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In IPR2014-01510, 01511, and 01513, in connection with its preliminary response the Patent Owner Mag Aerospace Industries, LLC, submitted an expert report by its expert in the related litigation. The expert report addressed issues relevant to the IPR proceedings, including the patentability of the claims in light of the prior art asserted in the IPRs. As explained below, the Board held that the expert report constituted “new” evidence and thus violates 37 C.F.R. § 42.107(c) even though it was created for the related litigation and not expressly for the IPR proceedings.

The Petition was filed on September 16, 2014. The expert report, filed as Exhibit 2002, is dated November 4, 2014, and was filed on January 2, 2015, along with the Patent Owner’s Preliminary Response. It also is uncontested that the expert report was created for related litigation according to the schedule for that litigation.
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In this patent infringement action, the plaintiff filed a motion to exclude the defendants’ claim construction experts. The plaintiff’s motion was based on the argument that the defendants’ disclosures did not comply with local rules in that they did not identify the actual opinions of the experts.

The district court agreed with plaintiff’s position. “After consideration of the briefing and of Defendants’ expert disclosures, the Court agrees with Plaintiff that Defendants’ disclosures do not comply with Local Rule 4.2.d.2. insofar as Defendants simply identify the general subjects on which their experts may testify, but do not identify the actual opinions Defendants expect the experts to offer.”
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After trial, HTC Corporation and HTC America, Inc. (“HTC”) filed a motion seeking to recover attorney fees and costs from plaintiff’s attorneys as well as from plaintiff Intellect Wireless, Inc. (“IW”). IW withdrew its initial opposition and conceded that the case was exceptional within the meaning of the Patent Act. HTC also contended that a finding should also be made that the attorneys for IW are jointly and personally required to satisfy HTC’s attorney fees and costs because, among other things, IW’s attorneys unreasonably and vexatiously multiplied the proceedings within the meaning of 28 U.S.C. § 1927.
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In an earlier filed decision, the district court had previously found that Escort and its defense counsel had knowingly misled the plaintiff, Fleming, which warranted a sanction of attorney fees. As explained by the district court, “they falsely claimed that the source code identified as ESC17363 was the current operating source code for Escort’s commercially sold products and that it provided a complete defense to Fleming’s patent infringement charges.”

After awarding attorney’s fees, the district court turned to Fleming’s motion to compel the production of certain documents. “Fleming seeks discovery of a wide variety of documents and communications in an effort to determine if Escort fabricated ESC17363 and falsely represented that it was created in the normal course of product development.”
In response, Escort argued that all of the material sought by Fleming was protected by the work product doctrine and the attorney client privilege.
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In IPR2013-00357, Patent Owner Overland Storage, Inc. filed a request for rehearing of the final written decision holding that claims 1-11 of U.S. Patent No. 6,328,766 are unpatentable. The basis for the patent owner’s reconsideration request was that, among other things, the petitioner failed to meet its burden of proof because it offered no expert testimony. As explained below, the Board rejected this position and held that a lack of expert testimony is not dispositive.
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In this patent infringement action, the Defendants requested that the court order a further Rule 30(b)(6) deposition of one of the deponents, Mr. Pang. In the motion, Defendants argued that Plaintiff’s counsel objected more than 300 times during the course of Mr. Pang’s deposition, and the objections impeded the fair examination of Mr. Pang.

In response, the Plaintiff argued that Defendants failed to show good cause to compel a second deposition of Mr. Pang and pointed out that during the deposition, Defendants never raised any issue with Mr. Pang’s responses or with Plaintiff’s counsel’s objections. Plaintiff also argued that its objections were necessary and were stated in a concise, nonargumentative and nonsuggestive manner and noted that Mr. Pang answered every question after Plaintiff’s counsel stated his objection on the record.
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In this patent infringement action, the plaintiff filed a motion for entry of a standard protective order after the defendant would not agree to sign a stipulated protective order. As explained by the district court, the plaintiffs sued defendants, alleging that they infringed on several patents.

After the lawsuit was filed, plaintiffs’ counsel requested that defendants’ counsel sign off on a stipulated protective order to protect certain confidential/proprietary materials that the parties were going to exchange in discovery. The district court explained that “[t]his is standard operating procedure in patent cases in federal court and the parties and the Court routinely sign off on them in these cases.”
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In IPR2014-00739 involving petitioner Shire Development LLC and patent owner LCS Group, LLC, the petitioner sought authorization to file a motion for sanctions against the inventor based on his communications with petitioner in violation of a prior order from the Board. The Board’s prior order stated that “the inventor, Dr. Louis Sanfilippo, is prohibited from contacting Shire, Shire’s employees, the expert retained by Shire for this proceeding (Dr. Timothy Brewerton), and counsel for Petitioner, except through counsel for Patent Owner or in the presence of counsel for Patent Owner.” Paper 9. According to the Petitioner, “the [inventor’s] e-mail, as well as the hyperlink contained within the e-mail, contained misrepresentations, and constituted harassment, as well as veiled threats against Petitioner.”

The Petitioner also sought an adverse judgment based on a statement in the e-mail that “Patent Owner has determined that in order to best protect its interests it is foregoing any further involvement in the IPR process so that it can take the appropriate actions, including legal remedies, to resolve such representations made to the Board that have now caused Patent Owner harm, and so that it can pre-empt further harm from the undue burden of such representations.”
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Plaintiffs Smartflash LLC and Smartflash Technologies Limited (collectively “Smartflash”) filed patent infringement actions against Apple, Inc. (“Apple”), Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC (collectively “Samsung”), HTC Corporation, HTC America, Inc., and Exedea, Inc. (collectively “HTC”) (all collectively “Defendants”) alleging infringement of several patents.

Smartflash’s expert on damages, Mr. Mills, based portions of his damage calculations on surveys conducted by Dr. William Wecker. As explained by the district court, Smartflash hired Dr. Wecker, a statistician, to conduct four surveys related to consumer purchasing decisions of the accused products: (1) an “App Store” survey; (2) a “Movies and TV Shows” survey; (3) a “Music” survey; and (4) a “Books and Parental Controls” survey. Each of the surveys asked consumers if certain features “motivated” them to purchase accused products.
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In the pending patent infringement action between Netflix and Rovi, Netflix filed a motion for summary judgment, seeking a ruling that Rovi’s patents are invalid under 35 U.S.C. § 101. After the motion was filed, the district court “advised Netflix that it was entitled to only one motion for summary judgment in this case, that would be heard after claim construction, and that it needed to seek leave if it intended to go forward with the already-filed motion.”

The district court then found that as a matter of procedure Netflix’s motion was improperly filed. “Netflix did not seek leave of court, nor did it meet and confer with Rovi, prior to filing its early motion for summary judgment. The court also wholly rejects Netflix’s attempt to circumvent the court’s rules by re-characterizing its motion as a motion for judgment on the pleadings under Rule 12(c).”
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