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Plaintiff filed a patent infringement action, alleging that Defendant B2B Supply and Defendant Jerrell P. Squyres (hereinafter “Defendants”) infringed U.S. Patent No. 7,731,462 (the ‘462 patent). Toward the end of discovery, the Defendants served written discovery and filed a motion seeking to extend the discovery deadline by 50 days to complete fact discovery and compelling Plaintiff to produce all responsive documents, certify that its production is complete, produce witnesses for deposition, and answer Defendants’ interrogatories.

In support of the motion, Defendants argued that an extension was necessary because Plaintiff had withheld documents from production and had otherwise failed to cooperate with discovery. As explained by the district court, the Defendants argued they were unable to complete discovery because Plaintiff withheld production, provided deficient respondes to discovery, and failed to certify that it had produced all responsive documents, which prevented Defendants from using the information to serve additional written discovery requests and third party subpoenas. Plaintiff responded that it timely served its responses and objections to Defendants’ discovery requests and that it had been diligent in searching for responsive documents.
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In this patent infringement action, the plaintiff filed a motion for discovery sanctions. The plaintiff argued in its motion that defendant failed to comply with the district court’s October 7, 2015 oral discovery order and related text-only order, in which the district court apparently warned the defendant that failure to comply would result in sanctions.
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Today’s blog is written by guest author Pedram Sameni, the CEO and Founder of Patexia.
The views expressed are solely those of the contributing author.

As patent litigation overall has grown rapidly since 2010, the industry has also seen a shift in some traditionally litigation averse players. University tech transfer organizations in particular have increased their filings and drawn industry attention over the last few years.

Two cases in particular have been highlighted in the press for their stunning initial award amounts. First Carnegie Mellon won its case against Marvell, bringing in an initial award of over $1 billion in damages, the largest patent verdict of all time. This was followed by the decision in WARF v Apple, where the Wisconsin Alumni Research Foundation was initially awarded $234 million in damages.
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Plaintiff Max Sound Corporation (“Max Sound”) filed a First Amended Complaint (“FAC”) against three defendants: Google, Inc., YouTube, LLC and On2 Technologies (collectively, “Defendants”), for the infringement of Patent No. 7,974,339 (the “‘339 patent”). As part of the complaint, Max Sound also included the owner of the ‘339 patent, Vedanti Systems Limited (“Vedanti”), as a party to the lawsuit.

Defendants filed a motion to dismiss pursuant to Fed.R.Civ.Pro. 12(b)(1), asserting that this action must be dismissed because Max Sound lacks standing to sue. As explained by the district court, “[a]ccording to Defendants, VSL had no authority to confer any rights under the ‘339 patent to Max Sound on June 20, 2014, because the true owner of the ‘339 patent at that time was Vedanti. Moreover, Defendants believe the plain language of the June 20th license agreement makes clear that the contract was only between VSL and Max Sound – not Vedanti.”
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Defendant’s filed a motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(1) motion, contending that Plaintiffs lacked standing because no case or controversy existed at the time Plaintiffs filed the complaint. Defendant argued that the Plaintiffs had suffered an “injury in fact.” The “injury in fact” element of standing requires “an invasion of a legally protected interest that is (a) concrete and particularized, and (b) actual or imminent, not conjectural or hypothetical.” Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992) (citations and quotation marks omitted).

Defendant contended that the complaint fails to establish an “injury in fact” because it accused only one of Defendant’s products of infringement (the “MoMe® Kardia System”) and that product is incapable of infringement because it is still under development and not yet approved by the Food and Drug Administration (“FDA”).
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On November 17, 2015, during a deposition of a fact witness, counsel for the plaintiff, Ericsson Inc. (“Ericsson”), attempted to question the witness regarding a litigation hold memorandum (the “memo”). Counsel for the plaintiff stated that she inquired as to the existence of such a memo, the date received, if any, and the recipients of the memo, if any.

Plaintiff’s counsel explained to the court that the witness was directed by counsel not to answer the questions on the basis of attorney-client privilege. The court was further advised that the information was relevant because there are allegations of potential spoliation in this case.
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Canvs filed a patent infringement action in 2014 asserting that Nivisys induced and contributed to the infringement of its patent through the sale of TACS and TACS-M products. After a lengthy stay, the district court held a Markman hearing and before the district court took any action related to the Markman hearing, Nivisys filed a Motion for Summary Judgment. After that, the district court entered its Claim Construction Order.

After the claim construction order, the partied asked the district court to enter judgment in favor of Nivisys on all claims asserted in the action and to vacate its Claim Construction Order “[t]o avoid collateral estoppel against Canvs.”
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The district court had previously stayed all proceedings in the pending an IPR. The district court issued the stay because the USPTO proceedings had the potential to resolve the validity of most of the claims in the patents-in-suit.

After the stay, the USPTO declined to institute the IPR with respect to two of the patents and agreed to review only a limited number of claims related to the third patent. Plaintiff Cequent Performance Products, Inc. (“Cequent”) moved to lift the stay because the USPTO entirely refused to institute inter partes review proceedings on two of the patents (the ‘780 and ‘352 Patents) and refused to institute an inter partes review proceeding on nine claims related to the third patent.
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Cobra International, Inc. (“Cobra”) filed a patent infringement action against Defendants for infringement of U.S. Patent No. 5,821,858 (“the ‘858 patent”). Cobra alleged that the ‘858 patent was issued to Allan J. Stone, who became “the owner” of the patent, and that Stone assigned the patent to Cobra.

The district court had previously granted Defendants’ Renewed Motion for Summary Judgment of Patent Invalidity for Lack of Inventorship on the ground that Stone was not the sole inventor of the ‘858 patent, but the district court also held that Cobra “must be allowed to correct inventorship pursuant to 35 U.S.C. § 256 in order to avoid a finding of patent invalidity.” Defendants subsequently moved to dismiss the on the ground that Cobra does not have complete ownership of the ‘858 patent and failed to join its co-owners as plaintiffs.
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Plaintiff SATA GmbH & Co. KG (“Plaintiff”) sought an ex parte Motion for Temporary Restraining Order and a Motion for Preliminary Injunction. Plaintiff alleged that Defendants Zhejiang Refine Wufu Air Tools Co., Ltd. (“Wufu”) and Prona Tools, Inc. (“Prona”) (collectively, “Defendants”) committed trademark counterfeiting, trademark infringement, and design patent infringement through Defendants’ use of Plaintiff’s trademarks and design patents on Defendants’ products.

The district court explained that “[i]n order to succeed on its motion, ‘[a] plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.’ Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). Injunctive relief is ‘an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.’ Id. at 22.”
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