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In a patent infringement action between Kimberly-Clark (“K-C”) and First Quality Baby Products (“First Quality”) pending in the United States District Court for the Eastern District of Wisconsin, K-C filed a motion to compel First Quality to produce sales evaluation files relating to products accused of infringement. K-C asserted that the files were necessary because they might lead to admissible evidence regarding damage claims for a reasonable royalty and for lost profits due to price erosion. First Quality admitted in a deposition that the sales evaluation files contain information that is used in setting prices.

In analyzing whether the files should be produced, the district court began by stating that “[i]n calculating a reasonable royalty courts consider, among other things, the ‘infringer’s anticipated profit from the use of the patented invention.'” The district court found that First Quality’s sales evaluation files contain contribution margin analysis, which is a profitability measure used by First Quality to set prices. As a result, the district court noted that “it logically follows that First Quality’s sales evaluation files should be produced as they may aid in any calculation of reasonable royalties.”
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In a recent case from the United States District Court for the Eastern District of Virginia, the district court granted defendants’ motion to limit damages for failure to mark for all but one of the patents-in-suit. Pursuant to 35 U.S.C. §287(a), a patentee must either mark a patented product or provide actual notice of infringement in order to recover damages. Section 287 can be satisfied either by constructive notice, accomplished by marking a product or packaging with the applicable patent number, or actual notice, such as sending a cease and desist letter or providing the alleged infringer with actual notice of infringement through another affirmative act.

Defendants filed a motion for judgment as a matter of law asserting that the plaintiff had failed to introduce sufficient evidence to support a finding that it was entitled to recover pre-suit damages because it failed to comply with the marking requirements of Section 287. Plaintiff argued that Section 287 did not apply because the defendants were aware of the patents and, therefore, had actual knowledge regardless of plaintiff’s failure to mark. The plaintiff also argued that with respect to one of the patents Section 287 did not apply because the plaintiff was only asserting method claims and not apparatus claims.
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The United States District Court for the Central District of California denied a motion for partial summary judgment finding that certain means-plus-function limitations were sufficiently definite to survive a challenge to the patent’s validity. The plaintiff filed a patent infringement action against the defendant over a patent that relates to a computer mouse with a roller element for scrolling in computer application programs. The defendant argued that the patent was invalid because the patent includes means-plus-function limitations that do not identify corresponding structure in the specification.

In analyzing the definiteness of the means-plus-function limitations, the district court noted that construction of such a limitation is a two step process involving first determining the function of the term and second connecting that function to sufficient structure. The district court also stated that “[w]hen a function is implemented in software, identification of a general purpose computer, microchip, or software program will not suffice as description of its structure.”
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In the ongoing patent battle between Google and Oracle over aspects of the Android operating system, Oracle filed a motion seeking to take four additional depositions, including Google CEO, Larry Page. Each of these depositions would be over the ten deposition limit established by Fed.R.Civ.P. 30. Google opposed the request on the ground that these depositions would not only be over the ten deposition limit but also that Oracle was seeking “apex” depositions from the highest level of executives at Google. The court sided with Oracle.

With respect to Mr. Page’s deposition, the court noted that “Rule 30 of the Federal Rules of Civil Procedure requires a party wishing to take more than ten depositions without consent of other parties to obtain leave from the Court to proceed.” The court also noted Fed.R.Civ.P. 26(b)’s requirement that “[w]hen evaluating a party’s request to expand discovery limitations, the court must ensure that the discovery sought is ‘relevant to[the] party’s claim[s] or defense[s]’ and not unreasonably cumulative, duplicative, or burdensome.”
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Plaintiff brought suit in the United States District Court for the District of Delaware against defendants asserting declaratory judgment, antitrust, Lanham Act and state tort claims based on two patents co-owned by the defendants. The defendants moved to transfer the case to the United States District Court for the Central District of California, primarily because a related case involving the same patents was in the Central District. The District Court granted the motion to transfer.

In opposing the motion to transfer, the plaintiff argued that the case could not be transferred to the Central District of California because the Central District did not have personal jurisdiction over the plaintiff. In rejecting this contention, the district court noted that Section 1404(a) requires that “the party moving for transfer bear the burden of proving that the action properly could have been brought in the transferee court in the first instance.”
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In a recent case in the United States District Court for the District of Delaware, the district court stayed a patent infringement case pending reexamination of the patent in the Patent and Trademark Office (“PTO”). Defendant filed a motion to stay the case in light of an inter partes reexamination of the patent-in-suit that was granted by the PTO, arguing that the reexamination will simplify the issues before the parties and the court because “75% of all reexaminations granted from 1981 through June 30, 2009 have resulted in either the cancellation of all claims or at least some claims.” Plaintiff opposed the motion as a “delay tactic,” contending that “recent trends in inter partes reexaminations indicate that only 24% of reexaminations result in the cancellation of all patent claims at issue and that inter partes reexamination proceedings can last six to eight years.”

First, referring to Fed.R.Civ.P. 26(c) and noting that a district court may impose a stay of discovery on a showing of good cause, the district court stated that “[s]pecifically, a court has broad discretion to stay a case pending reexamination.” Second, the district court found that granting a stay would not cause undue prejudice to the plaintiff or allow the defendant to gain a clear tactical advantage.
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Defendants moved to transfer a multi-defendant patent infringement case from the Eastern District of Texas to the Eastern District of Michigan. The defendants asserted that transfer was appropriate under 28 U.S.C. §1404(a) due to factors of convenience. The plaintiff opposed the motion on the ground that the defendants had not shown that the case could have originally been filed in the Eastern District of Michigan. The court agreed with the plaintiff and denied the motion to transfer.

The court began its analysis by examining whether the action could have originally been filed in the Eastern District of Michigan. Noting that “[w]ell established authority makes clear that a transferee court must have specific jurisdiction over the defendants in the transferred complaint,” the court found that the moving parties had not established that the case could have been brought in Michigan. The court stated that the moving parties had attempted to establish jurisdiction over all the defendants in Michigan by arguing a stream of commerce theory, i.e., that defendants products were sold in the state of Michigan.
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Plaintiff filed a patent infringement suit against 17 defendants alleging direct, indirect and joint infringement. The defendants moved to dismiss for failure to state a claim. The district court granted the motions to dismiss the joint infringement and indirect infringement claims, but denied the motions to dismiss the direct infringement claims.

The patent-in-suit discloses a data processing station subscriber unit that delivers interactive or television-quality entertainment and informational content to subscribers. Each of the independent claims include a limitation requiring a plurality of sources of video text and television program channels available from a wireless television program communication network.
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A Texas Court recently granted a plaintiff’s motion to strike the defendant’s non-infringement theory based on the defendant’s failure to previously disclose it. At trial, the defendant attempted to elicit testimony from the plaintiff’s expert witness that the accused website did not infringe, in light of the way it operated. Because the defendant had not previously disclosed this theory of non-infringement at any time before trial, the plaintiff moved to strike this testimony. In granting the plaintiff’s motion, the Texas court rejected the defendant’s argument that it was not required to disclose its non-infringement theory because the plaintiff bears the burden of proving infringement.

In its opinion, the Court reiterated the long held liberal discovery policies in the Eastern District of Texas: “[t]he Eastern District of Texas is well known for it liberal discovery policies and its high expectations that the parties and their counsel be forthcoming in their discovery obligations. Under the Court’s Discovery Order, requests for production are not required; parties are expected to produce all relevant documents without formal requests for production. These policies promote efficient dispute resolution and avoid trial by ambush.”
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Plaintiff’s complaint alleged a single count for patent infringement, which asserted that the defendant infringes its patent through the use of an online dating website. The particular feature accused is called “QuickMatch,” which notifies two users who demonstrate mutual interest in each other. The patent is directed to a computerized method of notifying individuals of reciprocal interest that offers confidentiality and anonymity. The method described in the patent provides for confidentiality by allowing only the computer system to be aware of each user’s expressed interests until the computer determines that there is mutual interest.

The defendant moved to dismiss the complaint pursuant to Fed.R.Civ.P. 12(b)(6) for failure to state a claim upon which relief can be granted. The defendant based its argument on the United States Supreme Court’s recent decision in Bilski v. Kappos, 130 S.Ct. 3218 (2010). The defendant argued that the subject matter of the patent is an abstract idea not eligible for patent protection, asserting that the invention is the idea of having an intermediary determine whether two people (or other entities) may be interested in one another and, if so, introducing the two. Defendant also argued that the patent preempts a broad range of human activity including match-making, headhunting and silent auctions.
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