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The district court previously granted summary judgment in favor of the plaintiff, Red Carpet Studio (“Red Carpet”), finding that Defendants Midwest Trading Group Inc. (“MTG”), Walgreen Company and CVS Pharmacy Inc. infringed the patent-in-suit. The parties agreed that two issues remained: (1) determining the relevant “article of manufacture,” and (2) calculating the “total profit” on that article of manufacture. Red Carpet argued that the district court should decide the second issue without a jury because it seeks disgorgement of profits, which Red Carpet maintained is an equitable remedy with no right to a jury trial.

As the district court explained, determining a damages award under 35 U.S.C. § 289 “involves two steps. First, identify the ‘article of manufacture’ to which the infringed design has been applied. Second, calculate the infringer’s total profit made on that article of manufacture.” Samsung Elecs. Co. v. Apple Inc., 137 S.Ct. 429, 434, 196 L.Ed. 2d 363 (2016). The district court acknowledged that “neither the Court nor the parties were able to find authority which directly resolves the question of whether a jury or a judge must make this determination,” but concluded that “there [is] sample support for the conclusion that a claim for damages under § 289 is one for equitable relief.” Continue reading

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Plaintiff Global Tubing, LLC (“Global”) filed a motion to compel production of documents withheld as privileged by Defendant Tenaris Coiled Tubes, LLC (“Tenaris”). As explained by the district court, in its motion to compel, Global claimed that Tenaris obtained its patents by deceiving the Patent and Trademark Office (“PTO”), withholding prior art in prosecuting the main patent, and then altering and withholding a key piece of the prior art. Global contended that Tenaris’ actions withholding the material from the PTO amounted to fraud, vitiating any attorney-client privilege under the crime-fraud exception. Global sought to compel documents withheld as privilege that were in the possession of the prosecution counsel relating to the prior art materials and those relating to inventorship of the three patents at issue. Global also sought to compel production of an affidavit submitted in support of the patent that Tenaris clawed back asserting that the privilege, if any, was waived and the affidavit contained direct evidence of Tenaris’ fraud on the PTO, vitiating any privilege under the crime-fraud exception to the attorney-client privilege.

In support of the motion to compel the affidavit, Global presented evidence of Tenaris’ knowledge of the prior art materials, the inventors’ review and discussion of those materials and the overlapping specifications with the patent-in-suit. As explained further by the district court, Global also showed that Tenaris tendered the materials to prosecuting counsel, and counsel reorganized the material, removing the title page, divider pages, and entire specifications section, which purportedly contained information on overlapping chemistries, particularly significant in light of the PTO’s previous rejection of the patent based on obviousness that included overlapping chemistries. Continue reading

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In this patent infringement action, the plaintiff, Payrange, sought to withhold as privileged a PowerPoint presentation (the “Proposal”) prepared by its current litigation counsel, Wilson Sonsini. Prior to representing Payrange, but in the hope that it would be retained, Wilson Sonsini prepared the presentation and then forwarded it to Payrange. Payrange asserted that the Proposal was a privileged communication protected by both the attorney-client and work-product privileges, that it was inadvertently produced, and that it was clawed back promptly when Defendants raised their intention to rely on the presentation in a filing.

As explained by the district court, the Proposal primarily contains background regarding Wilson Sonsini’s litigation experience, its experience in the intellectual property and patent space, information regarding attorney experience, and a proposed fee arrangement. Additionally, the Proposal contains a comparison of possible venue districts for this litigation. On the executive summary page, the Proposal recommends a preference for one of those venues, and, finally, also on the executive summary page, the Proposal offers a suggestion that Payrange discourage other companies from working with the Defendants. Continue reading

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This weekend I took part in the 4x4x48 challenge created by David Goggins— running 4 miles every 4 hours for 48 hours for a total of 48 miles. At times, the run was both exhilarating and exhausting, particularly those midnight and 4 am runs on minimal sleep. The donations and wide ranging support fueled my inspiration to complete the challenge!

A special thanks to the many donors and supporters that helped me raised over $13,000 for the Special Forces Warrior Foundation. Their mission is to provide educational support for the surviving children of Special Operations personnel who lose their lives in the line-of-duty and the children of Special Operators awarded the Medal of Honor and to provide immediate financial grants to severely wounded, ill, and injured Special Operations personnel who require hospitalization. A link to the donation page is:

Thank you,

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In this patent infringement action, the plaintiff, Personalized Media Communications, LLC (“PMC”), moved to exclude the testimony of Apple’s damages expert, Mr. Thomas. In rebuttal, Mr. Thomas estimated that PMC would be entitled to a lump-sum payment of $1 million per allegedly infringing patent.

PMC asserted that Mr. Thomas’ damages calculation was improper because his calculation of the value added by the patents-in-suit to the functionality of Apple’s FairPlay was flawed. As explained by the district court, PMC pointed to Mr. Thomas’ calculation when he “divided the profitability of FairPlay by 53 (50 Apple DRM patents plus the three patents-in-suit).” They state Mr. Thomas’ calculation “necessarily assumes that each of Apple’s patents has in fact contributed separate and non­cumulative benefit[s] to FairPlay.” PMC further states “[t]he Thomas Report contains no analysis of whether each (or even any) of Apple’s DRM patents were in fact used by Apple in its FairPlay technology at the time the patents-in-suit were issued, the priority date of the Apple patents, or whether the Apple patents are valid.” Continue reading

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A common refrain is that an invention is only as valuable as the patent that protects it. But what happens when you cannot secure the patent? This is a frequent hurdle for inventors seeking to patent products utilizing artificial intelligence (AI). While still in its infancy, at least compared to the lofty expectations of technology enthusiasts, AI has proven integral to driving innovation, but it has also proven equally vexing to fit into the intellectual property legal regime.

In the article, “How to Safeguard AI Technology: Patents versus Trade Secrets,” JMBM attorneys Stanley M. Gibson and Samuel R. Buchman discuss the potential advantages of using trade secret protection where patent protection cannot be obtained.

Read the article on Continue reading

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Plaintiff All Plastic contended it was a leading manufacturer of premium displays and containers for medicinal and recreational cannabis dispensaries. All Plastic filed a patent infringement action against Defendants SamDan LLC d/b/a Smokus Focus (“SamDan”), Samuel Whetsel (“Mr. Whetsel”), and Daniel Russell-Einhorn (“Mr. Russell-Einhorn”) (with Mr. Whetsel, “Individual Defendants” and collectively, “Defendants”) alleging that Defendants make, use, and sell containers for personal cannabis use, that infringe upon the patent-in-suit.

All Plastic filed a motion to compel seeking an order compelling Defendants to produce various documents, re-designate materials already produced and designated “Confidential-Attorneys’ Eyes Only,” and remove redactions applied to materials produced on Defendants’ asserted basis of “relevance.” All Plastic made three arguments to support its contention that “[m]ost of the materials designated by Defendants do not qualify as AEO,”: (1) materials designated as AEO by Defendants are not highly sensitive in nature so as to qualify as trade secrets; (2) the maintenance of Defendants’ unwarranted AEO designations will prejudice All Plastic’s ability to litigate this case because Plaintiff’s counsel can share with their client almost “no material fact” learned from Defendants in this action; and (3) Plaintiff should not bear the expense of objecting to every single one of Defendants’ designations to ensure Defendants’ compliance with their duty to review documents in good faith before designating them as AEO, as per the Protective Order. Continue reading

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On March 2, Stan Gibson and Rachel Capoccia will host a free webinar exploring the issue of false advertising, how it can harm your company, and how you can resolve problems resulting from competitors’ misleading statements. Details on the program and a sign-up link are below. Please join us!

How to Defend Your Company Against False Advertising

Date: Tuesday, March 2

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Plaintiff Baxter International (“Baxter”) sued CareFusion Corporation and Becton, Dickson and Company (“Defendants”) for infringement of three medical infusion pump patents, U.S. Patent Nos. 5,764,034 (the ‘034 Patent), 5,782,805 (the ‘805 Patent), and 6,231,560 (the ‘560 Patent). Baxter moved to strike portions of the Defendants’ invalidity expert, including asserting that the expert impermissibly expanded the scope of the final invalidity contentions.

As explained by the district court, in addition to using the patents for descriptions of physical prior art devices, the expert relied on them as prior art in and of themselves. Baxter contends that this was inappropriate because Defendants’ Final Invalidity Contentions identified the physical devices (the Orion Prototype and Signature Edition II (Model 7200) Pump) as the asserted prior art, not the patents. The district court disagreed finding that after a review of the final invalidity contentions, Baxter was mistaken. The district court concluded that “Defendants disclosed the Eggers, Voss, and Marston Patents as prior art” and the expert was free to rely on them as such. Continue reading

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Read our update on Stan’s 4x4x48 Challenge here.

Next month, Stan Gibson, Chairman of JMBM’s Patent Litigation Group, will run the 4x4x48 for the Special Operations Warrior Foundation. Read his message below.

Like many of you, I have wondered what I can do to help our country and the people in need during the pandemic. After recently reading the book, Can’t Hurt Me by David Goggins, a former Navy seal, I became inspired to run the 4x4x48 challenge on March 5, 2021 at 8 pm through March 7, 2021 at 8 pm.

The 4x4x48 challenge consists of running 4 miles every 4 hours for 48 hours. I’ll be running to fundraise for the Special Operations Warrior Foundation. Their mission it is to help fallen and wounded special operations forces and their families, which is particularly important to me as I have had a number of family members serve in the forces in Iraq and Afghanistan. Continue reading