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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 the ongoing battle between Activision TV, Inc. (“Activision”) and the Attorney General for the State of Nebraska, Activision filed a preliminary injunction motion seeking to bar the Attorney General from enforcing a cease and desist order entered against Activision’s counsel. The district court had previously determined that the Attorney General could not preclude Activision’s counsel from representing Activision in the current patent infringement action pending in federal court in Nebraska. The district court was now faced with the issue of whether the Attorney General could order counsel for Activision (Farney Daniels) to cease and desist initiation of all new patent infringement enforcement efforts in Nebraska.

In response to the motion, the Attorney General first argued that the district court lacked jurisdiction to determine the issue because the cease and desist order applies to Farney Daniels and not to Activision and, as a result, Farney Daniels lacked standing to raise these issues because it is not a party to the action pending before the district court.
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WiLAN USA, Inc. (“Wi-LAN”) filed a patent infringement action against Alcatel-Lucent USA Inc. (“Alcatel-Lucent”). After a lengthy claim construction order, the parties filed a joint motion to vacate the claim construction order and dismiss the pending lawsuit. The motion consisted of a single page and contained no points and authorities in support of the motion.

The district court was not impressed by the single page motion, which did not include a memorandum of law as required by the local rules. “The one-page Motion, which seeks in part a vacatur of the 75-page Order [ECF No. 141] of September 9, 2013 (“September 9 Order”) on claim construction following a day-long Markman hearing, is unaccompanied by a memorandum of law. See Local Rule 7.1(a)(1).”
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Activision TV, Inc. (“Activision”) filed a patent infringement action against Pinnacle Bancorp, Inc. (“Pinnacle”). Counsel for Activision, Farney Daniels, had previously sent letters to companies throughout the United States that Activision believed were infringing its patents. Five of these companies were in Nebraska. The letters requested information to determine if three was infringement of the patents.

As a result of these letters, the Attorney General’s office for the State of Nebraska opened an inquiry. After the action was filed against Pinnacle, the Nebraska Attorney General filed a cease and desist letter against the law firm of Farney Daniels. The cease and desist letter prohibited Farney Daniels from initiation new patent infringement enforcement efforts in the State of Nebraska. Because of the cease and desist order, Farney Daniels asserted it would be unable to represent Activision in this case and in other federal court cases.

Activision then moved for a preliminary injunction to permit Farney Daniels to represent it in the currently pending patent infringement case. The district court conducted a hearing at which it questioned representatives from the Nebraska Attorney General’s office.
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As this patent infringement action proceed toward trial, plaintiff Kimberly-Clark Worldwide, Inc. (“Kimberly-Clark”) filed a request with the district court on an “extremely time-sensitive case management issue concerning the use of depositions at trial and deposition designations.” During a telephonic status conference, Kimberly-Clark requested that the district require the defendants First Quality Baby Products, LLC (“First Quality”) present at trial any deposition testimony of Kimberly Clark’s testifying employee witnesses when they are called by Kimberly-Clark instead of during First Quality’s case-in-chief.

As part of its request, Kimberly-Clark asserted that its proposed procedure would be more efficient and would prevent delay and any potential confusion that would be created by calling the same witnesses to testify, whether by live testimony or by depositions, during different phases of the trial. First Quality opposed Kimberly-Clark’s request by arguing that this type of procedure would improperly permit Kimberly-Clark to dictate the manner in which First Quality presents its case.
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Robocast filed patent infringement actions against Apple and Microsoft. As expert reports were underway, Apple and Microsoft moved to compel undisclosed surveys that were commissioned by one of Robocast’s experts. As the Magistrate Judge explained, “Specifically, I am asked to resolve the parties’ dispute concerning certain undisclosed surveys commissioned by Professor James T. Berger in anticipation of his issuing expert reports vis-a-vis each defendant. Those two reports, in turn, are the foundation upon which another plaintiff’s expert directly relies for the purpose of establishing the scope of damages against the defendants. Robocast’s survey expert actually had preliminary surveys conducted for each of the two defendants, Apple and Microsoft, prior to the surveys which form the basis for his expert reports’ conclusions.”

Robocast resisted to reveling the prior surveys was predicated on the argument that Professor Berger claimed he did not rely upon any of the prior surveys in connection with reaching the conclusions reflected in his final reports concerning each defendant. “Indeed, because the expert deleted the earlier surveys (which had been performed after his retention by the plaintiff) from his computer, he was physically unable to take them into consideration at the time he reviewed and adopted the later-commissioned surveys into his final reports.”
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Orbis Corporation (“Orbis”), a manufacturer of commercial baking trays, owns U.S. Patent 6,273,259 (“the ‘259 patent”), which covers a baking tray (“the NPL663 tray”). As explained by the district court, “Orbis sells the NPL663 trays solely to Bimbo Bakeries, Inc. (“Bimbo”), and Bimbo’s affiliated brands. Several years ago, one of those affiliated brands, Sara Lee Corporation (“Sara Lee”) approached the defendant, Rehrig Pacific Company (“Rehrig”), to request that Rehrig design a tray that was both compatible with and similar to the NPL663 tray. Rehrig obliged and designed its SLBT180 tray, which it then began selling to Sara Lee. After several years of allowing Rehrig to sell its SLBT180 tray to Sara Lee, Orbis sued Rehrig, alleging that the SLBT180 tray infringed upon Orbis’ ‘259 patent.”

Rehrig moved for summary judgment based on the “on-sale bar” doctrine pursuant to 35 U.S.C. § 102, which states that “[a] person shall be entitled to a patent unless…the claimed invention was…on sale” more than one year “before the effective filing date of the claimed invention.” 35 U.S.C. §§ 102(a-b).
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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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Defendant Green Max Distributors, Inc. (“Green Max”) filed a motion for leave to amend its invalidity contentions. In the motion, Green Max sought to add photos, publications, and prior-art references to its original invalidity contentions. These additional references included additional photos that “more clearly and from different angles” depicted the prior art, full versions of the publications that depicted the prior-art references, nine newly cited publications, and eleven newly cited prior art references.

Green Max moved to amend its invalidity contentions in August 2013. Nonetheless, Green Max asserted that it was diligent because it provided Hydrodynamic with many of the additional references it sought to include, asserting that it provided Hydrodynamic with updated invalidity contentions containing “most” of the additional references in response to an interrogatory on February 20, 2013, and then disclosed some of the additional references at Green Max’s deposition of Hydrodynamic conducted on July 16, 2013. The district court found that this argument was irrelevant. “But Green Max’s disclosure of the prior art to Hydrodynamic is irrelevant to the diligence inquiry. Green Max must have been diligent in discovering the new prior art and in bringing its motion to amend its invalidity contentions–not in its disclosure to Hydrodynamic.”
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In this patent infringement action, a number of the defendants moved to stay the case pending an Inter Partes Review (“IPR”) of the patent-in-suit. The district court had previously denied a motion to stay pending a previous reexamination proceeding before the patent office.

In October 2012, shortly after the America Invents Act’s IPR process became available, Kyocera filed an IPR against all asserted claims of the patents-in-suit. The Patent Trial and Appeal Board (“PTAB”) found that Kyocera demonstrated “a reasonable likelihood of prevailing in its challenge” to the asserted claims. Kyocera then moved to stay pending the IPR process and the other defendants filed a motion to stay pending the IPR process as well.
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