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As the litigation between Motorola and Apple rages on throughout the country, one judge has had enough of an ever increasing number of claims and patents asserted by both companies. As explained by the district court, “[b]oth Apple and Motorola greatly expanded the scope of this patent litigation by, among other things, supplementing patent infringement and invalidity contentions.”

As part of these supplemental infringement and invalidity contentions, the asserted claims and patents dramatically increased. “The litigation now includes over 180 claims asserted from the 12 patents, and the parties dispute the meaning of over 100 terms from those claims.”
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Volterra Semiconductor (“Volterra”) filed a motion to prevent Primarion from offering evidence regarding the subjective prong of the Seagate test on willful infringement. See In re Seagate Technology, LLC 497 F.3d 1360 (Fed. Cir. 2007). As explained by the district court, “Volterra argues that Primarion’s Seventh Supplemental Responses to Volterra’s Interrogatory No. 7 demonstrate that the willfulness witnesses identified by Primarion (Sandro Cerato, Arun Mittal and Ken Ostrom) may offer testimony at trial that Primarion’s decision to continue to market and produce infringing devises after receiving Volterra’s cease and desist letter was based, in part, on an investigation undertaken by counsel.”

Based on this interrogatory response, Volterra contended that Primarion was seeking to use the privilege as both a sword and a shield by presenting evidence of counsel’s investigation to show that it took the cease and desist letter seriously, while also asserting the attorney client privilege to block any discovery as to the investigation.
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In this ITC investigation, Respondents Yantai Zhenghai Magnetic Material Co., Ltd., Anhui Earth-Panda Advance Magnetic Material Co., Ltd., and Ningbo Jinji Strong Magnetic Material Co., Ltd. (collectively, “Manufacturing Respondents”) moved to compel discovery responses from Complainants Hitachi Metals, Ltd., and Hitachi Metals North Carolina, Ltd. (Collectively, “Hitachi Metals”).

The motion was based on the Manufacturing Respondents argument that Hitachi was improperly asserting privilege regarding the pre-filing investigation conducted by Kroll Advisory Solutions.
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Princeton Digital Image Corporation (“PDIC”) filed several patent infringement actions against Hewlett-Packard, Fujifilm, Xerox, Facebook and Ricoh, among others. The Defendants moved to dismiss the complaint for lack of standing. The case is based on two patents for digital image processing technology in cameras, computers and other devices. In May 2009, a predecessor to PDIC purchased the patents from GE.
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The following four decisions were reported in patent cases pending in the Central District of California for the period of March 18 through March 29, 2013.

Thumbnail image for CACD Decisions dated 3-18-13 through 3-29-13.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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Hitachi Consumer Electronics Co. LTD. (“Hitachi”) filed a patent infringement action against Top Victory Electronics (Taiwan) Co LTD (“Top Victory”). As the case approached trial, the parties filed several motions in limine. In particular, Top Victory filed a motion in limine to preclude Hitachi from arguing to the jury that its failure to obtain an opinion of counsel could be used against it in determining whether its infringement was willful.

The district court determined that Top Victory was essentially asking for the district court to apply the new Advice of Counsel Provision from the America Invents Act. “In their briefing, Defendants effectively ask the Court to apply the Advice of Counsel provision of the American Invents Act (AIA), which expressly prohibits the use of an accused infringer’s decision not to obtain advice of counsel as evidence of willful infringement to this case. See 35 U.S.C. § 298.”
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Plaintiff Vasudevan Software, Inc. (“VSi”) filed a motion for sanctions against defendant MicroStrategy (“MS”). The sanctions motion was based on statements that VSi characterized as threats against both VSi and its counsel by an outside counsel and a principal of MS, in conjunction with MS’s filing of a request for reexamination of four of VSi’s patents and another patent held by Zillow, a client of VSi’s outside counsel. Rather than deny that the statements were made, MS asserted that even if the statements were made they could not be sanctioned for making them because of the First Amendment.

The district court explained the background facts as follows: “Sean Pak, a partner at Quinn, Emanuel, Urquhart & Sullivan, LLP, counsel for MS, contacted Brooke Taylor, a partner at Susman Godfrey, counsel for VSi. He requested a meeting include the principals of VSi and MS. Pak said MS was planning to be “aggressive” in defending against VSi’s claims in this case and would take “initiatives” toward that end, including filing reexamination petitions with the USPTO to reexamine VSi’s patents. Pak proposed flying to Seattle (where the Susman Godfrey office in which Taylor works is located) to discuss these “initiatives” with VSi and its counsel. Taylor agreed and Pak, Taylor and Jordan Conners (a Susman Godfrey associate also representing VSi) met in person at Susman Godfrey’s Seattle offices on September 10, 2012. Additional VSi counsel Les Payne and Eric Enger of Heim, Payne, & Chorush, LLP, VSi principals Mark and Helen Vasudevan, and MS Executive Vice President and General Counsel Jonathan Klein participated in the meeting over the phone. Klein stated that he would not pay VSi anything to settle VSi’s patent infringement claims against MS and, if VSi did not immediately dismiss the case, threatened to make the litigation as painful as possible for VSi, file reexamination petitions with the USPTO for all of VSi’s patents in suit, and take action against Susman Godfrey. When Payne specifically asked Klein what he meant by taking action against Susman Godfrey, he refused to answer and suggested that Susman Godfrey would have to wait and see. ”
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Complainants Canon, Inc., Canon U.S.A., Inc. and Canon Virginia, Inc. (“Canon”) filed a motion for summary determination that Canon satisfied the economic prong of the domestic industry requirement for each of the patents in the investigation. Canon asserted that it satisfied “[t]he economic prong of the domestic industry requirement based on all three subsections of § 13379a)(3). Mem. At 1. Namely, Canon argues that its significant investment in plant and equipment, its significant employment of labor and capital, and its substantial investment in the exploitation of the asserted patents, including engineering and quality assurance activities, each independently meet the economic prong of the domestic industry requirement.”

As explained by the administrative law judge, “[i]n patent-based proceedings under section 337, a complainant must establish that an industry “relating to the articles protected by the patent…exists or is in the process of being established” in the Untied States. 19 U.S.C. § 1337(a)(2). Under Commission precedent, this domestic industry requirement of Section 337 consists of a “technical prong” and an “economic prong.” Certain Variable Speed Wind Turbines and Components Thereof, Inv. No. 337-TA-376, Comm’n Op. at 7 n.13 (Oct. 28, 1997) The “technical prong” of the domestic industry requirement is satisfied when the complainant’s activities relate to an article protected by the patent. 19 U.S.C. § 1337(a)(2). The economic prong is satisfied by meeting any one of three criteria with regard to articles protected by each of the patents at issue: (A) significant investment in plant and equipment; (B) significant employment of labor or capital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing. 19 U.S.C. § 1337(a)(3). Given that these criteria are in the disjunctive, satisfaction of any one of them will be sufficient to meet the domestic industry requirement.”
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In the next round of litigation in the ongoing war between Apple and Samsung over Smartphones, the district court ordered the parties to file a joint status report to address whether the new action should be stayed pending the appeal in the prior litigation. As explained by the district court, “[o]n march 7, 2013, the parties in this action filed a joint status report regarding whether they believed that a stay of this litigation was appropriate pending resolution of the appeal of the parties’ separate litigation in Civil Action No. 11-cv-01846″) See ECF No. 393.”

The district court then declined to stay the case pending the appeal based on the parties’ joint status report. “The District Court has broad discretion to stay proceedings as an incident to its power to control its own docket.” Clinton v. Jones, 520 U.S. 681, 706 (1997). In light of the parties’ joint status report, the Court will not stay the case. Accordingly, Defendants Samsung Electronics Co., Ltd., Samsung electronics America, Inc, and Samsung Telecommunications America, LLC shall not file a motion seeking this administrative relief. If circumstances change, the Court will notify the parties.”
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In this two-part blog, the standards for seeking discovery are discussed in the context of a recent order in Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC, IPR2012-00001. In Garmin, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Lee, Tierney and Cocks) issued an order regarding the patent owner’s (Cuozzo) request for additional discovery. In its order, the Board clarified what constitutes routine discovery and what constitutes additional discovery, including its explanation of the showing that must be made under the “interests of justice” standard for obtaining additional discovery.

Regarding routine discovery, the Board noted that the Board’s authorization is not required for a party to conduct routine discovery. The Board explained that “[u]nder 37 C.F.R. § 41.51(b)(1)(i), ‘[u]nless previously served or otherwise by agreement of the parties, any exhibit cited in a paper or in testimony must be served with the citing paper or testimony.’ Under 37 C.F.R. § 41.51(b)(1)(iii), ‘[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency’ [privileged information excepted].” Applying these standards, the Board ruled that Garmin was not required to produce the file histories for the prior art patents cited in its petition because it did not rely on those file histories and there was nothing in Cuozzo’s motion that suggested Garmin failed to comply with the routine discovery requirement under 37 C.F.R. § 41.51(b)(1)(iii). However, the Board did require that the parties confirm that they had complied with the routine discovery obligations of 37 C.F.R. § 41.51(b)(1)(iii).
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