Articles Posted in Uncategorized

Published on:

by


It appears that the announced death of inequitable conduct claims may have been premature. As described below, yet another court allowed such claims to survive summary judgment.

A court in the Northern District of Illinois denied summary judgment on the plaintiff’s motion for summary judgment of no unenforceability. Citing the Federal Circuit’s recent decision in Therasense v. Becton, Dickinson & Co., 2011 WL 2028255 (Fed. Cir. May 25, 2011), the court reiterated the new, heightened standard for proving inequitable conduct that to prevail on such a claim, “the accused infringer must prove by clear and convincing evidence that the applicant knew of the [prior art] reference, knew that it was material, and made a deliberate decision to withhold it.” Slip Op. at 15. Moreover, “merely proving that the applicant should have known of the reference’s materiality is insufficient. Though a district court may infer intent from indirect and circumstantial evidence, in order to meet the clear and convincing evidence standard, the specific intent to deceive must be ‘the single most reasonable inference able to be drawn from the evidence.'” Id. Finally, the accused infringer must prove that the omitted reference is but-for material by showing that the PTO would not have allowed the claim had it been aware of the undisclosed prior art. Id.

The accused infringer claimed that the patentee engaged in inequitable conduct during the prosecution of the patent-in-suit by improperly adding new matter by: (1) submitting an incorrect English translation of the international application; (2) representing to the USPTO that no new matter had been added to the substitute specification filed with the USPTO; and (3) representing that the substitute specification had been provided as required by the Examiner and omitting the proper substitute specification.
Continue reading

Published on:

by

Plaintiff filed a patent infringement action against several defendants. After the district court’s Markman decision, the parties filed cross-motions for summary judgment regarding patent infringement and the scope of damages. After denying the parties’ respective cross-motions for summary judgment, the district court addressed the defense motion for a limitation on damages due to plaintiff’s failure to properly mark his device.
The defendant argued that even if it did infringe the patent-in-suit, plaintiff would not be entitled to any damages for any infringement between the issuance of the patent and the filing of the complaint because plaintiff failed to mark his product with the patent number.

As the district court noted, “[a] patentee may only recover damages for patent infringement that occurs after the patentee provides notice to an accused infringer under 35 U.S.C. § 287(a).” Notice can be satisfied either by constructive notice or actual notice. Constructive notice is satisfied if the patentee marks the product consistently and continuously with the word patent or “pat.” and the patent number or, if the product cannot be marked, the product’s packaging can be marked. Actual notice is satisfied by an affirmative communication from the patentee regarding a specific charge of infringement by a specific accused product or device.
Continue reading

Published on:

by

In a ruling that is likely to become more and more common after the passage of the America Invents Act, the United States District Court for the Northern District of California dismissed all but one of the defendants in a patent infringement action for improper joinder. In February 2010, the plaintiff filed a patent infringement action against Apple, Dell, HP, Lenovo and Sony for allegedly infringing a patent for dynamic power management of solid-state memories. The plaintiff alleged that each of the defendants sells computers and/or computer systems that infringe the patent-in-suit.

Plaintiff filed a motion seeking leave to amend the complaint to join five additional defendants on the ground that the new defendants’ products also allegedly infringe the patent-in-suit. The existing defendants then filed a motion to dismiss the complaint as to all but one of the defendants based on the argument that the defendants were misjoined in the action.
Continue reading

Published on:

by

Plaintiff AlmondNet, Inc. filed a patent infringement action against Microsoft Corporation based on four patents pertaining to Internet advertising. Microsoft filed several affirmative defenses and counterclaims against AlmondNet, including a defense and counterclaim that AlmondNet engaged in inequitable conduct before the PTO by failing to disclose three articles related to Internet advertising and three existing Internet advertising systems. AlmondNet moved to dismiss the inequitable conduct counterclaim and the district court granted the motion with leave to amend to plead inequitable conduct with particularity.

Microsoft subsequently amended its answer and counterclaim and AlmondNet moved to strike the inequitable conduct defense and to dismiss Microsoft’s counterclaim for inequitable conduct. The district court determined that Microsoft’s amended pleading was sufficient and denied the motion.
Continue reading

Published on:

by

Plaintiff Bruce Saffran, M.D. (“Dr. Saffran”) filed a patent infringement case against Johnson & Johnson. After a jury trial, the jury returned a verdict in favor of Dr. Saffran finding that the patent was valid and that Johnson & Johnson had willfully infringed the patent. The jury found damages in the amount of $482 million. After the jury returned its verdict, the district court granted a Fed.R.Civ.P. 50(a) motion, finding no willful infringement. Johnson & Johnson also moved for a new trial under Fed.R.Civ.P. 59.

Johnson & Johnson brought its motion on two separate grounds: (1) the evidence of willful infringement tainted the trial proceedings and (2) counsel for Plaintiff violated the “Golden Rule.” With respect to the willful infringement argument, the district court noted that it could only make this determination after the development of a full record and it was not appropriate to dismiss the willful infringement allegations on summary judgment. The district court also ruled that it was not convinced a new trial was warranted because of any alleged prejudice to Johnson & Johnson due to the introduction of the willfulness claims at trial. To reach this conclusion, the district court found that the argument failed because the evidence would have been admissible for induced infringement and that, regardless, the jury was instructed separately regarding the law for each type of claim and the type of evidence that could be considered for that claim. Notably, Johnson & Johnson did not object to the jury instructions on these points.
Continue reading

Published on:

by

TiVo filed a patent infringement action against Verizon and Verizon counterclaimed alleging that TiVo infringed six of its patents. TiVo raised inequitable conduct counterclaims against certain of the Verizon patents. Verizon filed a motion to dismiss, which the district court granted under the principles set forth in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009), but permitted TiVo to amend its pleading. TiVo amended its pleadings and Verizon renewed its motion to dismiss.

The district court began its analysis by noting that the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson and Company, 2011 WL 2028255 (Fed. Cir. May 25, 2011) was decided after the parties had completed their briefing on the motion. Although Therasense changed the standard for proving inequitable conduct, the district court stated that Thereasense did not address the pleading standard because it was decided based on the review of a bench trial. Accordingly, Exergen remains the leading authority on the pleading standard for inequitable conduct. “Exergen held that for ‘pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.'”
Continue reading

Published on:

by

Plaintiff filed a patent infringement action based on patents for wireless communications networks and a system and method for monitoring and controlling remote devices. Defendants moved to dismiss the plaintiff’s claims for direct infringement and for inducing and contributory infringement based on the argument that plaintiff failed to identify a specific system or product in its complaint. Defendants also asserted that plaintiff failed to adequately plead indirect infringement because the complaint did not identify the underlying infringing product, the direct infringer, or the alleged infringing claims. One of the defendants also asserted that the indirect infringement contentions should be dismissed because the identification of customers as the direct infringers is insufficient and the plaintiff failed to plead any facts to show that defendants knew of the patent and intended to encourage infringement.

The Magistrate Judge recommended denying the motion. After discussing the pleading standards under Fed.R.Civ.P. 8(a)(2), the Supreme Court’s recent decisions in Twombly (Bell Atl. Corp v. Twombly, 550 U.S. 555-56, 570 (2007))and Iqbal (Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949-50, 1953 (2009)), and Fed.R.Civ.P. 84, Form 18, the court concluded that plaintiff’s allegations of direct and indirect infringement were sufficient.
Continue reading

Published on:

by

Plaintiff filed a patent infringement action against the defendant alleging that certain of defendant’s T-shirt transfer products infringed plaintiff’s patent. Defendant filed an answer and counterclaim which accused the plaintiff of inequitable conduct in amending its patent during a reissuance of the patent. Defendant claimed that plaintiff deliberately pursued a broadened reissue patent based on her learning of material faults in the patent after having had an opportunity to analyze defendant’s products and technology. Defendant’s primary contention was that the amendments made during the reissuance proceeding added new material to the patent.

As the district court wrote, “[a] reissue patent that enlarges the scope of the claims contained in an original patent shall not be granted unless it is applied for within two years of the grant of the original patent.” The reissue application for the patent-in-suit was filed more than two years after the issuance of the patent. Plaintiff moved to dismiss the inequitable conduct defense on the grounds that the facts alleged did not support a plausible inference that the plaintiff (1) made an affirmative misrepresentation of material fact or failed to disclose material information to the PTO during the reissue examination and (2) intended to deceive the PTO.
Continue reading

Published on:

by

In a recent ruling from the United States District Court for the Sothern District of California, a Magistrate Judge allowed discovery to take place on an inequitable conduct defense after the discovery cut-off. The defendant propounded document requests a little more than 30 days before the discovery cut-off and plaintiff produced documents in response to those requests the day before the discovery cut-off. On the last day for discovery, defendant took the deposition of the inventor of the patent-in-suit.

Based on information learned during the deposition and documents produced by plaintiff at the close of discovery, defendant contended that the plaintiff made material misrepresentations to the Patent Office to overcome a section 112 rejection. Based on that contention, defendant sought leave to amend its answer, assert an affirmative defense of inequitable conduct and to pursue additional discovery directed toward that defense.
Continue reading

Published on:

by

Plaintiff Hurricane Shooters, LLC sought summary judgment of no invalidity on Defendant’s defenses of prior inventorship under Section 102(g) and lack of utility under Section 101. The patents-in-suit involve drinking cups for serving mixed drinks in bars and restaurants having a plural chamber that optimizes the mixing of fluids as they are simultaneously poured while minimizing interference with the nose of the drinker.

Defendant’s invalidity defense was based on a plural chamber “bomb cup” invented by a competitor. Rejecting Plaintiff’s evidence of an earlier date of invention in August 2004 consisting only of the uncorroborated inventor’s testimony, Plaintiff’s inventors’ evidence showed that they invented their plural chamber cup in November of 2004. Defendant, however, presented evidence that its plural chamber cup was invented in October 2004. The Hurricane Shooters court was faced with the issue of whether Defendant’s evidence of an earlier invention was sufficient to survive summary judgment.
Continue reading