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In this patent infringement action, the defendant moved to exclude plaintiff’s expert witness on the basis that the expert was not disclosed on a timely basis. The plaintiff disclosed the witness on November 4, 2011, as an expert to testify as to “the molecular weigh characterization of polymers” in a claim construction hearing scheduled for November 9, 2011. The deadline for identifying witnesses to give testimony relevant to claim construction expired in July 2011.

In analyzing whether there was surprise as to the expert testimony, the district court began by noting that “[t]o name a witness so far beyond the deadline set by the scheduling order would require a strong justification.” The district court found that “[t]he issue of how molecular weight of a polymer should be measured was clearly identified as an issue for claim construction in the parties’ joint claim construction statement.” From this joint claim construction statement, the district court determined that it was established that plaintiff had notice of “differences as to how the molecular weight of a polymer was measured well before July 29, 2011.” The district court also noted that plaintiff did not suggest otherwise.
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In the wake of the new restrictions on joinder of multiple defendants after the enactment of the America Invents Act, a number of plaintiffs have still attempted to join multiple defendants in a single lawsuit. One tactic used by plaintiffs is to file suit against several customers of a supplier along with the supplier of the accused product. This type of lawsuit establishes a close connection between the defendants in that the accused product is the same across all the defendants, which likely is a permissible joinder under the new standards set forth in the America Invents Act.

Nonetheless, this new tactic is having limited success. In a recent patent infringement action in the United States District Court for the Northern District of Illinois, the plaintiff sued several customers and the supplier of an accused product. The defendants moved to sever the customer defendants from the supplier defendant and to stay the action against the customer defendant. The supplier defendant also moved to transfer the severed action against it to the Northern District of California where it was based. It also asserted that transfer was appropriate because the plaintiff was based in Southern California, much closer to the Northern District of California than the Northern District of Illinois.
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In December 2010, Indacon, Inc. (“Indacon”) sued Facebook, Inc. (“Facebook”) for patent infringement for two patents that pertain to a system for data acquisition and perusal. The plaintiff filed a Markman brief and Facebook filed an inter partes request for reexamination. Facebook then filed a motion to stay the case pending the outcome of the reexamination.

Facebook asserted that the stay was necessary because it filed the inter partes reexamination based on recent briefing by Indacon. Facebook claimed it had filed the reexamination request based on the Markman briefing filed by Indacon, asserting that it had three invalidating prior art references that were not before the PTO. Based on the reexamination filing, Facebook argued that the district court should temporarily stay the litigation because discovery “is far from complete and a trial date has not been set” and the stay would not unduly prejudice the plaintiff.
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In a patent infringement action pending in the United States District Court for the District of Colorado, one of the defendants, Hewlett-Packard (“HP”) moved for a protective order with respect to the designation of one of plaintiff’s experts. Plaintiff contended that HP infringed certain patents held by plaintiff by making and selling products that use multiple condition code registers, such as printers. HP contended that the accused products often incorporate or integrate third party technology or components and therefore HP had in its possession, custody or control of third party confidential information in the form of documents and source code.

The plaintiff notified HP that its expert would inspect the source code. HP objected to the expert’s proposed source code inspection contending that it would not produce the source code unless there was protection for third-party confidential information. HP also demanded that the expert agree not to work for non-practicing entities and not to perform work adverse to HP for several years after trial of the case. “HP asks the Court to add provisions to the Amended Protective Order that require [plaintiff’s expert] to attest that he is not working for any entity in a capacity of reviewing patens or products, services, or targets for non-practicing entities, other than as a result of this litigation, and that he will not do so for four years after trial of this lawsuit” HP also sought to preclude the expert from working on the prosecution of any patent directed or related to the field of computer processor architecture for a period of four years following trial and not to perform any work adverse to HP for a period of three years following trial.
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Sandisk Corp. (“Sandisk”) filed a patent infringement action against Kingston Technology Co., Inc. (“Kingston”). Prior to trial, Sandisk moved to exclude defendant’s expert witness on damages because the expert’s methodology was unreliable and because the supplemental report contained untimely opinions.

In terms of reliability, Sandisk asserted that the expert used an incorrect legal standard for defining the relevant geographic market and the expert’s definition did not fit the facts of the case. The expert defined the market to include “all manufacturers, regardless of where located, with the legal right to sell flash memory products in the United States.” Plaintiff asserted that this was the wrong market because the expert defined the market in terms of the location of sales instead of by the region where consumers are able and willing to purchase substitutes. The district court disagreed, finding that “[c]ontrary to plaintiff’s assertions, this definition does not exclude foreign competitors who may divert products into the United States or competitors without a license from plaintiff.”
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Round Rock Research (“Round Rock”) purchased approximately 4500 patents from Micron Technology. Round Rock then sued Dell and Oracle on certain of these patents for patent infringement in the United States District Court for the Eastern District of Texas. Within a few months of the filing of the lawsuit, Dell and Oracle moved to transfer the case to the Western District of Texas.

In ruling on the motion to transfer, the Magistrate Judge first focused on whether the case could have originally been filed in the Western District of Texas, i.e., whether the Western District of Texas would have personal jurisdiction over the defendants. The Magistrate Judge concluded that it would as Dell is a resident of the Western District of Texas and Oracle sells its accused products worldwide, including within the Western District.
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In a patent infringement case pending before the United States District for the Western District of Wisconsin, the plaintiffs filed a motion in limine before the damages phase of the trial to preclude the defendants from arguing that the work performed by their scientists should be taken into account in apportioning damages. The district court granted the plaintiff’s’ motion to exclude the evidence.

Defendants contended that the work performed by their scientists added value and should be considered when the jury determined plaintiffs’ lost profits. Defendants essentially argued that the damages should be apportioned to reflect the added value that was provided by their scientists.
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Plaintiff filed a patent infringement lawsuit against a number of defendants in the Eastern District of Texas. Defendants moved to transfer the case to either the Central District of California or the District of Delaware.

Plaintiff maintains its principal place of business in Connecticut and is incorporated in Delaware. The defendants are incorporated in Delaware, Pennsylvania, Nevada, Switzerland, Sweden, Ireland and Germany and maintain their principal place of businesses in Pennsylvania, New Jersey, Nevada, California, Sweden, Germany and Switzerland. None of the defendants have any facilities within Texas. Plaintiff identified a number of independent care facilities that operate the accused product within the Eastern District of Texas. Plaintiff also obtained declarations from five medical professionals within the Eastern District’s subpoena power who specialize in the use of the accused products.
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ActiveVideo filed a patent infringement action against several Verizon entities asserting that Verizon infringed certain of ActiveVideo’s patents. After a three week jury trial, the jury found that Verizon infringed asserted claims of four of the patents and awarded ActiveVideo $115,000,000 in damages. After the verdict, ActiveVideo sought an award of prejudgment infringement, post-judgment interest and post-discovery damages for the continuing infringement. Verizon opposed the motion.

In addressing the issue of damages for continuing infringement, the district court stated that “[w]here a patent infringer is found to have infringed one or more patents, the ‘patentee is entitled to damages for the entire period of infringement and should therefore be awarded supplemental damages for any period of infringement not covered by the jury verdict'” (citations omitted). ActiveVideo asserted that it was entitled to an award of supplemental damages because the discovery provided by Verizon only accounted for information through March 2011 and did not address the period from April 2011 to August 2011 when the jury returned its verdict. Verizon opposed the motion by contending that ActiveVideo waived any entitled to the supplemental damages because it failed to request them in the amended complaint or in the final pre-trial conference order.
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The United States District Court for the District of Delaware recently ruled on the issue of whether a bounced check for the issuance of a patent could constitute abandonment of the patent. In this patent infringement action, defendants moved to dismiss for lack of subject matter jurisdiction as a result of the bounced check. The district court denied the motion.

It was undisputed that during the prosecution of the patent, that the applicants original check to cover the issue fee bounced, which led to the patent office notifying the applicants of the payment deficiency and seeking withdrawal of the patent from issuance. As a result, defendants contended that the patent was abandoned under 35 U.S.C. § 151 for failure to timely pay the required issue fee. Plaintiff’s contended that the bounced check was properly resolved with the USPTO and that the Patent Office never officially withdrew the patent from issuance. Plaintiffs also noted that the Patent Office accepted payment of all required maintenance fees for several years.
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