Published on:

by

In this patent infringement action brought by plaintiff Trustees of Boston University (“BU”) , BU alleged that defendants infringed U.S. Patent No. 5,686,738 (the “‘738 Patent”), which pertains to light emitting diodes (“LEDs”). BU moved for sanctions against Defendants and their counsel for overdesignating documents as “Confidential-Outside Counsel Eyes Only.”

After BU served document requests for emails, Defendants ran search terms that produced over 3.5 million pages of emails. The Defendants then designated every document of that production as Outside Counsel Only, but the Defendants did not review each document to determine whether it in fact contained confidential information. As explained by the district court, “[b]ecause there was not enough time to review each document and meet [the 30-day] deadline, Defendants reviewed the documents quickly and determined that the emails generally met the requirement of the Global Protective Order, and marked them “CONFIDENTIAL-OUTSIDE COUNSEL EYES ONLY.”‘
Continue reading

Published on:

by

The amended complaint filed by Gene Neal and Kennieth Neal alleged claims for patent infringement and violations of California state law for unfair competition and false advertising. The Defendants, pursuant to Rule 26(d), Federal Rules of Civil Procedure sought “an Order regarding the handling of discovery concerning Plaintiffs’ pre-filing investigation of Defendants’ products which Plaintiffs allege the asserted patents (see, e.g., Doc. No. 34 ¶ 17). The parties were unable to reach an agreement concerning the handling of discovery concerning Plaintiffs’ pre-filing investigation after numerous meet and confers and exchange of correspondence. Instead of rushing to the Court to file a motion to compel, Defendants’ proposal strikes the right balance between discovery of this relevant information and avoidance of unnecessary litigation costs and therefore Defendants believe that the Court should enter ” an appropriate order.
Continue reading

Published on:

by

In this patent infringement action, Defendant Lighthouse Photonics Corporation’s (“Lighthouse”) moved to reconsider the Court’s Claim Construction Order. Lighthouse argued three reasons for reconsideration: “first, Newport withheld discovery regarding its relevant prior art patents; second, a recent Supreme Court decision constitutes an intervening change in the law; and third, the Court adopted a construction that had not been advanced by either party until the reply briefing.”

The district court, turning to the first basis for the motion to reconsider, stated: “There has been no shortage of sniping and finger-pointing in this case, and the briefing on this Motion is no exception. The parties vigorously dispute whether Newport withheld discovery regarding its prior art patents: No. 4,756,003 (“‘003 Patent”) and No. 5,410,559 (“‘559 Patent”). The Court finds no need to wade into the quagmire over who withheld what, because it exercises its “inherent jurisdiction to modify, alter, or revoke” interlocutory decisions. See Martin, 226 F.3d at 1048-49. Specifically, the Court finds that the presentation of two related patents, which were allegedly withheld by Newport, constitutes good cause to reconsider the May 7, 2014 claim construction order.”
Continue reading

Published on:

by

Boku, Inc. (“Boku”) filed a CBM petition with the PTAB seeking review of the patentability of Plaintiff’s U.S. Patent No. 7,273,168 (the “‘168 patent”). The petition challenged all claims of the ‘168 patent on grounds that they are indefinite, or anticipated by or rendered obvious by one or more of four prior art references not considered by the Patent Office during prosecution of the patent -in-suit.

Boku moved to stay the litigation pending the CBM review based on Section 18(b) of the America Invents Act (“AIA”). As explained by the district court, this statute requires the court to weigh four factors when determining whether to stay litigation pending CBM review, including (1) whether a stay, or denial thereof, will simplify issues and streamline the trial, (2) whether discovery is complete and whether a trial date has been set, (3) whether a stay, or denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party, and (4) whether a stay, or denial thereof, will reduce the burden of litigation on the parties and the court.
Continue reading

Published on:

by

Digitech Image Technologies (“Digitech”) asserted U.S. Patent No. 6,128,415, directed to the generation and use of device profiles for digital image processing system against numerous defendants, including Xerox and Fujifilm Corporation. Digitech appealed the district court’s finding on summary judgment that the asserted claims were invalid under 35 U.S.C. §101. Specifically, Digitech argued that the district court erred in finding (1) that the device profile claims are directed to a collection of data that lacks tangible or physical properties and (2) that the asserted method claims encompass an abstract idea not tied to a specific machine or apparatus. The Federal Circuit affirmed the decision of the district court.

The ‘415 patent was aimed at reducing distortion of an image’s color and spatial properties caused by imaging devices (e.g. digital cameras, TVs, printers) due to the fact that such devices differ in the range of colors and spatial information that they utilize. According to the court, independent claims 1 and 26 described a device profile as “a collection of information; specifically, a description of a device dependent transformation of spatial and color information”:

1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:

Continue reading
Published on:

by

Adrea, LLC (“Adrea”) filed a patent infringement action against Barnes & Noble, Inc., barnesandnoble.com llc, and Nook Media LLC (collectively, “B&N”), which alleged that B&N’s e-reader Nook infringed U.S. Patent Nos. 7,298,851 (“the ‘851 patent”), 7,299,501 (“the ‘501 patent”), and 7,620,703 (“the ‘703 patent”). As explained by the district court, “[t]he ‘851 patent describes systems and methods of securely distributing electronic books and other digital content to a portable viewing device, discloses an operations center for storing and transmitting electronic books and a device for viewing books, and further describes encryption processes for securing those electronic books. The ‘501 patent describes systems and methods of controlling access to electronic books, essentially a fixed-time rental system. The ‘703 patent describes devices and methods for retrieving information related to the usage context of devices and discusses embodiments where the device is configured to retrieve information about the usage context of the device without a web browser.”
Continue reading

Published on:

by

After a jury trial in which Power Integrations, Inc. (“Power”) obtained a verdict of infringement and validity in its favor against Fairchild Semiconductor (“Fairchild”), Power moved for a permanent injunction. In analyzing the motion, the district court first repeated the common test from eBay: “In order to obtain a permanent injunction, Power, as the moving party, must demonstrate each of the following four factors:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

eBay Inc v. MercExchange, LLC, 547 U.S. 388, 391 (2006).
Continue reading

Published on:

by

In Gaymar Industries, Inc. v. Cincinnati Sub-Zero Products, Inc. et al, 1-08-cv-00299 (NYWD July 3, 2014, Order) (McCarthy, M.J.), the magistrate judge recommended denial of defendant’s request for reconsideration of its failed motion for attorneys’ fees under 35 U.S.C. §285 in light of Defendant’s unclean hands.

After the court’s denial of its motion for attorneys’ fees as an “exceptional case” pursuant to 35 U.S.C. §285, Defendant Cincinnati Sub-Zero Products, Inc. (“CSZ”) moved for reconsideration in light of new case authority, i.e. Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749 (2014) and Highmark, Inc. v. Allcare Health Management System, Inc., 134 S.Ct. 1744 (2014). The court noted that Octane Fitness lowered the burden of proof for proving an “exceptional case” by rejecting the “clear and convincing” standard in favor of the “preponderance of the evidence” and relaxed the underlying test by holding that “an ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated. District courts may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances . . . . There is no precise rule or formula for making these determinations.” Citing 134 S.Ct. at 1756; Highmark, 134 S.Ct. at 1748.

The court found that neither of the submitted authorities called for a different result than previously reached. In doing so, the court noted these cases did not alter the long-standing rule that “[e]ven for an exceptional case, the decision to award attorney fees . . . [is] within the district court’s sound discretion.” Citing Brooks Furniture Manufacturing, Inc. v. Dutailier International, Inc., 393 F.3d 1378, 1382 (Fed. Cir. 2005). This discretion allows the judge to consider factors, including closeness of the case, the tactics of counsel, the conduct of the parties, and any other factors that may contribute to a fair allocation of the litigation burdens of litigation between winner and loser.

Continue reading
Published on:

by

After the PTAB instituted a CBM review of the patents-in-suit, Google sought a stay of the litigation pending resolution of CBM review by the PTAB. The district court explained that “[c]ourts consider four factors when deciding whether to stay litigation pending CBM review: (1) whether a stay will simplify the issues, (2) whether discovery is complete and a trial date is set, (3) whether there will be undue prejudice to the non-moving party, and (4) whether a stay will reduce the burden on the Court and the parties. See AIA § 18(b)(1).”

With respect to the first factor, the district court found that some “simplification of the issues could result from cancellation of the asserted claims or, failing that, from the estoppel effects on Google arising from presenting its arguments to the PTAB in the CBM process. See AIA § 18(a)(1)(D).” But the district court also found that the “estoppel only goes so far, especially as the PTAB rejected several of the grounds for CBM review articulated by Google. Thus, unless the PTAB invalidates all of the asserted claims on a basis on which it has initiated CBM review, it is likely that the Court will have to address at least some of Google’s invalidity defenses. Therefore, while the simplification factor favors a stay, it does not do so by much.”
Continue reading

Published on:

by

ThinkOptics, Inc. (“ThinkOptics”) filed a patent infringement action accusing several Defendants of infringing three patents: U.S. Patent Nos. 7,796,116; 7,852,317; and 7,864,159. As explained by the district court, “[t]he three patents share a common specification and are directed to systems and methods for displaying and moving a cursor on a screen using a handheld pointing device. All defendants other than Nintendo have since been dismissed. The accused products encompass Nintendo Wii consoles that operate with the Wii Remote, Wii Remote Plus, and the Wii Sensor Bar.”
Continue reading