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Defendant Green Max Distributors, Inc. (“Green Max”) filed a motion for leave to amend its invalidity contentions. In the motion, Green Max sought to add photos, publications, and prior-art references to its original invalidity contentions. These additional references included additional photos that “more clearly and from different angles” depicted the prior art, full versions of the publications that depicted the prior-art references, nine newly cited publications, and eleven newly cited prior art references.

Green Max moved to amend its invalidity contentions in August 2013. Nonetheless, Green Max asserted that it was diligent because it provided Hydrodynamic with many of the additional references it sought to include, asserting that it provided Hydrodynamic with updated invalidity contentions containing “most” of the additional references in response to an interrogatory on February 20, 2013, and then disclosed some of the additional references at Green Max’s deposition of Hydrodynamic conducted on July 16, 2013. The district court found that this argument was irrelevant. “But Green Max’s disclosure of the prior art to Hydrodynamic is irrelevant to the diligence inquiry. Green Max must have been diligent in discovering the new prior art and in bringing its motion to amend its invalidity contentions–not in its disclosure to Hydrodynamic.”
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In this patent infringement action, a number of the defendants moved to stay the case pending an Inter Partes Review (“IPR”) of the patent-in-suit. The district court had previously denied a motion to stay pending a previous reexamination proceeding before the patent office.

In October 2012, shortly after the America Invents Act’s IPR process became available, Kyocera filed an IPR against all asserted claims of the patents-in-suit. The Patent Trial and Appeal Board (“PTAB”) found that Kyocera demonstrated “a reasonable likelihood of prevailing in its challenge” to the asserted claims. Kyocera then moved to stay pending the IPR process and the other defendants filed a motion to stay pending the IPR process as well.
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Plaintiff Power Integrations, Inc. (“Power Integrations” or “PI”) filed a patent infringement action against Defendants Fairchild Semiconductor Int’l, Inc., Fairchild Semiconductor Corp. (collectively, “Fairchild”) and System General Corp. (“System General”). Power Integrations is a manufacturer of power conversion integrated circuit devices, which are used in power supplies for electronic devices such as cellular phones, LCD monitors and computers.

Fairchild filed a Second Amended Answer and Counterclaims, which included the ‘700 patent, entitled “Control Circuit With Adaptive Minimum On Time for Power Converters” for the first time. The District Court issued its Claim Construction Order construing various terms in the ‘700 patent on May 6, 2013.
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Carnegie Mellon University (“CMU”) filed a patent infringement action Marvell Technology Group and Marvell Semiconductor, Inc. (“Marvell”) that alleged infringement of two CMU patents. The jury rendered a verdict in favor of CMU, finding that Marvell infringed the patents, that the patents were valid and that there was willful infringement. The jury also awarded damages in excess of $1.1 billion.

Marvell filed several post-trial motions, including one for judgment as a matter of law or, in the alternative, for a new trial on damages. Marvell also argued for a mistrial based on certain of CMU’s counsel’s statements during closing argument and throughout the trial. After reciting the standard for granting a new trial, the district court addressed the specific issues raised by Marvell.
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In this patent infringement action between i-Tec Well Soultions, LLC (“i-Tec”) and Peak Completion Technologies, Inc. (“Peak”), the district court issued an unusual order as the case approached trial. With the case expected to be a jury trial, both sides were ordered to submit tailored jury instructions.

The district court, most likely frustrated by the unintelligible jury instructions that are frequently submitted in patent cases, issued an “Order on Confusion.” In the “Order on Confusion,” the district court stated that “the parties must give the court tailored jury instructions written in plain language if they want a jury trial in October.” Thus, the district court made it clear that it wanted jury instructions that could be understood by a jury of lay people even in a complex patent trial.
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I/P Engine, Inc. (“I/P Engine”) filed a complaint against AOL, Inc., Google, Inc., IAC Search & Media, Inc., Gannett Company, Inc. and Target Corporation (collectively “Defendants”) in which I/P Engine alleged that the Defendants infringed several of its patents. After a jury trial, the jury reached a verdict finding that Google had infringed the asserted claims of two of I/P Engine’s patents and the jury awarded I/P Engine damages in the amount of $30,496,155, which did not include interest. The jury also awarded I/P Engine a running royalty rate of 3.5%. After the trial, I/P Engine moved for an ongoing royalty and Google opposed.

The district court began its analysis by noting that “[i]n light of the Supreme Court’s decision in eBay, Inc. v, MercExchange, LW, 547 U.S. 388 (2006), it is no longer appropriate for a district court to enter an automatic permanent injunction to prevent future patent infringement.” Based on this directive, the district court also discussed that many other courts have found that an ongoing royalty is appropriate if the plaintiff cannot meet the requirements of a permanent injunction. The district court also concluded that “there is adequate support for the Court’s authority to impose an ongoing royalty when necessary to effectuate the jury’s finding of patent infringement. Further, there is no support in eBay or the subsequent case law that suggests a prevailing party in a patent infringement suit must be able to show that the requirements for a permanent injunction have been met before an ongoing royalty can be awarded to said party.”
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Tomita Technologies USA, LLC (“Tomita”) won a jury verdict of $30M against Nintendo in patent infringement action. The jury found that Nintendo’s 3DS infringed the patent-in-suit (the ‘664 patent) and that the ‘664 patent was not invalid. Nintendo filed several post-trial motions, including a motion for a remittitur of the damages or a new trial.

The district court explained the background of the case as follows: “The ‘664 patent is a patent relating to stereoscopic (or 3D) imaging technology and includes four major elements: (1) ‘a stereoscopic video image pick-up device’ (i.e., two cameras), (2) a ‘stereoscopic video image display,’ (3) a ‘cross-point measuring means for measuring [cross-point] information on the cross-point (CP) of optical axes,’ and (4) an ‘offset presetting means for offsetting and displaying said different video images.’ U.S. Patent No. 7,417,664 col. 2, 1.44-65. Tomita claims that Nintendo uses the `664 patent’s technology in the 3DS’s two outer cameras. Thus, only the 3DS’s camera application (which allows the user to take and view 3D photos and videos) and the augmented reality (“AR”) game card application (which allows some games to be superimposed over real-world images captured by the 3DS’s cameras) are at issue. The 3DS’s other applications, including its 3D display, do not rely on the `664 patent.”
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Plaintiff e-Watch, Inc. filed a patent infringement action against several defendants, including Defendant FLIR Systems, Inc. (“FLIR”). FLIR filed a motion to stay pending an inter partes review of the patent-in-suit by the Patent Office.

In deciding to grant the stay, the district court noted that the action was at an early stage and that the inter partes review could simplify the issues in the case. “This action is at a very early stage, and a stay could materially simplify the issues in the case if the United States Patent and Trademark Office (“USPTO”) decides to institute an inter partes review with respect to either of the patents at issue.”
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In this patent infringement action, Defendant Sirius XM Radio, Inc. (“Sirius”) sought a “patent acquisition bar” against plaintiff’s counsel from Freitas Tseng & Kaufman, LLP (“Freitas”). In seeking the bar, Sirius asserted that the Freitas attorneys who would gain access to Sirius’ confidential technical information should be barred from advising any clients in the “acquisition of patents involving satellite radio signal processing for the purpose of asserting them against” Sirius for two years after the conclusion of the litigation, including any appeals. Freitas objected to the patent acquisition bar.
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Plaintiff Keranos, LLC (“Keranos”) alleged that Silicon Storage Technology (“Silicon Storage”) and other defendants infringed three related patents by manufacturing certain flash memory products. Keranos sought leave to amend its infringement contentions to add additional products that the defendants disclosed during discovery.

As explained by the district court, the Eastern District of Texas’ Local Patent Rule 3-1 requires a party claiming infringement to identify each accused product in its infringement contentions. The “identification shall be as specific as possible,” including name and model number, if known. PR 3-1(b). Generally, infringement contentions may only be amended or supplemented upon a showing of good cause. PR 3-6(b). The Court considers four factors when reviewing a motion to amend infringement contentions: “(1) the explanation for the party’s failure to meet the deadline, (2) the importance of what the Court is excluding, (3) the potential prejudice if the Court allows the thing that would be excluded, and (4) the availability of a continuance to cure such prejudice.” Alexsam Inc. v. IDT Corp., No. 2:07-cv-420-CE, 2011 WL 108725, at *1 (E.D. Tex. Jan. 12, 2011). As part of the good cause showing, the party seeking to amend must demonstrate that it was diligent in discovering the additional products and in seeking to amend. Id.; see also West v. Jewelry Innovations, Inc., No. C 07-1812, 2008 WL 4532558, at *2 (Oct. 8, 2008) (finding that a party must be diligent in discovering the basis for amendment).
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