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In the ongoing saga over Oracle’s lawsuit against Google, the district court has allowed Oracle’s damage expert another chance to fix its damage report. The district court had previously stricken Oracle’s damage expert report on two previous occasions but allowed Oracle’s damage expert a third chance.

Before addressing the damage expert report issue, the district court rejected Oracle’s suggestion of a piecemeal approach to the trial due to the court’s docket. “The docket simply does not permit that luxury. Counsel are unfortunate in having drawn a judge assigned to the massive MS-13 gang prosecution, which has resulted in four lengthy trials, including one underway now, without any relief from the remainder of his normal caseload. This has led to a backlog of trial-ready cases waiting their turn. . . . In the instant case, the damages methodology must be sorted out before the case will even be trial-ready. Until then, there is no point in setting a firm trial date. If matters go smoothly herein and if other trial settings fall away, the instant case could still possibly be tried starting mid-April and all counsel and witnesses should reserve for that possibility, failing which it will likely occur sometime during the last four months of the year. This order, however, gives no assurances as to when the case can be tried. If Oracle wishes to voluntarily dismiss any damages claim it will have to do so with prejudice; otherwise a dismissal is nothing more than an invitation to piecemeal litigation.”
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Plaintiff, Two Moms and a Toy, filed an emergency motion to stay the expert phase of their case pending the court’s ruling on claim construction. The plaintiff’s motion was based on the argument that “expert reports and expert discovery in a patent infringement case is extremely expensive and that a ruling on claim construction could end this case and at the very least will provide the parties with needed guidance and information for assessing the patent’s strength which will hopefully result in a settlement of the case.”

The court was not persuaded by the plaintiff’s argument. Indeed, it agreed with the defendant that it was “thinly veiled request for reconsideration of my two previous ruling denying motions to extend or otherwise modify the case schedule.” The court noted that these argument could have, and should have been, raised in connection with the earlier requests to amend the schedule that were denied by the court. “All of the arguments about expense and efficiency could have been made in connection with the parties’ previous Joint Motion to Amend Scheduling Order.”
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Microsoft and Google sued Geotag in the District of Delaware for a declaration that their customers did not infringe a Geotag patent, “Internet Organizer for Accessing Geographically and Topically Based Information,” and that the patent was invalid. Geotag had sued in excess of 450 companies in the Eastern District of Texas and many of these companies were customers of Microsoft and Google, who provide mapping services that allow interested persons to use the Internet to search for a convenient location of a business.

Geotag moved to transfer the declaratory judgment action pending in Delaware to the Eastern District of Texas. The district court in Delaware analyzed the private and public interest factors pursuant to Section 1404(a) and concluded that transfer was not appropriate.
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Defendant moved to compel the deposition of a member of Plaintiff ‘s trial counsel regarding Plaintiff’s pre-filing investigation. Despite Defendant’s attempt to withdraw the motion based on a representation (not disclosed in the opinion) made by the Plaintiff in its sur-reply, the Court granted the Defendant’s motion and required the Plaintiff to produce a member of its trial counsel for his deposition over this topic.

The Defendant originally sought to depose Plaintiff’s trial counsel over information relating to his pre-filing investigation of the claims in the lawsuit. The pre-filing investigation included obtaining and photographing the accused product. According to the Plaintiff, the information obtained was never intended to be used as evidence of any actual infringement. In fact, the Plaintiff represented that its trial counsel would not be a witness nor would it use anything from his examination as evidence in the case. The Court noted that while normally this would end the inquiry regarding the necessity of the deposition, the Defendant had raised counterclaims asserting that the Plaintiff “has violated the antitrust laws by bringing suit against competitors without adequate justification in order to stifle competition.”
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Defendants moved to dismiss a patent infringement complaint pursuant to Fed.R.Civ.P. 12(b)(6) on the theory that the complaint failed to allege facts showing that a single party performed each and every limitation of the method claim.

The district court noted that “the Federal Circuit Court of Appeals has ‘instructed that ‘[d]irect infringement requires a party to perform or use each and every step or element of a claimed method or product.’ . . . Nevertheless, ‘[w]hen a defendant participates in or encourages infringement but does not directly infringe a patent, the normal recourse under the law is for the court to apply the standard for liability under indirect infringement. Indirect infringement requests, as a predicate, a finding that some party amongst the accused actors has committed the entire act of direct infringement.'” Thus, there is no finding of indirect infringement without a finding that there is a direct infringer.
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In a patent case filed in the Eastern District of Texas by Eon Corporation IP Holdings, LLC (“Eon”) against Cellco Partnership d/b/a Verizon Wireless (“Verizon”), along with other defendants, Eon moved to dismiss Verizon’s inequitable conduct counterclaims and strike its inequitable conduct affirmative defenses. Magistrate Judge Love recommended that Eon’s motion to dismiss be denied because Verizon’s inequitable conduct claim was sufficiently pled.

Verizon’s inequitable conduct was based on two separate instances. First, Verizon alleged that the sole inventor of the asserted ‘491 patent deliberately withheld his earlier patent from the U.S. Patent Office (“PTO”) with the intent to deceive the PTO. Second, Verizon alleged that the ‘491 patent should be found unenforceable under the “infectious unenforceability” doctrine because it was obtained due to Eon’s inequitable conduct of its parent patent application. In denying Eon’s motion, the Magistrate held that Therasense did not substantially alter the pleading requirements and that Verizon sufficiently plead inequitable conduct under the standard set forth in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009).
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Oracle’s damage expert was directed to submit a substitute expert report after his original report was excluded on a motion by Google because it failed to apportion the value of the asserted claims and instead used a total value of Java and Android in calculating damages. The substitute damages report calculated damages to be approximately $2.5 billion. Of this number, $200 million was for past patent infringement and an additional $205 million for future patent damages through the end of 2012. Google moved again to strike the damages expert report.

In terms of the patent damages, Google challenged the starting point of $100 million for the hypothetical negotiation instead of $28 million, which was the number in a draft agreement proposed by Sun (Oracle’s predecessor) for a broad technology partnership between Sun and Google. The district court disagreed with Google, finding that Oracle’s expert had reviewed the entire licensing history between the parties and noted that the $100 million offer was on the table during real-world negotiations.
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Plaintiff Intertainer, Inc. brought an action for patent infringement against Defendant Hulu, LLC. Hulu moved to dismiss Intertainer’s first amended complaint pursuant to Fed.R.Civ.P. 12(b)(6). In the first amended complaint, Intertainer alleged infringement of a patent entitled, “Method for Interactive Video Contention Programming,” which according to the district court, “relates to a method of creating and streaming an interactive video stream permitting a user to view ancillary content, such as advertisements.”

Intertainer also alleged that the interactive video program includes an interface which when selected, displays ancillary material for the user and interrupts the running of the video and when the user returns to watching the video content, the video program resumes streaming from the point in time at which it was interrupted. Intertainer’s first amended complaint alleged that Hulu operated a website at www.hulu.com, which displays video content to users over the Internet and that the Hulu media player displays video content and video advertisements as well as advertising banners on its website.

Intertainer further alleged that users watching videos on the Hulu website can choose to view additional advertising content by clicking on the advertisement or the advertisement banner, which will then direct the user to another webpage displaying the advertisement content and will interrupt the streaming of the content from the web server. The video content can be resumed when the user returns to the Hulu website and clicks play. Intertainer contended that these steps directly infringed the patent-in-suit.
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Plaintiff Internet Machines LLC (“iMac”) filed a patent infringement action against several defendants including, among others, PLX Technology, Inc., ASUS Computer International and CDW Corp. alleging infringement of three patents that pertain to PCI Express switches. PLX manufactures the accused products while the remaining defendants distribute the products, incorporate the accused products into other devices or sell devices that incorporate the accused devices.

The defendants, other than PLX (the “Downstream Defendants”), moved to stay the litigation between themselves and iMac pending the resolution of iMac’s claims against PLX. The Downstream Defendants argued that PLX, as the product manufacturer, was the only true defendant in the case and that the resolution of iMac’s claims against PLX would moot any dispute between iMac and the Downstream Defendants. Based on a related case against PLX, iMac asserted that this was incorrect because PLX, in that other currently pending case, argued that it does not ship the accused products in an infringing state and that it is ignorant of any downstream configuration by its distributors or retailers. Based on this argument made by PLX, iMac asserted that a stay would therefore be inefficient and financially burdensome because it would require a second suit against the Downstream Defendants.
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Defendant filed a motion for summary judgment on lost profits challenging plaintiff’s use of the entire market value rule. Defendant contended that plaintiff had not presented sufficient evidence to go to the jury on the entire market value rule. Plaintiff asserted that the defendant was misapplying the entire market value rule and ignoring the evidence.

The district court began its analysis by quoting from the Federal Circuit’s decision in Lucent that “[f]or the entire market value rule to apply, the patentee must prove that ‘the patent-related feature is the basis for the customer demand.'” Lucent Techs, Inc. v. Gateway, Inc. 580 F.3d 1301, 1336 (Fed. Cir. 2009). The district court noted that “[p]laintiff acknowledges the language from Lucent that the entire market value rule does not apply unless the patent-related feature is the basis for the customer demand, but argues the rule is not as narrow as that language suggests.”
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