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The defendants filed a motion to stay discovery until the district court ruled upon its motion to dismiss pursuant to 35 U.S.C. § 101. In their motion to stay, Defendants asserted that its motion to stay discovery should be granted because it is a dispositive motion to dismiss that is likely to be granted, which would render any discovery conducted unnecessary and wasteful.

Plaintiff argued in opposition to the motion to stay that the Defendant’s motion to dismiss is not likely to be granted and also that the parties previously agreed that no Rule 12 motion concerning the pleadings would delay the commencement or conducting of discovery. Plaintiff also argued that it has incurred significant expenses in the litigation and that a stay of discovery would be prejudicial and harmful.
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Plaintiffs Ericsson Inc. and Telefonaktiebolaget LM Ericsson’s (“Ericsson”) filed a motion to compel discovery of source code and technical documents, pursuant to Local Patent Rule 3-4 in the Eastern District of Texas. As explained by the district court, Patent Local Rule 3-4 requires the party opposing a claim of infringement to produce or make available “[s]ource code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its P. R. 3-1(c) chart.”
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In consolidated patent infringement actions between Arctic Cat and Polaris, Artic Cat filed four petitions for inter partes review (“IPR”) of two patents asserted by Polaris. Three days after the IPRs were filed, the parties filed a joint stipulation to stay the consolidated cases given Arctic Cat’s pending IPR petitions.

On September 1, 2015, the district court denied the parties’ request to stay. In response to the district court’s order, the parties submitted a joint letter seeking reconsideration of the order denying a stay of the consolidated cases.
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Plaintiffs filed an action defendants, Bouncing Angels, Inc. for, among other things, patent and copyright infringement. Plaintiffs successfully moved the district court to allow them to amend the complaint to add the owner of defendant Bouncing Angels, Inc., as a defendant based on financial evidence they discovered that could support an argument in favor of piercing the corporate veil. Discovery was extended “for the limited purpose of allowing discovery and dispositive motions only on issues relating to piercing the corporate veil.” The plaintiffs filed a motion to compel discovery on that issue.

As explained by the court, “[t]he discovery requests at issue in the Motion are all directed at defendant Bouncing Angels, and consist of document requests, requests for admissions, and an interrogatory. The discovery seeks Bouncing Angels’ tax returns and annual statements for a number of years, loan and security documents relating to a line of credit, information as to this defendant’s working capital, and whether Bouncing Angels ever conducted an independent audit.”
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The district court had previously ordered plaintiffs to produce certain documents to the extent that documents containing communications between plaintiff and its non-attorney patent agents were not subject to the attorney-client privilege. The district court ordered a one-week stay to allow the filing of any appeal. Rather than producing the documents in compliance with the order, the plaintiffs filed a petition for Writ of Mandamus with the United States Court of Appeals for the Federal Circuit.

The district court elected to stay plaintiffs’ production “pending disposition of the petition or other order of the Court of Appeals” and that production remained stayed pending resolution by the Federal Circuit. “A failure to stay the production would have forced the Circuit to consider an emergency motion to stay. Plaintiffs knew that their decision to forego compliance with the discovery order endangered the trial date.”
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In IPR2015-00838 and IPR2015-00840, Petitioner Tristar Products, Inc. (“Petitioner”) filed petitions to instituted IPRs of certain claims of U.S. Patent Nos. 8,485,565 and 8,622,441 owned by Choon’s Design, LLC (“Patent Owner”). Previously, the Patent Owner had sued the Petitioner on the ‘565 and ‘441 patents. The issue was whether was whether the petitioner can rely upon date of service of the complaint set forth in the proof of service filed by the patent owner in satisfying the time limitations set forth in 35 U.S.C. § 315(b), which precludes institution of an IPR “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The unexpected answer was no and, as a result, the PTAB did not institute IPR proceedings involving the ‘565 and ‘411 patents.
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Isola USA Corp. (“Isola”) moved to compel Taiwan Union Technology Corp. (“TUC”) to provide updated sales data in response to document requests an interrogatories. In response to this discovery, TUC had previously provided sales data on allegedly infringing products that covered a period up to December 31, 2014. Isola moved to compel TUC to update that data to cover a period up to July 31, 2015.

In its motion, Isoled asserts that the information sought was relevant because it would be an update of information TUC has already produced. Isola also asserted that it would be prejudiced if the information was not produced, because it should be allowed to present the most complete picture of damages to the jury at trial. In addition, Isola claimed that TUC was required to supplement its sales data pursuant to Federal Rule of Civil Procedure 26(e)(1)(A) on the theory that TUC’s disclosures are now “incomplete” due to the passage of time.
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In Deep Sky Software, Inc. v. Southwest Airlines Co., Defendant Southwest Airlines (“Southwest”) sought its fees and costs following the successful inter partes review of the patent-in-suit, which resulted in all of the asserted claims being invalidated. Among the fees and costs Southwest sought were those related to the filing and prosecution of its IPR petition. Undaunted by the absence of other district court rulings awarding such fees, the district court nonetheless awarded Southwest nearly $400,000 in attorneys’ fees and costs, most of which was related to the IPR proceeding.
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Defendants, Nang Kuang Pharmaceutical Co., Ltd. (“Nang Kuang”) and CANDA NX-2, LLC (“CANDA”) (collectively, “Defendants”) filed a motion to dismiss, asserting that the patent infringement action filed by Plaintiffs, Eli Lilly and Company (“Lilly”) and the Trustees of Princeton University (collectively, “Plaintiffs”), should be dismissed for lack of personal jurisdiction.

As explained by the district court, “Nang Kuang is a Taiwanese generic drug manufacturer seeking approval from the FDA to market generic versions of ALIMTA®. CANDA, a Texas limited liability company, entered into an agreement with Nang Kuang whereby Nang Kuang agreed to exclusively manufacture and supply the ANDA Product to CANDA, and CANDA agreed to assist Nang Kuang with the U.S. litigation arising from Nang Kuang’s submission of the ANDA, and find marketing partners to market, sell and distributed the ANDA Product if the ANDA application is approved by the FDA. As of this date, the FDA has not approved the ANDA, and neither Nang Kuang nor CANDA has commercially manufactured, used, sold or offered for sale in, or imported into, the United States any ANDA Product. On August 25, 2014, Nang Kuang and CANDA jointly provided a notice of certification to the required parties pursuant to 21 C.F.R. § 314.95(a) (‘Notice Letter’), including Lilly’s Indianapolis-based General Counsel and its Indianapolis trial counsel. The submission of the Notice Letter triggered the forty-five day period in which Lilly had to file the instant Hatch-Waxman action to challenge the ANDA and seek an order that the effective date of any approval of Nang Kuang’s ANDA be not earlier than the expiration date of Plaintiffs’ patents.”
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Plaintiff Juno Manufacturing, LLC (“Plaintiff” or “Juno”) filed a patent infringement complaint against Defendant Nora Lighting, Inc. (“Defendant” or “Nora”). The complaint alleged that Defendant infringed Plaintiff’s patent, No. 5,505,419 (the “‘419 Patent”), entitled Bar Hanger for a Recessed Light Fixture Assembly. Nora filed a motion for summary judgment seeking a judgment that Juno was barred from recovering damages on the ground that Juno failed to properly label its products.

In its motion, Nora asserted that Juno failed to provide proper notice of the ‘419 Patent. As explained by the district court, the requisite notice can be actual or constructive.
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