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by Ali Shalchi
In Lewis v. Activision Blizzard, Inc., No. 4:12-cv-01096-CW (N.D. Cal. Oct. 17, 2013), an employee of Blizzard brought suit against the company for copyright infringement, alleging ownership of voiceover work used in the popular World of Warcraft online video game. The key issue on Blizzard’s motion for summary judgment of non-infringement was whether an employee’s voiceover work was within the scope of employment and thus a work made for hire. In granting summary judgment, the court applied a three-part test for scope of employment pursuant to the Restatement of Agency.

Defendant Lewis was a Blizzard employee in the role of “game master,” which involves the resolution of technical and customer services issues associated with the online gameplay. Blizzard developers invited the game masters to audition for voiceover work for various game characters. Lewis participated in the audition and developed a voice and song for the game’s aquatic character known as a “baby murloc.” According to Lewis, her belief was that the recording was only to be used for promotional videos. However, upon learning that her voice recording was used in the game itself, she sued Blizzard for copyright infringement. Blizzard argued that the recordings were works made for hire under 17 U.S.C. §201(b) and that, alternatively, it was a joint author of the recordings and was therefore its use was permitted.
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Unwired Planet LLC (“Unwired Planet”) filed a patent infringement action against Google and it originally identified 124 claims from ten patents as its asserted claims against Google. Unwired subsequently reduced the number of its claims. At the August 20, 2013 case management conference, the parties offered different proposals for further reduction of Unwired’s asserted claims as well as reduction of Google’s prior art references.

With respect to reducing the prior art references, Google asserted that limitations on its prior art defenses “has the effect of depriving Google of viable defenses to Unwired Planet’s claims,” but proposed a reduction if the court directed it. Unwired disagreed and proposed its own reductions to Google’s prior art references. The district court then ordered 12 references per patent and no more than 40 claims asserted after claim construction and 4 references per patent and no more than 20 references before trial.

Google sought reconsideration of the district court’s order and the district court found that it had committed clear error.
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Eclipse IP LLC (“Eclipse”) filed several patent infringement actions against a number of defendants, in which it alleged indirect infringement (both inducing and contributory) as well as willfulness. The district court sua sponte issued an order regarding the indirect infringement claims as well as the willfulness allegations.

The district court analyzed the recent Federal Circuit decision that addressed the knowledge requirements for indirect infringement claims. “As discussed in length in the recent decision in Labyrinth Optical Technologies, LLC v. Fujitsu America, Inc., the Federal Circuit has recently resolved whether a defendant must have this knowledge before litigation begins. 8:13-cv-00030-AG-MLG (C.D. Cal. Aug. 21, 2013), ECF No. 33. In In re Bill of Lading Transmission & Processing System Patent Litigation, the Federal Circuit held that the plaintiff had met the knowledge requirement to bring an indirect infringement claim when it provided notice of the patent via service of the original complaint. 681 F.3d 1323, 1345 (Fed. Cir. 2012); accord Labyrinth, 8:13-cv-00030-AG-MLG, slip op. at 8-9 (analyzing Bill of Lading’s treatment of this issue in detail and holding patent-holder sufficiently alleged defendant’s knowledge in amended complaint based on service of original complaint); Eon Corp. IP Holdings, LLC v. Sensus USA, Inc., No. C-12-1011 EMC, 2012 WL 4514138, at *1 (N.D. Cal. Oct. 1, 2012) (holding that in Bill of Lading, post-complaint knowledge is sufficient). Thus, to meet this knowledge requirement in pleading indirect infringement, Plaintiff need not necessarily allege Defendants’ pre-suit knowledge of the patents. However, what knowledge Plaintiff does allege must still be plausible.”
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As Apple and Samsung head toward yet another trial, Apple filed a motion for sanctions, accusing Samsung of violating the protective order in the case. Apple’s motion asserted that Samsung’s counsel had improperly shared information under the protective order with executives at Samsung.

The court began its analysis with a discussion of the importance of protective orders: “Time and again in competitor patent cases, parties resist producing confidential information to their adversaries’ lawyers. They fear, among other things, that the lawyers will insufficiently shield the information from the competitors that they represent. Yet time and again, the court assuages these fears with assurances that a protective order will keep the information out of the competitors’ hands. A casual observer might reasonably wonder what magic a protective order works that allows outside counsel access to confidential information to advance the case without countenancing untoward uses by the client. The answer is not a magical one at all: confidential information remains confidential because counsel and clients alike follow court orders. If parties breach this basic rule, the court’s assurances become meaningless. There is reason to believe the rule has been breached in the present case.”
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As this patent infringement action moved closer to trial, the parties filed various motions in limine, including defendant Fortinet Inc.’s motion to strike the report and expert testimony of Network Protection Sciences, LLC’s (“NPS”) damage expert. In its motion to strike, Fortinet contended that the damage expert’s analysis improperly based royalties on the entire market value of the accused products.

To analyze the motion to strike, the district court summed up the entire market value rule as follows: “The entire market value rule — which has varied somewhat in formulation over time — has been a highly-criticized and highly-litigated methodology. In recent years, the Federal Circuit has restricted its use, most notably in LaserDynamics v. Quanta Computer, Inc., 694 F.3d 51, 67 (Fed. Cir. 2012). In that action, the Federal Circuit explained it as follows (per Judge Jimmie Reyna):
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In the ongoing battle between Activision TV, Inc. (“Activision”) and the Attorney General for the State of Nebraska, Activision filed a preliminary injunction motion seeking to bar the Attorney General from enforcing a cease and desist order entered against Activision’s counsel. The district court had previously determined that the Attorney General could not preclude Activision’s counsel from representing Activision in the current patent infringement action pending in federal court in Nebraska. The district court was now faced with the issue of whether the Attorney General could order counsel for Activision (Farney Daniels) to cease and desist initiation of all new patent infringement enforcement efforts in Nebraska.

In response to the motion, the Attorney General first argued that the district court lacked jurisdiction to determine the issue because the cease and desist order applies to Farney Daniels and not to Activision and, as a result, Farney Daniels lacked standing to raise these issues because it is not a party to the action pending before the district court.
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WiLAN USA, Inc. (“Wi-LAN”) filed a patent infringement action against Alcatel-Lucent USA Inc. (“Alcatel-Lucent”). After a lengthy claim construction order, the parties filed a joint motion to vacate the claim construction order and dismiss the pending lawsuit. The motion consisted of a single page and contained no points and authorities in support of the motion.

The district court was not impressed by the single page motion, which did not include a memorandum of law as required by the local rules. “The one-page Motion, which seeks in part a vacatur of the 75-page Order [ECF No. 141] of September 9, 2013 (“September 9 Order”) on claim construction following a day-long Markman hearing, is unaccompanied by a memorandum of law. See Local Rule 7.1(a)(1).”
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Activision TV, Inc. (“Activision”) filed a patent infringement action against Pinnacle Bancorp, Inc. (“Pinnacle”). Counsel for Activision, Farney Daniels, had previously sent letters to companies throughout the United States that Activision believed were infringing its patents. Five of these companies were in Nebraska. The letters requested information to determine if three was infringement of the patents.

As a result of these letters, the Attorney General’s office for the State of Nebraska opened an inquiry. After the action was filed against Pinnacle, the Nebraska Attorney General filed a cease and desist letter against the law firm of Farney Daniels. The cease and desist letter prohibited Farney Daniels from initiation new patent infringement enforcement efforts in the State of Nebraska. Because of the cease and desist order, Farney Daniels asserted it would be unable to represent Activision in this case and in other federal court cases.

Activision then moved for a preliminary injunction to permit Farney Daniels to represent it in the currently pending patent infringement case. The district court conducted a hearing at which it questioned representatives from the Nebraska Attorney General’s office.
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As this patent infringement action proceed toward trial, plaintiff Kimberly-Clark Worldwide, Inc. (“Kimberly-Clark”) filed a request with the district court on an “extremely time-sensitive case management issue concerning the use of depositions at trial and deposition designations.” During a telephonic status conference, Kimberly-Clark requested that the district require the defendants First Quality Baby Products, LLC (“First Quality”) present at trial any deposition testimony of Kimberly Clark’s testifying employee witnesses when they are called by Kimberly-Clark instead of during First Quality’s case-in-chief.

As part of its request, Kimberly-Clark asserted that its proposed procedure would be more efficient and would prevent delay and any potential confusion that would be created by calling the same witnesses to testify, whether by live testimony or by depositions, during different phases of the trial. First Quality opposed Kimberly-Clark’s request by arguing that this type of procedure would improperly permit Kimberly-Clark to dictate the manner in which First Quality presents its case.
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Robocast filed patent infringement actions against Apple and Microsoft. As expert reports were underway, Apple and Microsoft moved to compel undisclosed surveys that were commissioned by one of Robocast’s experts. As the Magistrate Judge explained, “Specifically, I am asked to resolve the parties’ dispute concerning certain undisclosed surveys commissioned by Professor James T. Berger in anticipation of his issuing expert reports vis-a-vis each defendant. Those two reports, in turn, are the foundation upon which another plaintiff’s expert directly relies for the purpose of establishing the scope of damages against the defendants. Robocast’s survey expert actually had preliminary surveys conducted for each of the two defendants, Apple and Microsoft, prior to the surveys which form the basis for his expert reports’ conclusions.”

Robocast resisted to reveling the prior surveys was predicated on the argument that Professor Berger claimed he did not rely upon any of the prior surveys in connection with reaching the conclusions reflected in his final reports concerning each defendant. “Indeed, because the expert deleted the earlier surveys (which had been performed after his retention by the plaintiff) from his computer, he was physically unable to take them into consideration at the time he reviewed and adopted the later-commissioned surveys into his final reports.”
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