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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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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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