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In IPR2012-00035, on January 22, 2013, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Lane, Robertson and Guest) issued an order concerning an ex parte email sent by Petitioner Nissan North America, Inc. (“Petitioner”). According to the Petitioner’s email, in its Preliminary Response the Patent Owner made arguments based on an obvious mathematical error, e.g., stating that .5 microns is 500 angstroms when it actually is 5000 angstroms. In its ex parte email, the Petitioner asked for the proper procedure for requesting the Board to take judicial notice of this “false statement.”

In its Order, the PTAB expressed concerned about the manner and content of the Petitioner’s ex parte email to the Board:

The error asserted by Nissan is not the subject of this Order. Instead it is the manner and content of the Nissan email that are of concern. It is troubling that Nissan contacted the Board and included information to rebut the Collins Preliminary Response without authorization to do so. It is even more troubling that Nissan did so without providing Collins with a copy of the email. Communications with a Judge or other Board member regarding a specific proceeding is not permitted unless both parties have an opportunity to be involved in the communications. 37 CFR 42.5(d). The Practice Guide notes certain exceptions to the prohibition, e.g., where a party seeks to arrange a conference call. The Nissan email does not fall into any of the listed exceptions.

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The United States Patent and Trademark Office’s new post-grant proceedings, including Inter Partes Review, are akin to litigation proceedings in several respects. As a result, the PTO Rules provide for the pro hac vice admission of litigation lawyers not licensed to practice before the Patent Office. However, practitioners should be aware that the grant of admission is not automatic and the application represents more than a mere formality.

Pursuant to 37 C.F.R. 42.10(c):

(c) The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to the condition that lead counsel be a registered practitioner and to any other conditions as the Board may impose. For example, where the lead counsel is a registered practitioner, a motion to appear pro hac vice by counsel who is not a registered practitioner may be granted upon a showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.

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The following six decisions in patent cases pending in the Central District of California

were reported for the period of January 1 through January 11, 2013.

DATE

CASE AND HOLDING

JUDGE

MOTION TYPE

1/2/2013

The Tawnsaura Group, LLC v. Maximum Human Performance, LLC, 2-12-cv-07189

Otero

Dismiss

The court denied defendants’ motion to dismiss plaintiff’s complaint because the asserted patents for health improvement methods contained ineligible subject matter.

Jumbo Bright Trading Limited, et. al. v. The Gap, Inc., 2-12-cv-08932

Pregerson

Preliminary Injunction

The court denied plaintiffs’ motion for a preliminary injunction to preclude defendant from selling its accused shoes because plaintiffs failed to present sufficient evidence of irreparable harm.

1/4/2013

Marketlinx Inc. v. Industry Access Incorporated, et al. , 2-12-cv-03496

Olquin

Compel – Source Code

The court granted plaintiff’s motion to compel the production of defendant’s source code.

1/8/2013

Medsquire LLC v. Compulink Business Systems Inc., 2-11-cv-10122

Fitzgerald

Compel – Invalidity Contentions

The court denied plaintiff’s motion to compel defendants to provide further invalidity contentions.

TriPharma, LLC v. First Fruits Business Ministry LLC, et. al., 8-12-cv-00404

Selna

Contempt – Preliminary Injunction

The court denied plaintiff’s unopposed motion to find defendants in contempt of a preliminary injunction because plaintiff failed to establish a knowing violation of the injunction.

1/10/2013

InTouch Technologies Inc. v. VGo Communications Inc., 2-11-cv-09185

Anderson

Motion for Judgment – Declaration that the patents-in-suit were invalid.

The court sustained plaintiff’s objection to defendant’s motion for judgment which included a declaration that the patents-in-suit were invalid as to all claims where the jury found invalidity as to only one claim per patent.

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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After the recent Federal Circuit decision in the Apple v. Samsung case and the district court’s application of that reasoning to find that a permanent injunction should not issue in Apple’s favor, many predicted that it would be very difficult to obtain a permanent injunction in patent cases going forward where many components are at issue. Not so fast.

As the district court explained in the Brocade Communications Systems (“Brocade”) v. A10 Networks (“A10”), upon the showing of an appropriate causal nexus a permanent injunction should issue. “Some have suggested that these standards herald the death, or at least the wounding, of the permanent injunction in patent cases involving hardware or software products with hundreds or thousands of components. One standard in particular – the “casual nexus” standard – bears the brunt of this discussion. Whether those opinions are fair or even accurate is something this court cannot say. What this court can say, however, is that whatever the “trend” of permanent injunctions in such cases, the Federal Circuit has made clear that injunctions can and should continue to issue upon the assembly and presentation of an appropriate record. After careful consideration of the parties’ voluminous papers and substantial oral arguments, the court is persuaded that the record in this case, which shows a clear causal nexus between Brocade’s loss of exclusivity in its inventions and A10’s infringement, is one such example.”
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In IPR2012-00022, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Tierney, Green and Robertson) issued a decision rejecting the Patent Owner Isis Innovation Limited’s (“Patent Owner”) motion for leave to challenge petitioner Arisoa Diagnostics’ (“Petitioner”) standing to file the petition for inter partes review. According to the Patent Owner, the Petitioner lacks standing because it raised the affirmative defense of invalidity as an affirmative defense to the Patent Owner’s counterclaim for infringement of the asserted patent in a Declaratory Judgment Action filed by the Petitioner seeking a declaration of non-infringement in the Northern District of California, Case No. 3:11-cv-06391.

The Patent Owner argued that allowing the Petitioner to file an inter partes review under such circumstances would violate Section 315(a)’s prohibition against filing an IPR when a petitioner has filed a civil action challenging the validity of a claim of the asserted patent before filing the petition for inter partes review. While Section 315(a)(3) provides an exception to this rule in the circumstance when the petitioner’s challenge to the patent’s validity is in the form of a counterclaim in a suit initiated by the patent owner, the Patent Owner argues that this exception does not apply to the circumstances present here.
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Danisco US, Inc. (“Danisco”) filed a declaratory judgment action asserting that its Rapid Starch Liquefaction products (“RSL products”) do not infringe certain patents held by Novozymes and that the patent-in-suit is invalid. Danisco and Novoyzymes are two of the major competitors in the field of developing and supplying industrial enzymes used in the process of converting corn into ethanol fuel.

Novozymes moved to dismiss the action and asserted that Danisco did not allege, and could not allege, that Novozymes took any affirmative act to enforce the patent-in-suit against Danisco. Danisco asserted that there was an actual controversy between the parties because it could be reasonably inferred that Novozymes obtained the patent with the hopes of asserting it against Danisco’s products.
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In a patent case pending before Judge Koh in the Northern District of California, Defendant Pinnaclife Inc. (“Pinnaclife”) moved pursuant to Rule 12(b)(6) to dismiss Plaintiff CreAgri, Inc. (“CreAgri”) infringement claims under Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007) and Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009). The Court denied in part and granted in part CreaGri’s motion finding that Pinnaclife’s amended complaint alleged facts sufficient to plausibly state a claim for direct infringement, but failed to meet the pleading requirements for indirect infringement.

First, the Court held that the pleading standards for direct infringement are governed by Form 18, even though the patent claims at issue were method claims:

[A] claim for direct infringement of a method patent is still a claim for direct infringement, and is therefore governed by the Form 18 pleading standard. Nothing in Form 18 suggests that its applicability is limited to device patents, nor did the Federal Circuit, in confirming that pleading requirements for direct infringement claims are governed by Form 18, suggest that this holding should be limited to device patents.

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In a patent infringement action brought by Alexsam, Inc. (“Alexsam”) against thirteen separate defendants, grouped into seven issuers of electronic gift cards, the Eastern District of Texas decided to sever the defendants as the case got closer to trial. As explained by the court, “[t]his is the sixth lawsuit that Alexsam has pursued in the Eastern District of Texas alleging infringement of the patents-in-suit, U.S. Patent Nos. 6,000,608 (“the ‘608 patent”) and 6,189,787 (“the ‘787 patent”), which relate to stored value/debit cards. The final pretrial conference is currently scheduled March 4, 2013, with a single trial to begin no more than four weeks later. Given the unique issues that exist within the defendant/defendant groups and the complexities involved in attempting to try this case in one trial in less than two months, the Court must sever the seven groups of defendants into their own separate cause of action.”
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Yesterday, the Patent Trial and Appeals Board (“PTAB”) issued a decision in the first IPR filed, i.e., IPR2012-00001. Garmin International, Inc. (“Garmin”) filed the IPR on a patent owned and asserted by Cuozzo Special Technologies LLC (“Cuozzo”), U.S. Patent No. 6,778,074 covering a speed limit indicator.

Central to Garmin’s IPR Petition and the PTAB’s decision was the meaning of the claim term “integrally attached” as used in the claim phrase “a speedometer integrally attached to said colored display.” Garmin argued that, for the purposes of the petition, this term should be given the broad construction urged by the Patent Owner in the related litigation of the ‘074 Patent. Garmin did not identify its proposed construction. The PTAB rejected this approach.
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In this patent infringement action, plaintiff Allvoice Developments US LLC (“Allvoice”) moved to amend its infringement contentions against Microsoft. Allvoice sought the amendment to incorporate changes that related to two claim constructions by the district court that differed from those asserted by Allvoice and to provide technical corrections or clarifications that would avoid confusion. Allvoice asserted there was good cause for the amendments and there be no prejudice to Microsoft. Microsoft opposed the amendment on the grounds of undue delay and unfair prejudice.

The district court began its analysis of the motion by citing to the local patent rules. “Local Patent Rule 124 allows for amendments of infringement contentions ‘only by order of the Court upon a timely showing of good cause.’ W.D. Wash. Local Patent Rule 124. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include: (a) a claim construction by the Court different from that proposed by the party seeking amendment; (b) recent discovery of material prior art despite earlier diligent search; and (c) recent discovery of nonpublic information about the Accused Device which was not discovered, despite diligent efforts, before the service of the Infringement Contentions.”
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