Published on:

by

As many district courts around the country close doors on physical appearances, some district courts are ordering that civil hearings proceed either telephonically or by video. Although such an approach is common in many state courts, it is much more unusual for telephonic or video appearances to occur in district courts. As a result of COVID-19 and the length of time that may be required for continued social distancing, district courts have recognized that telephonic and video appearances will become necessary for many cases.

We should therefore expect more standing orders, similar to the one just issued in the Western District of Texas by Judge Albright. As a result of this order, there will now be specific procedures for hearings that will not require physical appearances. Hearings will continued to take place in the following manner:

All hearings for civil cases on the Waco division’s docket will continue as scheduled, but will occur telephonically. The Court will provide the dial-in information’ either via e-mail or within an order. Because there may be several hearings back-to-back, attorneys should wait until their case is called before speaking. Parties are encouraged to dial-in at least 10 minutes before the scheduled start time.

Continue reading
Published on:

by

In this patent infringement action, the parties jointly moved the court to enter an order, pursuant to Federal Rule of Evidence 502(d), to allow the parties to claw back the production of not just attorney-client information, but also proprietary and confidential information.  To support the request, the parties explained that the complex nature of the action would require the parties to disclose a large volume of electronically stored information (“ESI”) that would contain proprietary source code, software and computer systems.

The parties claimed that entry of the proposed non-waiver order was needed due to the plaintiff’s filing of and intent to file additional similar lawsuits and “to promote efficiency in discovery to prevent exhaustive, expensive privilege review efforts, to make the parties’ nonwaiver agreement binding on third parties, and to otherwise provide the parties with the maximum protection available under the law.”

After quoting Fed.R.Evid. Rule 502(d), the court noted that it had discretion to enter the order and also noted that federal courts routinely enter such orders with respect to privileged information that allows privileged information to be clawed back by the producing party.  The court then found that the provision with respect to clawing back privileged documents was acceptable, but the extension to proprietary and confidential documents was not:  “The Court finds the foregoing provisions acceptable with one exception. Rule 502 applies to the “disclosure of a communication or information covered by the attorney-client privilege or work-product protection.” Id. In the second paragraph of the proposed order, the parties attempt to extend Rule 502’s protection to information and materials beyond that narrow scope – specifically, to proprietary and confidential documents or materials. (See Doc. 56-1, ¶ 2 (emphasis added)). To the extent the parties are seeking to the expand the protection afforded by Rule 502, that request will be denied and the proposed order modified.”

Continue reading

Published on:

by

The district court appointed a special master to resolve the amount of attorney’s fees to which Defendants, including Cisco, were entitled.  As the special master noted, the fees claimed by Cisco were paid under an alternative flat monthly fee arrangement with its counsel, which in recent years, have increased as law firms have begun offering alternatives to the traditional hourly billing model.

In analyzing the fee request, the special master explained that “[t]here are advantages to such models, but also risks in circumstances like this where the scope and reasonableness of fees are subject to judicial review. This report concludes that such alternative fee arrangements, whether flat fee or otherwise, may be compensable under Section 285, but that prevailing parties must be required to satisfy appropriate reasonableness standards to ensure fairness and to protect against potential abuse.”

To evaluate whether it would be appropriate to include such arrangements in determining a fee award, the special master noted that “prudential and reasonableness concerns arise when assessing the quantum of these fees to be awarded in a fee-shifting environment. For example, flat-rate billing structures could compensate counsel at an unreasonable rate, much like a large contingency fee, which Cisco acknowledges would not be recoverable in at least an extreme case. Flat-fee arrangements also potentially sweep in fees unrelated to the fee-shifting at issue, such as the exceptional conduct here. And opportunity for mischief exists, such as in cases involving manifestly unequal resources, or where counsel enjoys multiple lines of engagement with the same client that might allow mixing and matching among different matters and the shifting of fees as part of an unwritten understanding between attorney and client.”

Continue reading

Published on:

by

Plaintiff Innovation Sciences, LLC (“Innovation”) initiated a patent infringement action against Defendant Amazon.com (“Amazon”).  The original complaint asserted three groups of patents, encompassing a total of ten patents.

After the district court found certain of the patents invalid because they were abstract and the Federal Circuit affirmed, Innovation filed an amended complaint to assert an additional patent and that patent along with two others that were not initially dismissed proceeded to claim construction.  After claim construction, the district court granted Amazon’s motion for summary judgment, holding that Amazon was not infringing one of the patents, that one patent was invalid and Innovation stipulated to noninfringement of the last patent but reserved its right to appeal the construction issue.

The Federal Circuit affirmed as to two of the patents, and affirmed in part, vacated in part, and remanded the stipulated judgment of noninfringement as to that patent.  After that, Innovation jointly stipulated to dismissal.

Continue reading

Published on:

by

The plaintiff, The Hillman Group, Inc. (“Hillman”), moved to disqualify Cooley LLP (“Cooley”) in this patent infringement action based on its relationship with Minute Key that is now wholly owned by Hillman.  Cooley, which had represented Minute Key throughout its acquisition by Hillman, now represented the defendant in this case, KeyMe, LLC (“KeyMe”).  Cooley had represented Minute Key for approximately 10 years before the acquisition by Hillman.

In the motion to disqualify, Hillman alleged two separate grounds why Cooley should be disqualified: (1) that Cooley should be disqualified because Hillman is a current client of Cooley, and, alternatively, (2) that Cooley should be disqualified because Hillman is a former client and Cooley’s representation of KeyMe in this case is substantially related to Cooley’s past representation of Minute Key and the confidential information it received.

Continue reading

Published on:

by

WPEM filed a complaint against SOTI alleging that SOTI’s MobiControl Speed Lockdown technology infringed U.S. Patent No. 9,148,762. WPEM alleged infringement based upon its review of a user manual for version 11 of Speed Lockdown. When it answered the complaint, SOTI pointed out that version 10 of Speed Lockdown predated the asserted patent and was invalidating prior art.

After various demands to settle from WPEM that continually went down in amount, SOTI continued to refer to the prior version of the user manual and sent a Rule 11 letter explaining that the complaint was frivolous, among other things. Ultimately, WPEM offered to dismiss the complaint with prejudice in exchange for SOTI not pursuing attorney’s fees.

When SOTI did not agree to this offer, WPEM file a motion for voluntary dismissal pursuant to Rule 41(a)(2). SOTI did not oppose the motion to dismiss but asserted that it should be required to bear its own fees and costs. After the case was dismissed, SOTI file a motion for a determination that the case was exceptional and sought its attorney’s fees.

Continue reading

Published on:

by

Plaintiff alleged that Defendant Microsoft Corporation’s (“Microsoft”) software infringed the 7,885,981 patent (“the ‘981 Patent”), which pertains to data processing in relational computer databases. Microsoft filed a motion for summary judgment.

After denying the motion with respect to infringement, the district court turned to issue of willfulness. The district court noted that: “It is well-settled that knowledge of the non-infringer’ s patent is a necessary element to a claim of willful infringement.” Olaf Soot Design, LLC v. Daktronics, Inc., 325 F. Supp. 3d 456, 461 (S.D.N.Y. 2018); see also Verint Sys. Inc. v. Red Box Recorders Ltd., No. 14-cv-5403, 2016 WL 7177844, at *2 (S.D.N.Y. Dec. 7, 2016) (“For a finding of willful or induced infringement, the law requires that a defendant have had actual knowledge of the patents at issue.”).

Continue reading

Published on:

by

In this patent infringement action, the parties filed a joint motion for a stipulated protective order where they agreed that they could designate certain documents and information produced in the case as “Confidential” or “Highly Confidential – Trial Counsels’ Eyes Only.” The protective order also provided that the confidential information could only be used for the action. The plaintiff, Static Media, designed certain testimony and exhibits from various deposition as Confidential or Highly Confidential, particularly pertaining to a licensing and royalty agreement and Static Media’s sales and revenue information.

The inventory of the patent-in-suit subsequently sent a letter to OJ Commerce alleging infringement of the patent-in-suit. Counsel for OJ Commerce then contacted the counsel for Leader regarding the pending action Static Media had filed against Leader. Leader and OJ Commerce then decided to enter into a joint defense group (“JDG”) where they agreed to work like a group of mutually retained outside counsel for the purpose of common defense and to work together to promote a common joint interest.

After Static Media filed suit against OJ Commerce in the Southern District of Florida, Leader and OJ Commerce executed a joint defense agreement (“JDA”) and Leader’s counsel shared Static Media’s confidential information with counsel for OJ Commerce pursuant to the JDA.

Continue reading

Published on:

by

In this patent infringement action, Apple filed a motion to dismiss Maxell’s induced infringement claims. In the motion, Apple asserted that the complaint did not plausibly allege Apple had “specific intent” to induce infringement, arguing that the complaint only cited broadly to Apple’s website and user manuals, without alleging how the instructions directed Apple’s customers to use the accused products in an infringing manner.

The district court stated that Apple incorrectly asserted that the complaint includes “nothing more than citations to Apple’s user guides and websites . . . .” To the contrary, the district court found that Maxell alleged significantly more. “The complaint sets out detailed allegations of direct infringement, identifying the accused functionalities and accused devices for each patent. The complaint further includes screen-shots and descriptions of Apple’s online user manuals and advertisements, which the complaint alleges contain ‘descriptions and demonstrations’ of the accused functionalities. Some of the pictured webpages appear to contain directions for customers to use the accused functionalities. … The complaint further alleges that Apple’s customers directly infringe the patents by using the accused products in accordance with Apple’s instructions and that Apple provides customers instructions on how to infringe the patents with its user manuals and websites.”
Continue reading

Published on:

by

In this patent infringement action, Plaintiff Total Rebuild (“Total”) asserted that Defendant PHC (“PHC”) infringed claims of United States Patent No. 8,146,428 (“the ’428 Patent”), which is directed to systems and methods for safely testing devices and components under high-pressure. The district court conducted a bench trial on inequitable conduct and concluded that the patent was invalid for several reasons.

First, the district court noted that the inventor, Mr. Lavergne, had a duty to disclose material information to the United States Patent and Trademark Office (“USPTO”). The district concluded that material prior art had been withheld because certain devices had been offered for sale prior to the August 8, 2007, which was one year prior to the earliest application (the “Critical Date”). The district court explained that: “Here, the Cameron MTSs, Haliburton MTS, and Superior MTS were prior art under 35 U.S.C. § 102(b) because it was an offer for sale, sale, or public use by Total, Cameron, Haliburton, or Superior of a pressure testing system prior to the Critical Date. Furthermore, the offer for sale, sale, or public use of the Cameron MTSs, Haliburton MTS, and Superior MTS was material to the patentability of the ’428 Patent because claim 1 and claim 16 would not have issued had the sale been disclosed to the USPTO. This is especially true in view of the broadest reasonable interpretation and preponderance of the evidence standards that apply to the materiality prong of claims for inequitable conduct.”

Continue reading