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Complainant Neptun filed a motion to quash three notices of deposition served by several respondents, specifically Satco, Maxlite, and Litetronics. Neptun sought to quash the three separate notices of deposition directed to Marzenna Bobel, the CFO of Neptun. Satco opposed the motion, and cross-moved to compel Mrs. Bobel’s deposition and the production of certain documents.

As explained by the administrative law judge, Neptun’s chief financial officer, Mrs. Bobel supervises the data entry of Neptun’s financial transactions into a QuickBooks database. Neptun produced various reports generated from this QuickBooks database in support of its domestic industry allegations in this investigation. Satco asserted that it was entitled to depose Mrs. Bobel because her testimony would be relevant to the domestic industry requirement.
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The following 36 decisions were reported in patent cases pending in the Central District of California for the period of April 1 through April 30, 2013.

CACD Decisions.bmp

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.

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The following twenty decisions were reported in patent cases pending in the Central District of California for the period of May 1 through May 31, 2013.

May 1 to May 31 CACD Rulings.JPGThe authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com/a>.

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After a jury trial in which plaintiff Summit 6 was awarded $15 million against Samsung, Summit 6 moved for an award of future, ongoing royalties to compensate it for Samsung’s continued infringement after the verdict. Summit 6’s motion was based on the argument that the jury’s verdict only compensated it for Samsung’s past infringement up to the point of trial.

On the verdict form, the jury added the words “lump sum” under the $15 million amount. In its motion, Summit 6 argued that the jury instruction did not define “lump sum,” nor did the jury instructions explain that a lump sum award would be through the life of the patent, instead of up to the date of trial. Samsung argued in response that the jury understood that “lump sum” covered both past and future infringement, citing to specific testimony during trial defining the term “lump sum.”
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In a pair of recent decisions, the Patent Trial and Appeals Board further clarified the requirements of filing a motion to amend the claims. These recent decisions supplement the Board’s recent decisions in IPR2012-00027 (Paper No. 26) and IPR2012-00005 (Paper No. 27) in which the Board provided guidance regarding the filing of motions to amend claims.

On June 26, in Oracle Corporation v. Clouding IP, LLC, IPR2013-00099, the Board (APJs Chang, Kim and Elluru) issued a decision following the patent owner’s intention to file a motion to amend the claims. In the telephone conference on the patent owner’s motion, the Board noted “that Clouding would have to account for the level of ordinary skill in the art and the basic skill set possessed by one with ordinary skill, and may not limit its consideration to just the references over which this trial was instituted.” In other words, in its motion the patent owner must demonstrate that the proposed amended claims address the grounds of rejection in light of the level of ordinary skill of a person skilled in the art as well as over the prior art, including prior art that the Board did not rely upon in granting the petition.

The Board also noted that “when indicating written description support in the specification, [the patent owner] should make reference to the disclosure in the original applications as filed, rather than to the portions of the issued patent, and provide sufficient explanation in addition to citations to the specification.”

Finally, the Board explained that “should an expert declaration be submitted in support of a motion to amend claims, the motion itself should set forth the arguments and explanations with appropriate pinpoint citations to the expert declarations, rather than just incorporating by reference the expert declarations.”

In Synopsys, Inc. v. Mentor Graphics Corporation, IPR1012-00042, the Board (APJs Blankenship, Medley and Bisk) issued a decision on the patent owner’s motion to amend in which the Board dismissed the motion without prejudice because the patent owner failed to list the proposed amended claims in the body of the motion and instead listed them in an appendix. The Board stated that “by doing so, [the patent owner] circumvented the motion page limit [of 15 pages].
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Ball Metal Beverage Container Corp. “(Ball Metal”) filed a declaratory judgment action against CMI&J LLC (“CML&J”) for non-infringement and invalidity. CML&J moved to dismiss the action for lack of personal jurisdiction, contending that it lacked sufficient minimum contacts with Colorado.

The declaratory judgment action centered on U.S. Patent No. 8,245,866 (the “‘866 Patent”), which is directed to a type of beverage container. Three friends created the product embodied in the ‘866 Patent, Daniel Gibson, Joseph Snecinski, and Todd Epstein. The three friends incorporated CML&J to license the beverage container described in the ‘866 Patent. Gibson and Snecinski reside in Connecticut, and Epstein resides in Massachusetts. CML&J’s place of business is in Connecticut.
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Carnegie Mellon University (“CMU”) filed a motion for attorney fees pursuant to 35 U.S.C. Section 285, seeking attorney fees of approximately $17.2 Million as a prevailing party at the jury trial against Marvell Technology Group (“Marvell”) that resulted in a jury verdict of over $1 billion. The jury also found that Marvell’s infringement was willful.

Section 285 provides that “the court in exceptional cases may award reasonable attorney fees to the prevailing party.” “Although an attorney fee award is not mandatory when willful infringement has been found, precedent establishes that the court should explain its decision not to award attorney fees.” Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 37 (Fed. Cir. 2012) cert. denied, 133 S. Ct. 1291 (2013) (citing Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1349 (Fed. Cir. 2011)). As the district court explained, “[t]he inquiry into attorney fees is related to both willfulness and enhanced damages as explained under § 284, given similar considerations are relevant to both. Id. at 38. ‘However, the situations in which § 284 and § 285 may be invoked are not identical’ because attorney misconduct or other ‘aggravation of the litigation process’ may weigh heavily in regards to attorney fees, but not as to the enhancement of damages. Id.”
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DDR Holdings, LLC (“DDR”) filed a patent infringement action against multiple defendants alleging infringement of U.S. patent Nos. 6,629,135 (“the ‘135 patent”) and 6,993,572 (“the ‘572 patent”). The case went to trial on October 8, 2012 against Digital River, Inc. (“Digital River, Inc. (“Digital River”), National Leisure Group, Inc., and World Travel Holdings, Inc. (collectively, “NLG”). After a five day trial, the jury returned a unanimous verdict finding that Digital River infringed several claims of the ‘572 patent and awarded damages to DDR of $750,000 for the period of the issue date of the patent, January 31, 2006, through the verdict date, October 12, 2012. The jury also found that NLG infringed several claims of the ‘572 patent and several claims of the ‘399 patent. The jury awarded damages to DDR of $750,000 for the period of the earliest issue date, January 31, 2006, through the verdict date.

After the trial, Digital River contended that it was entitled to judgment as a matter of law that the asserted claims were invalid as indefinite. Digital River argued that because the patent specification lacked the required objective to allow one of ordinary skill in the art to know when the claimed “look and feel” element has been achieved. To make this argument, Digital River relied on Datamize, LLC v. Plumtree Software, Inc. where the Federal Circuit found the term “aesthetically pleasing” to be indefinite because the patentee “offered no objective definition identifying a standard for determining when a interface screen is aesthetically pleasing.” Datamize, 417 F.3d 1342, 1350 (Fed. Cir. 2005).
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SFA Systems (“SFA”) filed a patent infringement action against Amazon and twenty-six other defendants in 2011. SFA subsequently timely served its infringement contentions pursuant to the local rules in the Eastern District of Texas. After receiving discovery from Amazon, SFA requested that Amazon supplement its discovery responses to produce documents relating to the Kindle Fire and the Amazon Mobile application. Amazon declined to do so on the basis that the Kindle Fire and the Amazon Mobile app were not accused in the infringement contentions. After several attempts to meet and confer, SFA sought to amend its infringement contentions.

As explained by the district court, the local Patent Rule 3-6 sets forth the procedures for amending infringement contentions. This rule provides that infringement contentions. “shall be deemed to be…final contentions.” Patent Rule 3-69a). When a party seeks to amend or supplement its invalidity contentions and considers four factors in ruling on motions for leave to do so: (1) the explanation for the party’s failure to meet the deadline; (2) the importance of the thing that would be excluded; (3) the potential prejudice in allowing the thing that would be excluded; and (4) the availability of a continuance to cure such prejudice. Global Sessions LP, 2012 WL 1903903, at *2 (citing S & W Enters., L.L.C. v. Southtrust Bank of Ala., NA, 315 F.3d 533, 536 (5th Cir. 2003)).
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After Syntrix Biosystems, Inc. (“Syntrix”) filed a patent infringement action against Illumina, Inc. (“Illumina”), a jury returned a verdict against Illumina for patent infringement and awarded a reasonable royalty of 6%. Syntrix subsequently filed a motion for an ongoing royalty in the amount of 9% instead of seeking a permanent injunction.

The district court fist explained that after a jury verdict of infringement, a district court may award an ongoing royalty for continued patent infringement. See Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1315 (Fed. Cir. 2007). The parties should ordinarily be given an opportunity to negotiate a license regarding future use of the patented invention, but if they are unable to reach agreement, the district court can “step in to assess a reasonable royalty in light of the ongoing infringement.” Id.
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