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Complainants LSI Corporation and Agere System LLC (collectively, “LSI” or “Complainants”) filed a motion for leave to amend their amended complaint in order to clarify the scope of the accused products of Respondent Funai Electric Company (“Funai”). LSI sought to clarify that the scope of the accused products were not limited to Funai products that contain an integrated circuited component supplied by either Realtek or MediaTek.

In support of its motion, LSI argued that their would be no prejudice to Funai because LSI had consistently maintained that the scope of the accused products was not limited to Funai products incorporating solely MediaTek and Realtek components. Funai opposed the motion, asserting that LSI had not shown any new information that would justify the proposed amendment and that it would be prejudiced by the proposed amendments because LSI would be able to expand the scope of the accused Funai products at a late stage of the investigation.
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Klausner Technologies, Inc. (“Klausner Technologies”) filed a patent infringement action against Interactive Intelligence Group, Inc. (“Interactive Intelligence” or “IIG”). After the action was filed, Klausner Technologies assigned all of its interest in the patent-in-suit to IPVX Patent Holdings, Inc. (“IPVX”), including the rights to enforce the patent and to recover for past infringement of the patent. IPVX was incorporated only three days before the assignment. As a result of the assignment, Klausner Technologies moved to substitute IPVX for Klausner Technologies as the plaintiff and counter-defendant in the patent infringement action.

Interactive Intelligence agreed that IPVX should be joined as a plaintiff but opposed the dismissal of Klausner Technologies from the action. Interactive Intelligence asserted that because virtually all of the discovery would come from Klausner Technologies and its officers and employees, dismissing Klausner Technologies would cause added expense and delay as discovery would be needed from a third party. Klausner Technologies responded by arguing that it had agreed to provide all information regarding the patent to IPVX. Klausner Technologies also argued that it had to be dismissed because it no longer had standing to participate in the litigation as a result of the assignment of the patent.
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In the patent infringement action brought by Carnegie Mellon University (“Carnegie Mellon” or “CMU”) against Marvell Technology Group, LTD. (“Marvell’), the jury returned a verdict in favor of Carnegie Mellon in the amount of $1.17 billion, finding that Marvell had infringed two patents owned by Carnegie Mellon. The jury also found that Marvell’s infringement of the patents was willful, paving the way for the potential for enhanced damages as well as an award of attorneys’ fees. Marvell has vowed to challenge the damage award before the district court and, if necessary, the Federal Circuit.

A few days before the jury returned its verdict, Carnegie Mellon filed a motion to preclude Marvell from relying on an advice of counsel defense to defend against the charge of willful infringement. Carnegie Mellon filed a motion to strike the testimony of one of Marvell’s witnesses and also to preclude Marvell from relying on an advice of counsel defense.
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After the jury returned a verdict in Apple’s favor for over $1 billion in damages, Samsung moved the district court for a new trial. Samsung’s based its motion on the argument that the jury foreperson gave dishonest answers during voir dire and that interviews he gave after the verdict demonstrated that he was biased. As explained by the district court, “Samsung claims that Mr. Hogan lied about his involvement nineteen years ago in a lawsuit with Seagate, a company in which Samsung is, as of 2011, a 9.6% shareholder. Samsung also argues that Mr. Hogan improperly presented extraneous prejudicial information during jury deliberations.”

The jury foreperson had not disclosed that he was sued by his former employer, Seagate, in 1993 and that he had filed for personal bankruptcy six months after he was sued by Seagate. Samsung asserted that it learned of the jury foreperson’s lawsuit with Seagate only after it reviewed the bankruptcy file, which occurred after the trial had concluded.
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Apple suffered yet another set back in the Smartphone wars, this time losing its motion for a permanent injunction against Samsung. The district court denied the permanent injunction primarily on the ground that Apple could not show irreparable harm that would result to Apple if an injunction did not issue.

As explained by the district court, “[T]o satisfy the irreparable harm factor in a patent infringement suit, a patentee must establish both of the following requirements: 1) that absent an injunction, it will suffer irreparable harm, and 2) that a sufficiently strong causal nexus relates the alleged harm to the alleged infringement.” Apple, Inc. v. Samsung Electronics Co., Ltd., 695 F.3d 1370, 1374 (Fed. Cir. 2012) (“Apple II” ). This test requires a showing that consumers buy the infringing product “because it is equipped with the apparatus claimed in the . . . patent,” and not merely because it includes a feature of the type covered by the patent. Id. at 1376.”
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Plaintiff Suffolk Technologies, LLC (“Suffolk”) brought a patent infringement action against AOL and Google. Suffolk’s complaint alleged that “AOL and Google have infringed U.S. Patent No. 6,082,835 (135 patent) entitled “Internet Server and Method of Controlling an Internet Server.” The ‘835 patent claims a method of controlling an internet server whereby the server receives a hypertext transfer protocol file request from a web browser with an identification signal and then compares the identification signal with one or more predetermined identification signals, and based on the results of the comparison, a file may be transmitted from the server back to the requesting web browser.”

AOL and Google filed a motion to dismiss the action based on lack of standing. As explained by the district court, “[t]his patent infringement suit presents the increasingly common, but always vexing jurisdictional question whether plaintiff, the assignee of the patent in issue, possesses ”all substantial rights’ to the patent, such that it has standing to sue putative infringers.”
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Respondent ClearCorrect Pakistan (Private) Ltd. (“CCPL”) moved to compel complainant Align Technology, Inc. (“Align”) to produce documents and supplement responses to interrogatories. As explained by the Administrative Law Judge, “CCPL asserts that Align has provided incomplete responses to Document Request No. 9 and Interrogatory No. 13. CCPL says that Document Request No. 9 requires:

All documents reflecting communications occurring from January 1, 2010 and the present between Align (including its attorneys or anyone else acting on Align’s behalf) and any of the following: . . . (3) any person currently or formerly employed by ClearCorrect Pakistan (Private) Ltd.

CCPL says that Interrogatory No. 13 requires:

For every communication from January 1, 2010 between Align (including its attorneys or anyone else acting on Align’s behalf) and any person employed by ClearCorrect Pakistan (Private), Ltd. state: (1) every person participating in the communication, (2) the subject matter of the communication, (3) the date the communication occurred, and (4) whether any document or other recording medium captured the communication.”
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In this patent infringement action between Industrial Technology Research Institute (“ITRI”) and LG Corporation (“LG”), LG moved to compel ITRI to make a Taiwanese citizen, who was also the inventor of the patent-in-suit, but no longer an employee of ITRI, to sit for a deposition in the United States. The district court noted that “Courts have previously been called upon to address disputes over whether an agreement in which a non-U.S. resident inventor assigns patent rights to a business entity that subsequently becomes involved in patent enforcement litigation obligates the inventor to appear in the United States for a deposition in connection with the patent litigation.”

Here, the language of the assignment agreement provided: ” [Sheen] hereby agrees to execute any documents that legally may be required in connection with the filing, prosecution and maintenance of said application or any other patent application(s) in the United States for said invention . . . . [Sheen] also agrees, without further consideration and at [ITRI’s] expense, to identify and communicate to [ITRI] at [ITRI’s] request documents and information concerning the invention that are within [Sheen’s] possession or control, and to provide further assurances and testimony on behalf of [ITRI] that lawfully may be required of [Sheen] in respect of [sic] the prosecution, maintenance and defense of any patent application or patent encompassed within the terms of this instrument.”
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During jury selection in this patent infringement action, Marvell Technology Group, LTD (“Marvell”) filed an emergency motion to strike a portion of Carnegie Mellon’s (‘CMU”) damages. In the case, CMU asserted that Marvell infringed two of its patents directed to sequence detection in high density magnetic recording devices, specifically to high density magnetic recording sequence detectors. During trial, CMU intends to prove that Marvell produces read channel chips that perform the patented method when used and ultimately sold through an extensive sales cycle. The sales cycle involves alleged infringement when Marvell’s chips are used in the United States to secure a design win when a customer decides to use Marvell’s design for chips the customer will purchase.

Marvell’s emergency motion addressed potential damages as to accused chips sold by Marvell outside of the United States. This issue previously arose in Marvell’s motion for partial summary judgment, which the district court denied. Marvell asserted that the district court should revisit its prior ruling given additional information and arguments at this stage of the case. CMU objected and asserted that Marvell’s motion was procedurally improper.
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The America Invents Act (the “AIA”) includes a new inter partes review (“IPR”) procedure that takes the place of the old inter partes reexamination. The new IPR procedure, called a “trial” once the petition for review is granted by the Patent Office, permits declarations, limited discovery, including depositions, and potentially live testimony before the Patent Trial and Appeal Board at the hearing on the petition. This new litigation component is likely to drastically alter the strategy and potential outcomes from the old reexamination process.

Indeed, the litigation component of challenging the validity of a patent at the Patent Office is unlike anything in the old reexamination process. As a result of this shift from a patent prosecution-like proceeding to one incorporating adversarial elements of litigation, it will be important for companies contemplating filing IPRs to review the IPR process and the petitions themselves, including expert declarations, with a litigation mind set and with the help of seasoned litigators in combination with savvy patent prosecutors.

This is the first in a series of articles that focus on the new IPR process and the key provisions that bring litigation to the PTO.
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