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The United States District Court for the District of Delaware recently ruled on the issue of whether a bounced check for the issuance of a patent could constitute abandonment of the patent. In this patent infringement action, defendants moved to dismiss for lack of subject matter jurisdiction as a result of the bounced check. The district court denied the motion.

It was undisputed that during the prosecution of the patent, that the applicants original check to cover the issue fee bounced, which led to the patent office notifying the applicants of the payment deficiency and seeking withdrawal of the patent from issuance. As a result, defendants contended that the patent was abandoned under 35 U.S.C. § 151 for failure to timely pay the required issue fee. Plaintiff’s contended that the bounced check was properly resolved with the USPTO and that the Patent Office never officially withdrew the patent from issuance. Plaintiffs also noted that the Patent Office accepted payment of all required maintenance fees for several years.
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Pfizer filed a patent infringement action against Teva Pharmaceuticals (“Teva”) over a patent that claims the use of certain chemical compounds claimed as a method to treat erectile dysfunction. During the case, Teva filed a motion to amend its answer and counterclaims to alleged a defense and counterclaim for inequitable conduct. The district court granted the motion, but noted that it was a close case.

Several months later, Teva moved to amend its answer and counterclaim to change its allegations supporting the inequitable conduct claim. The district court denied the requested amendment on the ground of prejudice and futility because the amendment was late and would prejudice Pfizer and the individuals named in the proposed amendment and because the amendment failed to make any plausible showing of but-for materiality.
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In August 2011, Google filed a motion to strike portions of the opening and reply expert reports of Oracle’s expert on patent infringement. Google argued that much of the report was not supported by Oracle’s infringement contentions as required by the Northern District of California’s local patent rules. The district court noted that Patent Local 3-1 “requires detailed disclosure of a party’s patent infringement contentions. “Although Oracle supplemented its disclosures on two occasions after Google raised objections, Oracle declined to supplement a third time despite Google’s contention that they were still inadequate. Oracle was also warned that if the disclosures later proved to be inadequate to support its infringement theories, there would be no chance to cure the defects.

As part of Patent Local 3-1, Oracle was required in its infringement contentions to include a chart that identified where each limitation of each asserted claim is found within each accused product. Google asserted that two of the functions, vfork() and clone() were not identified in the claim charts, but that Oracle’s expert relied on them to satisfy certain of the claim limitations in the patents-in-suit. The district court agreed with Google on the limitation for the “process cloning mechanism”: “Oracle’s operative infringement contentions did not identify the vfork() or clone () functions as satisfying the ‘process cloning mechanism’ limitation of Claim 6. This is not disputed. Oracle therefore may not now rely on those functions as satisfying that claim limitation.”
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Plaintiff filed a patent infringement action and subsequently filed a partial motion for summary judgment. In the partial motion for summary judgment, the plaintiff contended that there were no acceptable and available, non-infringing alternatives to the claimed inventions during the relevant damage period. The district court granted the motion.

Prior to trial, the plaintiff filed a motion in limine to preclude the defendant from introducing at trial evidence or argument that tubal ligation was an acceptable non-infringing alternative during the damages period. With one caveat, the district court granted the motion.
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In the International Trade Commission (“ITC”) proceeding between Apple and HTC, Google (as well as T-Mobile) have filed briefs supporting HTC. These “friends of the court” briefs are often filed to aid the decisionmaker (in this case the ITC) in reaching a conclusion that is not only helpful to the party in the dispute but also is helpful to the party filing the brief. Google’s filing is no different and is obviously made to protect its Android system and platform.

The position taken by Google and T-Mobile is that the public interest will be harmed if Apple is successful in its lawsuit before the ITC as Apple would be able to prevent HTC from selling phones that compete with Apple’s iPhone. Such an injunction, Google argues, would also result in negative impacts to United States’ consumers, such as potential higher prices and a lack of choice in the phones and features that consumers will ultimately have available for purchase.
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Plaintiff Mondis Technology LTD. (“Mondis”) filed a patent infringement action against Chimei Innolux Corp. (“Chimei”). The case proceeded to trial before a jury and the jury found a number of claims valid and infringed by Chimei. The jury also found several claims invalid and not infringed by Chimei. With respect to three of the patents, the jury found that the infringement was willful and awarded damages in the amount of $15 million. The district court then determined whether ongoing royalties and supplemental damages for 2011 sales should be awarded.

The district court began by noting that the jury did not have all of the sales data for the first and second quarters when it rendered its damage award. Because a patentee is entitled to damages for the entire period of infringement, the district court determined that Mondis was entitled to an award of supplementary damages. After determining the appropriate amount of sales, including non-U.S. sales that eventually wind up in the United State, the district court applied the royalty rate determined by the jury (which was .5% for monitors and .75% for televisions) and awarded an additional $1.97 million in supplementary damages.
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Plaintiff sued defendant for patent infringement for direct and indirect infringement for the commercial sale and/or use of the defendant’s asset tracking solutions product. Defendant moved to dismiss the complaint pursuant to Fed.R.Civ.P. 12(b)(6) on the ground that plaintiff failed to identify an infringing instrumentality and also failed to allege facts of indirect infringement.

Defendant’s first argument, that plaintiff failed to identify the instrumentality accused of infringement, was disregarded by the district court. The district court found that plaintiff had identified the accused instrumentality by naming the Asset Tracking Solutions product. The defendant’s argument that it did not sell or make such a product was a factual dispute that could not be resolved on a motion to dismiss. The district court also found that plaintiff’s allegations complied with Form 18 and therefore this part of the motion of the motion to dismiss was denied.
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The ongoing patent battles between Apple and Samsung continue to pick up speed and show no signs of slowing down anytime soon. During the summer, Apple filed a motion for a preliminary injunction on certain of its patents and the district court ordered limited initial discovery for the topics raised by the preliminary injunction motion. The hearing on the motion is set for October 13, 2011.

As part of the discovery, Apple sought documents pertaining to the comparison of any Apple product or feature, the redesign of the Galaxy Tab following the release of the iPad 2, consumer surveys regarding the products at issue, marketing and consumer confusion. Apple also sought a deposition of Samsung pursuant to Fed.R.Civ.P. 30(b)(6) on the same topics as the documents requested. Samsung resisted discovery on certain of these issues and Apple moved to compel.
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Multimedia Patent Trust (“MPT”) filed a patent infringement action against several defendants, including DirecTV and Vizio, which alleged infringement of multiple patents related to video compression technology. DirecTV and Vizio answered the complaint an alleged affirmative defenses of patent exhaustion and license.

The parties filed cross motions for summary judgment on the issue of exhaustion and license. DirecTV contended that its licensed suppliers made authorized sales pursuant to a 2002 license and a 2009 license and that these authorized sales exhausted MPT’s patent rights . MPT argued that even though DirecTV’s manufacturers are licensed, the manufacturers’ sales of certain products exceeded the scope of the license. In response, DirecTV argued that patent exhaustion applied because DirecTV’s licensed suppliers’ sales to DirecTV were authorized sales, and authorized sales exhaust a patentee’s rights to sue others who subsequently use or sell the same article that allegedly infringes the patents.
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Plaintiff, Innova Patent Licensing, LLC (“Innova”) filed a patent infringement action against Alcatel-Lucent Holdings (“Alcatel”) for a patent claiming methods for using a mail processing program to scan electronic messages to obtain additional information. Alcatel challenged the patent on the ground that it did not claim eligible subject matter under 35 U.S.C. § 101 and moved to dismiss.

The court stated that “[u]nder the patent laws, certain broad categories of subject matter are eligible for patent protection,” and cited the language from Section 101 (” Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or a new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title”) and the United States Supreme Court’s decision in Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (“in choosing such expansive terms modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope”).
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