Fed. Cir. 1988), cert. denied, 488 U.S. 956 (1988). Similarly, the potential for unfair prejudice is high.”
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As Apple and Samsung prepare for a new trial on damages, Apple filed a motion to exclude part of the damage calculation set forth in Samsung’s updated expert report on damages. In particular, Apple moved to exclude the damage calculation pertaining to the Samsung Gem phone on the ground that these calculations are based on fewer sales than were originally included in the 2012 expert report. The 2012 expert report calculated damages for the Gem based on total sales and the new report calculated sales only for Gem phones sold through Verizon. Samsung asserted that the updated damages calculations were proper because Apple presented evidence of infringement only for Gem phones sold through Verizon at the 2012 trial and Apple therefore failed to meet its burden to prove its entitlement to damages for Gem phones sold through other carriers.
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In the patent infringement action between Cobra International, Inc. (“Cobra”) and BCNY International, Inc. (“BCNY”), BCNY filed a motion to compel several documents, including a litigation funding agreement. Cobra opposed the motion asserting that the person funding the litigation was not making decisions regarding the lawsuit and was not interfering with the prosecution of the litigation. BCNY asserted that it was entitled to the document to determine if the patent had transferred.

As explained by the district court, “[i]n response to request for production number 32, which pertains to the litigation funding agreement, Mr. Eavzan stated in his declaration that ‘Cobra continues to own the ‘858 patent. The person or entity funding Cobra’s prosecution of the lawsuit against [BCNY] is not making the decisions for Cobra regarding the above-styled lawsuit, is not interfering with the independence and professional judgment of Cobra’s counsel relating to the above-styled lawsuit, and is not receiving confidential communications between Cobra and its counsel relating to the above-styled lawsuit.'”
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Porto Technology Co., LTD (“Porto”) filed a patent infringement action against Cellco Partnership d/b/a Verizon Wireless (“Verizon”). During the litigation, Verizon moved to compel communications between two of the plaintiffs, who are brothers, and counsel. As explained by the district court, the court began by looking at “communications between Ji-Soo Lee, Heung-Soo Lee (“Lee Brothers”) and counsel. Obviously, any communications between Plaintiff Ji-Soo Lee and his counsel pertaining to this or directly related infringement litigation is covered by attorney-client privilege. Communications between Heung-Soo Lee and his counsel do not appear to be similarly cloaked. Any privilege that existed was waived by Heung-Soo Lee by voluntarily disclosing communications concerning this — and related litigation — with both the Court and the Defendant, Verizon. Over 100 unsolicited documents pertaining to the ‘518 and ‘413 patents have been received and retained by the Clerk of this Court.”
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