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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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Plaintiff Tyco Healthcare Group and United States Surgical Corporation moved to disqualify defendant Ethicon Endo-Surgery’s attorneys of record (the law firm of Akin Gump). Tyco based the motion to disqualify on the ground that Akin Gump had improper access to privileged and confidential information of Tyco because Akin Gump hired and used a trial presentation technology consultant who had worked on a related trial involving the same patents four years earlier.

In the previous related case, Tyco’s counsel hired TrialGraphix to assist Tyco’s counsel with presenting witnesses and exhibits in a December 2007 bench trial. As a result, a trial technician provided by TrialGraphix worked directly with Tyco and Tyco’s attorneys. During and in preparation for the bench trial, the trial technician worked closely with the Tyco trial team and received confidential and privileged information.
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In an effort to encourage more participation from less experienced attorneys, the District of Massachusetts has several judges adopting standing orders that strongly encourage the participation of relatively inexperienced attorneys. Judge Casper is the most recent judge in the District of Massachusetts to adopt such a standing order.

Judge Casper explained the reason for the standing order: “The decline in courtroom opportunities for newer lawyers is widely recognized and is one of concern to both the bench and bar. A Task Force of the Boston Bar Association acknowledged this much in its report, “Jury Trial Trends in Massachusetts: The Need to Ensure Jury Trial Competency Among Practicing Attorneys as a Result of the Vanishing Jury Trial Phenomenon, issued in 2006. As a result of its year-long work exploring the statistical and anecdotal evidence regarding the rate of jury trials over time, the Task Force concluded that ‘the vanishing jury trial is actually affecting the jury trial experience of current and future generations of practitioners and made recommendations to courts, lawyers and clients to remedy this issue. Among its recommendations to the judiciary, the Task Force called upon ‘judges presiding over pre-trial conferences and related matters to identify and encourage opportunities for a junior attorney to participate in the examination of witnesses and other significant trial work.’
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Plaintiff TiVo brought an emergency motion to compel production of an e-mail that defendant AT&T produced and then clawed back pursuant to a protective order agreed to by the parties. During a deposition, TiVo marked an e-mail as an exhibit and questioned the deponent for several minutes about the e-mail before AT&T’s counsel demanded that TiVo return the e-mail. AT&T’s counsel explained that the e-mail may be subject to a common interest agreement with a third party. TiVo returned the e-mail pursuant to the parties’ protective order.

TiVo subsequently moved to compel the e-mail arguing that it did not contain attorney-client privileged or work product information. TiVo pointed out that neither the sender nor the recipient are attorneys and the subject matter of the email did not contain legal advice. In addition, the e-mail was created for a business purpose and not for purposes of litigation and therefore could not be work product. TiVo also argued that the e-mail was discoverable under the crime-fraud exception because the contents of the e-mail constitute prima facie evidence of an antitrust violation.
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The district court issued a stay pending reexamination of an inter partes reexamination of the patent at issue in the litigation. Plaintiff filed a motion to lift the district court’s stay pending re-examination based on the argument that the reexamination was nearly complete because an office action had issued invalidating many of the claims, but not all of them.

Defendants responded by asserting that the reexamination process was not yet complete and that either party to the reexamination could appeal a recent office action that had issued. In addition, one of the defendants to the action informed the court that it would appeal the office action that had issued from the PTO.
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The parties filed cross-motions for summary on the issue of inequitable conduct. The district court had previously denied summary judgment motions on the issue of inequitable conduct but that was prior to the Federal Circuit’s decision in Therasense, Inc. v. Becton Dickinson and Co., 649 F.3d 1276 (Fed. Circ. 2011) (en banc). The district court granted the parties request to re-brief the issue in light of Therasense.

The plaintiff asserted on its renewed summary judgment motion that there was insufficient evidence of specific intent to deceive the Patent and Trademark Office (“PTO”). The defendant did not dispute that there was no direct evidence of specific intent in the case. Instead, the defendant relied on circumstantial evidence, arguing that the only logical inference from the evidence is one of intent to deceive the PTO. To make this argument, the defendant relied on the fact that two of the inventors knew of two significant references and failed to disclose them to the PTO. The district court noted, relying on Therasense, that “[p]roving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” 649 F.3d at 1290. Based on this quote from Therasense, the district court concluded that the mere fact that the inventors failed to disclose these references was insufficient to defeat summary judgment in favor of the plaintiff.
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Defendants in two Eastern District of Texas actions moved to centralize their cases in the District of Delaware or in another transferee forum. Three actions involving the same plaintiff and patent were already pending in the District of Delaware. Two of the defendants in the Delaware actions supported the motion to transfer and centralize, while the other defendants in the Delaware actions did not oppose the motion. The patent holder opposed centralization and, alternatively, suggested selecting the Eastern District of Texas as the transferee forum.

The panel found that the five actions involved common questions of fact and that centralization would serve the convenience of the parties and witness and promote the just and efficient conduct of the litigation. To support this conclusion, the panel noted that all five actions involve factual question regarding the infringement and/or validity of a single patent that relates to basic web presentation technologies, such as “previews” that pop up when a mouse rolls over certain site features. The panel found that “[c]entralization will eliminate duplicative discovery, prevent inconsistent pretrial rulings (particularly on claim construction issues), and conserve the resources of the parties, their counsel and the judiciary.”
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Defendant was the sole named inventor of the patent in suit. Plaintiff brought a claim for inventorship, alleging that he was the co-inventor of the patent. The parties cross moved for summary judgment and for sanctions.

The defendant and plaintiff maintained a business relationship for approximately 15 years, with plaintiff agreeing to pay the defendant $5000 in consulting fees in connection with the plaintiff’s idea for a video product to be used in automobile marketing. Defendant would act as a consultant and advise the plaintiff how to build the system. Defendant in fact designed the system, hired one or more computer programmers and had the system built.
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Plaintiffs asserted patents relating to computer-based messaging products and services against numerous defendants, including Facebook, LinkedIn, E*Trade and Verizon in two different district courts. The patents at issue named Charles Bobo as an inventor and one of the earlier patents in the Bobo family of patents was asserted in six of the actions pending in the Central District of California. Five later-issued patents in the Bobo family were asserted in actions in the Eastern District of Texas.

The panel considered whether centralization in one district would serve the convenience of the parties and witnesses or further the just and efficient conduct of the litigation. Many of the defendants supported centralization, while Verizon opposed centralization. The plaintiffs opposed the motion to centralize the cases.
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