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The University of Illinois filed a patent infringement action against Micron Technology. During the litigation, Micron sent an email to a number of individuals, which included many professors at the University of Illinois in the engineering department. A part of the email stated that “[b]ecause Micron remains a defendant in a patent infringement lawsuit that UIUC filed against Micron in Federal court in Illinois on December 5, 2011, effective immediately, Micron will no longer recruit UIUC students for open positions at any of Micron’s world-wide facilities.” The email also stated that Micron will withhold funding from the University by suspending scholarships and professor research.

The University of Illinois moved for an injunction to bar Micron from sending further communications that it characterized as harassing and meant to coerce it into settling its patent litigation lawsuit. Micron asserted that the motion should be denied and that the University should be sanctioned for filing the motion.
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Potter Voice filed a patent infringement action against Apple, Google, HTC, Sony, LG, Motorola, ZTE, Kyocera, Sharp, Huawei, Pantech, Research in Motion, Microsoft and Nokia. Many of the defendants filed several motions to dismiss pursuant to Fed.R.Civ.P. 12(b)(6).

After addressing the pleading standard for determining a Rule 12(b)(6) motion and denying certain motions without prejudice based on severance and transfer issues, the district court turned to the allegations of induced infringement. As explained by the district court, “[e]ach of the defendants who filed a motion to dismiss argues that the allegations in the plaintiff’s complaint are not sufficient to state a claim for inducement of infringement. To allege induced infringement, the plaintiff must allege direct infringement by another, knowing inducement of that infringement by the defendant, and the defendant’s specific intent to encourage another’s infringement. Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1363 (Fed. Cir. 2012). In addition, the plaintiff must allege that the defendant had knowledge of the plaintiff’s patent. Global-Tech Appliances, Inc. v. SEB S.A., ___ U.S. ___, ___, 131 S. Ct. 2060, 2068-69 (2011). “The requirement that the alleged infringer knew or should have known his actions would induce actual infringement necessarily includes the requirement that he or she knew of the patent.” DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006).”
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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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