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Continental Automotive GmbH and Continental Automotive Systems, Inc. (collectively “Continental”) filed a multi-claim lawsuit against iBiquity Digital Corporation (“iBiquity”), which asserted causes of action for patent exhaustion (Count I), patent misuse (Count II), declaratory judgment of patent rights (Count III), as well as several state law claims. iBiquity moved to dismiss Counts I, II, and III, arguing that patent exhaustion (Count I) and patent misuse (Count II) do not arise under federal patent law because they are not proper independent claims but, rather, are defenses to an anticipated patent infringement suit. iBiquity also contended that Continental’s claim seeking a declaratory judgment of patent rights (Count III) does not arise under federal patent law because it is merely a state law breach of contract claim in disguise, seeking to interpret a license agreement.

The district court began its analysis with the patent exhaustion and patent misuse claims. “iBiquity argues that the claims are merely defenses and not affirmative causes of action and, as such, they do not ‘arise under’ federal patent law. Def.’s Mem. Supp. Mot. Dismiss 6-8. Continental responds that this argument is irrelevant ‘[b]ecause subject matter jurisdiction in a declaratory judgment action is based on the claims that could be brought by the declaratory judgment defendant, rather than the declaratory judgment plaintiff.’ Pl.’s Resp. Mot. Dismiss 5. Moreover, Continental asserts that patent misuse may be asserted as an affirmative claim. Id.”
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Plaintiff Ecolab Inc. (“Ecolab”) filed a patent infringement action alleging that Gurtler infringed Ecolab’s patent for “SANITIZING LAUNDRY SOUR,” United States Patent No. 6,262,013 (the “‘013 Patent”). Gurtler subsequently filed a Request for Ex Parte Reexamination of the ‘013 Patent. Gurtler then filed a motion to stay and the United States Patent and Trademark Office (“PTO”) granted Gurtler’s Request for Ex Parte Reexamination of all claims of the ‘013 Patent.

In support of its motion to stay and lack of prejudice to Gurtler, Gurtler argued that Ecolab tactically delayed serving its complaint for four months, which demonstrates that “time is not of the essence” to Ecolab. Additionally, Gurtler argued that because the case was in the early stages of discovery, there was no prejudice to Ecolab. Ecolab argued it will be unduly prejudiced because it is one of Gurtler’s direct competitors, its ability to litigate its claims will suffer, and because Gurtler delayed in seeking reexamination.
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Plaintiff Ecolab Inc. (“Ecolab”) filed a patent infringement action alleging that Gurtler infringed Ecolab’s patent for “SANITIZING LAUNDRY SOUR,” United States Patent No. 6,262,013 (the “‘013 Patent”). Gurtler subsequently filed a Request for Ex Parte Reexamination of the ‘013 Patent. Gurtler then filed a motion to stay and the United States Patent and Trademark Office (“PTO”) granted Gurtler’s Request for Ex Parte Reexamination of all claims of the ‘013 Patent.

In support of its motion to stay and lack of prejudice to Gurtler, Gurtler argued that Ecolab tactically delayed serving its complaint for four months, which demonstrates that “time is not of the essence” to Ecolab. Additionally, Gurtler argued that because the case was in the early stages of discovery, there was no prejudice to Ecolab. Ecolab argued it will be unduly prejudiced because it is one of Gurtler’s direct competitors, its ability to litigate its claims will suffer, and because Gurtler delayed in seeking reexamination.
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After the defendants moved to stay a patent infringement action pending an IPR, the district court analyzed the impact of a potential withdrawal of petitioners from the IPR. The district court began its analysis with the understanding that this was a contingency that might not occur. “The contingency of a PTAB decision after IPR petitioner withdrawal would arise only if all IPR petitioners were to withdraw. I have no idea whether this is at all likely. Nor do I have a basis to speculate upon the reasons why a PTAB petitioner may choose to withdraw after the case has progressed to the point at which a written decision would be appropriate.”
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Card-Monroe Corp. (“CMC”) manufactures tufting machines and equipment. CMC holds several patents that pertain to its machines and equipment. Tuftco Corp. (“Tuftco”) is a competitor of CMC, which also engages in the manufacture and sale of tufting machines. CMC filed a patent infringement action against Tuftco, and Tuftco subsequently filed a Petition for Inter Partes Review (“IPR”) of the patent-in-suit. Tuftco then filed a Motion to Stay Pending Inter Partes Review of Proceedings.

In their briefs on the motion to stay, the parties disagreed as to whether CMC would be unduly prejudiced by a stay of these proceedings. Tuftco argued that the “only potential basis for a claim of undue prejudice is the delay inherent to any stay of proceedings,” but CMC claimed that it would be prejudiced if the district court stayed these proceedings because the parties are direct competitors.
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The plaintiff, U.S. Ethernet Innovations, LLC (“USEI”), filed a patent infringement action against several defendants in the Eastern District of Texas. The district court then transferred the cases to the Northern District of California. While litigation in the Northern District of California proceeded, USEI filed another patent infringement case against Texas Instruments Incorporated (“TI”).

The TI case then proceeded with two jury trials. The first jury returned a verdict finding that the patents-in-suit (“Early Transmit Patents”) were not invalid. The second jury found that TI infringed the asserted claims of U.S. Patent No 5,434,872 and awarded USEI $3,000,000.00 in damages. After the district court rejected TI’s equitable defense of laches, the district court entered a Final Judgment in the case, but the Final Judgment “specifically noted that the Court was still considering the issues raised in the parties’ post-verdict briefing.”
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Plaintiff NOV filed a patent infringement action asserting that defendant Omron had infringed NOV’s patent (U.S. Patent No. 5,474,142 or the ‘142 Patent). Specifically, NOV alleged Omron’s oil rig automation control system has an automatic driller function that infringes one or more claims of the ‘142 Patent.

After years of litigation, Omron filed dispositive motions asserting lack of standing, no infringement and invalidity of the ‘142 Patent. The district court first found that NOV had no standing to assert the patent as the owner of the patent had only “agreed to assign” the patent. “In sum, the prevailing Federal Circuit case law makes clear the “agrees to assign” language in the ACA was not a present assignment. The ACA further indicates Varco, L.P. was to issue a separate assignment document, but there is no such piece of paper. Because NOV is unable to show the ACA was a present assignment of assets, the Court finds, on this ground alone, NOV has failed to satisfy its burden of proving ownership and, consequently, standing to sue.”
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The Plaintiff filed a motion in limine seeking the district court to preclude the Defendant from offering at trial any testimony regarding the Defendant’s opinion of counsel defense that was not disclosed during discovery. As explained by the district court, the Plaintiff also alleged that the Defendant selectively produced certain documents pertaining to the Defendant’s opinion of counsel defense and instructed witnesses not to testify on matters concerning the Defendant’s investigation into the Plaintiff’s allegations of patent infringement and theft of trade secrets.
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Barco filed a patent infringement action in September 2011 against Defendants Eizo Nanao Corporation and Eizo Nanao Technologies, Inc. (“Eizo”), alleging that Eizo infringed various claims in U.S. Patent No. 7,639,849 (the ‘849 patent). After Barco filed a reissue application with the United States Patent and Trademark Office (the “PTO”), in which it added seventy-eight new claims to the original thirty-seven claims of the ‘849 patent, the district court stayed the action.

Eizo subsequently filed an inter partes reexamination, seeking to reexamine the original thirty-seven claims of the ‘849 patent and the district court continued the stay even though the patent was reissued by the PTO as RE43,707 (the ‘707 patent), because the inter partes reexamination proceedings initiated by Eizo were still pending before the PTO.
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Rosebud filed a patent infringement action Adobe and Adobe moved for summary judgment arguing that Rosebud had no remedy for its patent against Adobe. Adobe based its summary judgment motion on the argument that the patent-in-suit did not issue until after Adobe’s accused product was discontinued.

As set out by the district court, the parties did not dispute that the accused feature of Adobe’s product (Collaborate Live) was discontinued and could not have been used after January 2013. As the ‘280 patent issued on November 5, 2013, Rosebud could not recover post-issuance damages. Instead, Rosebud sought to recover provisional remedies under 35 U.S.C. § 154(d), based on the publication of the ‘280 patent application on December 29, 2011, which requires the defendant to have actual knowledge of the published patent application.
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