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On remand to the district court after the Federal Circuit’s en banc decision in Therasense v. Becton, Dickinson and Co., the district court reviewed the procedural posture of the case and the landmark Therasense decision. The district court noted that “Therasense worked a seismic shift in the law of inequitable conduct,” and particularly that “materiality would henceforth use a but-for definition, meaning that submission of the withheld item would have led to a rejection.” The district court also analyzed the decision including the closeness of the vote on the new standard, stating that “[d]espite the closeness of the decision and the importance of the question to our patent system and national economy, no petition for certiorari was filed in the Supreme Court.”

Before applying the facts to the new standard articulated by the Federal Circuit, the district court noted the Federal Circuit’s instructions on remand (1) that the “district court should determine whether there is clear an convincing evidence demonstrating that Sanghera or Pope knew of the EPO brief, knew of their materiality, and made the conscious decision not to disclose them in order to deceive the PTO” and (2) the “district court should determine whether the PTO would have granted the patent but for Abbott’s failure to disclose the EPO briefs. …”
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ArrivalStar filed a motion seeking to extend the deadline for providing its preliminary infringement contentions arguing that the district court’s scheduling order only provided fourteen days for ArrivalStar to prepare and serve its preliminary infringement contentions, that ArrivalStar was misled by Enroute Systems, the opposing party, into believing that the case management deadlines were on hold while the parties explored settlement and denying an extension would severely prejudice ArrivalStar by precluding consideration of its claims on the merits.

In analyzing ArrivalStar’s request, the district court noted that case management deadlines could only be modified by a showing of good cause under Fed.R.Civ.P. 16(b)(4). The district court then concluded that none of the arguments raised by ArrivalStar established good cause for the requested extension.
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Plaintiff, Round Rock Research (“Round Rock”), filed a motion to compel non-infringement contentions from Defendant Dell (“Dell”) and Dell moved to limit the number of asserted complaints brought by plaintiff. Round Rock asserted ten patents against 125 products of Dell and Dell contended that Round Rock had asserted approximately 82 claims from the ten patents-at-issue. As a result, Dell asserted that the large number of claims was unmanageable for claim construction, fact discovery, expert reports, depositions and trial.

In considering Round Rock’s motion to compel non-infringement contentions, the district court noted that the plaintiff requested a response to its interrogatory seeking Dell’s non-infringement contentions. In response, Dell asserted that the interrogatory was prematurely seeking its position on claim construction and that the interrogatory was unduly burdensome and unreasonable given the number of claims asserted by Round Rock.
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The defendant filed a motion to stay pending reexamination of the plaintiff’s patent. The district court noted that the plaintiff and defendant are both participants in the oxygen concentrator market. Inogen filed the action on November 4, 2011 asserting infringement of two of its patents. On February 8, 2012, Inova filed a request for inter partes reexamination of both of the patents-in-suit. The PTO acknowledged receipt of the reexamination request and the district court noted that the PTO must decide whether to grant the reexamination request within three months.

After discussing the relevant case law on stays pending reexamination, the district court analyzed the stage of the litigation, simplification of issues, undue prejudice or clear tactical disadvantage to the plaintiff, With respect to the stage of the litigation, the district court noted that Imogen implicitly conceded that the case is in an early stage of litigation and that no discovery dates or trial dates would be set until mid-April. Accordingly, the district court found that this factor weighed in favor of a stay.
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In response to Oracle’s third expert on damages (which was submitted after the district court had struck parts of the first two reports), Google’s damage experts were permitted to submit supplemental damage reports. With respect to the patent damages, the district court summarized the supplemental report as follows: “In his supplemental report on patent damages, Dr. Leonard conducts a so-called ‘forward citation’ analysis to arrive at his own ranking of the 22 patents from Dr. Cockburn’s report. This was done to critique Dr. Cockburn’s ‘upper bound’ opinion that three patents in suit were the most valuable of the 22. Now that Dr. Cockburn’s ‘upper bound’ opinion has been stricken and the number of the asserted patents reduced, the only remaining issues is whether Dr. Leonard can opine that the ‘104 patent ranks in the ‘middle or worse'” of the top 22 patents. Specifically, whether Dr. Leonard can opine that the ‘104 patent ranks 17th among the top 22 patents under the forward-citation analysis (Rpt. At 7).”
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As a preliminary matter, Judge Posner consolidated the six patent cases that were filed by Brandeis University against various defendants, finding that they involve a number of common issues of law and that judicial efficiency would be maximized by consolidation. “These six cases are hereby consolidated under 1:12-cv-01508, pursuant to Fed. P. 42(a). The parties agree that they involve a number of common issues of law, and I believe that judicial efficiency will be maximized by consolidation. I will consider in due course the defendants’ request for separate trials of issues, particularly damages, that vary significantly across the six cases.”
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In the ongoing struggle between Apple and Motorola over claims of patent infringement in just one of many battles that is taking place across the country over smart phones, both parties proposed claim constructions that were not particularly well-written for lay jurors.

After reviewing the claim construction briefs and stating that the briefs “well written and helpful,” the district court, Judge Posner, stated that he had a concern regarding the proposed claim constructions.
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The district court had previously stricken certain parts of Oracle’s damage expert report on two separate occasions. First, the district court struck Oracle’s expert report for failing to apportion the value of the asserted claims and instead using the total value of Java and Android in calculating damages. Second, the district court partially excluded Oracle’s expert’s revised report for using a flawed apportionment methodology. In the new report, Oracle’s expert set forth a new apportionment theory, which Google moved to strike again.

The district court summarized the third report as follows: ” First, Dr. Cockburn starts with Sun’s February 2006 demand of $99 million to defendant Google Inc. Second, he upwardly adjusts by $557 million to account for lost convoyed sales Sun projected to make through its licensing partnership with Google. Third, he adds $28 million by removing a revenue-sharing cap, resulting in a subtotal of $684 million. This is the pie he then apportions between the intellectual property in suit and the intellectual property not in suit. Fourth, he allocates part of this number to the patents and copyrights in suit, using two alternative methodologies — the so-called “group and value” and “independent significance” approaches (Rpt ¶¶ 37-68). Based on these alternative apportionment methodologies, reasonable royalties for patents and copyrights in suit, through the end of 2011, are (1) between $70 and $224 million under the group-and-value approach, and (2) at least $171 million under the independent-significance approach. Fifth, he downwardly adjusts for extraterritorial infringement, failure to mark, and non-accused devices. With all the downward adjustments subtracted, Dr. Cockburn calculates patent damages to be between $18 and $57 million, and a copyright lost license fee to be between $35 and $112 million.”
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Cambrian Science (“Cambrian”) filed a second amended complaint that alleged patent infringement of U.S. Patent No. 6,777,312 (the “‘312 Patent”). The second amended complaint alleged infringement against several defendants, certain of which were labeled by the district court as “Customer Defendants.” As to the Customer Defendants, Cambrian asserted that they infringed the ‘312 Patent directly by making, using, selling or offering to sell certain systems. The second amended complaint also alleged claims for contributing and inducing infringement.
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On summary judgment, the district court determined that the defendants directly infringed all patents at issue in the lawsuit. The district court subsequently conduct a bench trial on issues of willfulness and on defendants’ equitable defenses, particularly whether the defenses of laches and equitable estoppel provided a defense to the finding of direct infringement.

The district court first focused on the issue of willful infringement and stated the two-prong test for willfulness. “To establish willful infringement, a patentee must satisfy a two-pronged test. In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). First, the patentee must “show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Id. In analyzing this prong, “[t]he state of mind of the accused infringer is not relevant.” Id. Second, and only after “[the objective prong] is satisfied, the patentee must demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.” Id.”
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