Articles Posted in Uncategorized

Published on:

by

In a previous ruling in the ongoing lawsuit between Oracle and Google over Android, the district court denied Google’s motion for partial summary judgment on a defense of patent marking. In that ruling, the district court expressed concern that disputes over whether Oracle or Sun products practiced the asserted claims (and therefore required patent marking) might devolve into an infringement analysis at trial. Accordingly, in order to streamline the issues for trial, the district court required the parties to agree upon a procedure to identify and stipulate to Oracle or Sun products that practiced the asserted claims, which the parties did in a stipulation filed with the district court.

Under the first step of the procedure, Oracle submitted a list of Oracle and Sun products that practiced each of the asserted patents, the supporting source-code citations for each product, and a summary of testimony that it intended to elicit at trial in support of the identifications. In the next step, Google was required to identify any other Oracle products that Google contended practiced any of the 26 asserted claims and identify any products that Oracle listed which Google contended did not practice the claims. Google was also required to explain why.
Continue reading

Published on:

by

Plaintiff was the inventor of a toy glider and was issued a patent in 1992. Plaintiff formed a partnership called Wingers Co. After forming Wingers, Plaintiff then sent a letter to the defendant introducing the toy glider and ultimately an agreement was entered into between Allied (the defendant), Wingers Co. and Plaintiff (the “License Agreement”) in 1993.

Under the License Agreement, plaintiff granted Allied an exclusive license “thereby permitting and designating Allied to be the sole and exclusive manufacturer, distributors and marketing company of Wingers, and any and all derivative toy products thereof.” In exchange, Allied agreed to pay royalties.
Continue reading

Published on:

by

In Apple’s patent infringement action against Motorola, Apple claimed that certain Motorola devices running the Android operating system infringe two of its network component patents. Motorola moved for summary judgment.

According to the district court, “Claim 1 of the ‘486 patent describes ‘replaceable…component’s]’ in a layered computing system. (The ‘852 patent incorporates the replaceable component system of ‘486 by reference at 13:22-44, and my interpretation of the terms applies equally to both patents’ claims.) The use of replaceable components promotes program flexibility and facilitates customization because replaceability enables the user to alter functionality customization because replaceability enables the user to alter functionality within a given program. The prior art was ‘application-based,’ which meant that users had to accept an application’s functionality as is or not use it at all.”
Continue reading

Published on:

by

Plaintiff Gerber Scientific International (“Gerber”) filed a patent infringement action against Roland DGA Corporation (“Roland”), asserting that Roland infringed Gerber’s patent covering a method and apparatus for computerized graphic production. Roland filed a motion for protective order with respect to the depositions of three of its Japanese employees and its president.

In its motion for protective order, Roland argued that the depositions of its three Japanese employees should take place in Japan and that the deposition of its president should not take place at all because he is a senior executive with no unique or specialized knowledge relevant to the case. With respect to the employees in Japan, Roland argued that witnesses should be deposed near their residence or their place of business and both parties could equally bear the costs, as such Gerber could not satisfy its burden of proving that circumstances exist that warrant taking the depositions in the United States.
Continue reading

Published on:

by

After the district court found that defendant’s electronic control device literally infringed certain claims of a patent owned by Taser and denied defendant’s summary judgment motion on defendant’s claims of invalidity and unenforceability, Taser filed a motion for contempt and an application for an order to show cause. In its motion, Taser asserted that Karbon Arms had purchased defendant’s assets as part of an insolvency proceeding and that Karbon Arms was producing the Karbon MPID which was essentially the same as the enjoined product sold by defendant.

The district court then noted that “[i]n order to enforce an injunction in a patent case, the party seeking to do so ‘must prove both that the newly accused product is not more than colorably different from the product found to infringe and that the newly accused product actually infringes.’ TiVo Inc. v. EchoStar, 646 F.3d 869, 882 (Fed. Cir. 2011) (en banc).” To apply the “more than colorable differences” test, the court must first compare the features that were found infringing to the corresponding feature of the newly accused products. If the court finds that only colorable differences exist, then the court must determine whether the newly accused product infringes the relevant claims.
Continue reading

Published on:

by

In the ongoing saga over Oracle’s lawsuit against Google, the district court has allowed Oracle’s damage expert another chance to fix its damage report. The district court had previously stricken Oracle’s damage expert report on two previous occasions but allowed Oracle’s damage expert a third chance.

Before addressing the damage expert report issue, the district court rejected Oracle’s suggestion of a piecemeal approach to the trial due to the court’s docket. “The docket simply does not permit that luxury. Counsel are unfortunate in having drawn a judge assigned to the massive MS-13 gang prosecution, which has resulted in four lengthy trials, including one underway now, without any relief from the remainder of his normal caseload. This has led to a backlog of trial-ready cases waiting their turn. . . . In the instant case, the damages methodology must be sorted out before the case will even be trial-ready. Until then, there is no point in setting a firm trial date. If matters go smoothly herein and if other trial settings fall away, the instant case could still possibly be tried starting mid-April and all counsel and witnesses should reserve for that possibility, failing which it will likely occur sometime during the last four months of the year. This order, however, gives no assurances as to when the case can be tried. If Oracle wishes to voluntarily dismiss any damages claim it will have to do so with prejudice; otherwise a dismissal is nothing more than an invitation to piecemeal litigation.”
Continue reading

Published on:

by

Plaintiff, Two Moms and a Toy, filed an emergency motion to stay the expert phase of their case pending the court’s ruling on claim construction. The plaintiff’s motion was based on the argument that “expert reports and expert discovery in a patent infringement case is extremely expensive and that a ruling on claim construction could end this case and at the very least will provide the parties with needed guidance and information for assessing the patent’s strength which will hopefully result in a settlement of the case.”

The court was not persuaded by the plaintiff’s argument. Indeed, it agreed with the defendant that it was “thinly veiled request for reconsideration of my two previous ruling denying motions to extend or otherwise modify the case schedule.” The court noted that these argument could have, and should have been, raised in connection with the earlier requests to amend the schedule that were denied by the court. “All of the arguments about expense and efficiency could have been made in connection with the parties’ previous Joint Motion to Amend Scheduling Order.”
Continue reading

Published on:

by

Microsoft and Google sued Geotag in the District of Delaware for a declaration that their customers did not infringe a Geotag patent, “Internet Organizer for Accessing Geographically and Topically Based Information,” and that the patent was invalid. Geotag had sued in excess of 450 companies in the Eastern District of Texas and many of these companies were customers of Microsoft and Google, who provide mapping services that allow interested persons to use the Internet to search for a convenient location of a business.

Geotag moved to transfer the declaratory judgment action pending in Delaware to the Eastern District of Texas. The district court in Delaware analyzed the private and public interest factors pursuant to Section 1404(a) and concluded that transfer was not appropriate.
Continue reading

Published on:

by

Defendant moved to compel the deposition of a member of Plaintiff ‘s trial counsel regarding Plaintiff’s pre-filing investigation. Despite Defendant’s attempt to withdraw the motion based on a representation (not disclosed in the opinion) made by the Plaintiff in its sur-reply, the Court granted the Defendant’s motion and required the Plaintiff to produce a member of its trial counsel for his deposition over this topic.

The Defendant originally sought to depose Plaintiff’s trial counsel over information relating to his pre-filing investigation of the claims in the lawsuit. The pre-filing investigation included obtaining and photographing the accused product. According to the Plaintiff, the information obtained was never intended to be used as evidence of any actual infringement. In fact, the Plaintiff represented that its trial counsel would not be a witness nor would it use anything from his examination as evidence in the case. The Court noted that while normally this would end the inquiry regarding the necessity of the deposition, the Defendant had raised counterclaims asserting that the Plaintiff “has violated the antitrust laws by bringing suit against competitors without adequate justification in order to stifle competition.”
Continue reading

Published on:

by

Defendants moved to dismiss a patent infringement complaint pursuant to Fed.R.Civ.P. 12(b)(6) on the theory that the complaint failed to allege facts showing that a single party performed each and every limitation of the method claim.

The district court noted that “the Federal Circuit Court of Appeals has ‘instructed that ‘[d]irect infringement requires a party to perform or use each and every step or element of a claimed method or product.’ . . . Nevertheless, ‘[w]hen a defendant participates in or encourages infringement but does not directly infringe a patent, the normal recourse under the law is for the court to apply the standard for liability under indirect infringement. Indirect infringement requests, as a predicate, a finding that some party amongst the accused actors has committed the entire act of direct infringement.'” Thus, there is no finding of indirect infringement without a finding that there is a direct infringer.
Continue reading