Published on:

by

Plaintiff Nano-Second Technology filed a patent infringement action against Dynaflex International, GForce Corporation, d/b/a/ DFX Sports & Fitness. As part of the patent infringement action, Nano-Second alleged “that Defendants have infringed upon its ‘311 Patent by selling, importing, making, offering, or using wrists exercisers (“Accused Products”) that fall within the scope of the claims of the ‘311 Patent. First Amended Complaint “FAC” ¶ 12. Further, Plaintiff alleges that these unpatented Accused Products and their packaging are marked with the patent number of the ‘311 Patent without Plaintiff’s consent. Id. ¶¶ 21, 41. Plaintiff claims that in addition to falsely marking their Accused Products and infringing Plaintiff’s patent, Defendants have contacted Plaintiff’s potential and existing customers misrepresenting that they own the ‘311 Patent. Id. ¶ 25.”

The defendants moved for partial summary judgment, including asserting that the period of damages available for plaintiff did not begin until the plaintiff acquired the patent. “Defendants assert that Plaintiff cannot seek damages for patent infringement that occurred before September 10, 2010, because plaintiff did not have legal title to the ‘311 Patent before that date.”
Continue reading

Published on:

by

James R. Taylor (“Taylor”) filed a patent infringement action against Taylor Made Inc. (“Taylor Made”). Taylor Made filed a motion to dismiss the action on the ground that Taylor did not have standing to maintain the patent infringement action because Taylor’s ex-wife had not been made a party to the lawsuit and she had an ownership interest in the asserted patent.

As explained by the district court, “[t]he Plaintiff and Ms. Taylor were married on February 14, 1987. Dkt. 24-1. The Plaintiff subsequently obtained the Patent on September 15, 1998 for a storm drainage conduit plug and sealing band. Dkt. 1. The Plaintiff and Ms. Taylor obtained a Final Judgment of Dissolution of Marriage (A “Divorce Settlement”) from a Florida state court on March 7, 2011. Dkt. 24-1; see also In re the Marriage of James R. Taylor and Mary Louisa Taylor, Case No. 2006-Dr-10057-NC. The Divorce settlement subjects the Taylors’ marital assets to equitable distribution, in so doing notes that the primary assets of the marriage are three United States patents, specifically: (1) ‘5,224,514/July 6, 1993;” (2) “5,316,045/May 31, 1994;” and (3)[5], 806566/September 15, 1998.”
Continue reading

Published on:

by

In this ITC proceeding, the Respondents filed a motion for leave to file motions for summary determination after the deadline for filing motions for summary determination set by the procedural schedule. Respondents asserted that good cause existed for granting the motion because it would efficiently resolve all of the issues in the Investigation and that Complainants infringement contentions indicated they would be relying on expert testimony to prove their infringement claims.

Respondents asserted that the expert report only provided conclusory assertions regarding infringement under the Respondents’ and Staff’s proposed construction of the claim terms. Respondents asserted that good cause existed to grant the motion based on their reliance and Complainants’ expert’s failure to address Respondents’ and Staff’s proposed constructions.
Continue reading

Published on:

by

Promega Corporation (“Promega”) filed a patent infringement action against Life Technologies Corporation (“Life Technologies”), among others, over four patents pertaining to a type of DNA testing called “multiplex amplification of shorten tandem repeat loci.” Prior to trial, the district court determined that two of the defendants sell testing kits that met limitations for one or more claims in patents that Promega owns. At trial, a question remained as to whether the defendants were engaging in acts prohibited by the Patent Act because many of the accused products were manufactured and sold in foreign countries.

At trial, Promega asserted that under Section 271 of the Patent Act the defendants foreign sales of infringing products violated the Patent Act because a substantial portion of the components of the accused products were supplied from the United States. Promega asked the jury to find that all of defendants’ sales met the requirements of Section 271. The jury agreed with plaintiff and awarded more than $50 million in damages.
Continue reading

Published on:

by

Plaintiff Unwired Planet (“UP”) filed a patent infringement action against Apple asserting over 247 claims in ten different patents. Apple filed a motion to limit the number of claims. In the motion, Apple asserted that UP had included approximately 80% of the total number of claims in the patents. Apple asserted that if the claims were not narrowed, then the case would be unmanageable and would unfairly burden Apple.

As justification for its motion, Apple also pointed to the parties’ prior litigation history in 2011 at the International Trade Commission. As explained by Apple, UP accused the same products in this case, the iPhone, the iPad and the iPod Touch, in the ITC action. Therefore, Apple assert, UP should know how the products work, what they do, and should have an adequate understanding of the case to narrow the claims. Apple argued that the asserted claims should be reduced to fifty or sixty claims.
Continue reading

Published on:

by

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.
Continue reading

Published on:

by

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).”
Continue reading

Published on:

by

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.”
Continue reading

Published on:

by

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.
Continue reading