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In this patent infringement suit, the parties were unable to agree upon a written Electronically Stored Information (“ESI”) protocol. Before the protocol was executed, the district court ordered the parties to comply with all scheduling orders and production deadliness regardless of whether they had agreed upon a final written agreement regarding the search and production of ESI. The parties subsequently disagreed over the scope of the document production and whether the document production was deficient.

After the district court intervened in the process of finalizing the written ESI protocol, the parties finally executed a written ESI protocol. A dispute then arose between the parties over the production of ESI according to the protocol and the plaintiff moved to compel.
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Abaxis, Inc. (“Abaxis”) filed a patent infringement action against Cepheid asserting that Cepheid infringed four of Abaxis’ patents. In its answer, Cepheid asserted a defense of inequitable conduct and Abaxis moved to dismiss the defense. The United States District Court for the Northern District of California granted the motion.

In support of the inequitable conduct defense, Cepheid alleged that the patent prosecutor knowingly and intentionally failed to disclose to the United States Patent and Trademark Office (“PTO”) material prior art during the prosecution of the patents. Cepheid also explained that the undisclosed prior art anticipated and/or rendered the patents obvious and, therefore, the patents would not have issued had the prior art been before the PTO. Cepheid also alleged that the patent prosecutor made statements to the PTO during the patent prosecution to distinguish prior art cited by the by the PTO that were knowingly false in light of the information withheld from the PTO and “but for” these statements and the withholding of the material prior art the patents would not have issued.
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Mean-plus-function limitations in patent claims require special construction and can result in narrow patent claims that may not be beneficial to patent owners. As a result, many potential infringers will try to take advantage by claiming that certain terms in patent claims are in reality means-plus-function claims. The determination of whether certain terms in a patent are means-plus-function claims can have an important impact on the validity of the patent.

The Federal Circuit’s recent decision in a case involving patents pertaining to elevator systems highlights the importance of whether a claim limitation is considered a means-plus-function term. In Inventio AG v. Thyssenkrupp Elevator Americas Corp., Case No. 2010-1525 (Fed. Cir. June 15, 2011), this distinction played a key role.
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Plaintiff Personal Audio, LLC (“Personal Audio”) filed a patent infringement action against Apple, Inc. (“Apple”) over two patents, which teach an audio program player that will play a sequence of audio program files and accept commands from the user to skip forward or backward in the sequence. After a jury trial, the jury found that the patents were infringed and awarded damages of $8 million in the form of a lump sum royalty.

After the jury verdict, Personal Audio moved for an award of ongoing royalties pursuant to 35 U.S.C. § 283. The district court denied the motion. The district court found that “the jury’s lump sum damages award represents a fully paid up license for all past and future sales of Apple products that incorporate the patented technology. The court finds that the $8 million lump sum awarded by the jury adequately compensates Personal Audio for both past and future infringement, and therefore no ongoing royalty award is necessary.”
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In a patent case filed in the Western District of Wisconsin, Defendant Digecor, Inc. moved to dismiss plaintiff Hunts Point Ventures, Inc.’s complaint for failing to identify the asserted claims or the accused product. In granting the Defendant’s motion, the Court (J. Crabb) reiterated her well established practice of requiring such information in a complaint absent the unusual circumstance where the patent contains only a single claim and the defendant makes only a single product.

Judge Crabb acknowledged that it previously has held that a plaintiff’s failure to identify the claims or the accused products “places an undue burden on the defendant, who must wade through all the claims in a patent and determine which claims might apply to its product to give a complete response.” Moreover, “if a defendant does not have notice of the asserted claims, it has not notice at all. If it does not know what it is accused of infringing , it cannot possibly prepare a defense.” Analogizing patent cases to civil rights cases, the Court succinctly explained that “it is the plaintiff’s initial burden to inform the defendant what it did to violate the plaintiff’s rights.”
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After the Federal Circuit’s decision in Thereasense, Inc. v. Becton, Dickinson and Co., 2011 WL 2028255 (Fed. Cir. 2011), it appeared likely that it would be difficult, if not impossible, to proceed on an inequitable conduct claim. A recent decision from the United States District Court for the District of New Jersey may change that trend.

Schering Corp. (“Schering”) filed a complaint alleging that Mylan Pharmaceuticals’ (“Mylan”) Abbreviated New Drug Application (“ANDA”) infringed two of Schering’s patents that disclosed different ways to reduce cholesterol levels. Schering filed motions for partial summary judgment, one of which sought to eliminate Mylan’s defense of inequitable conduct in light of Thereasense. After granting Schering’s motion for summary judgment on the issue of infringement, the district court examined the motion addressing the inequitable conduct defense.
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Plaintiff, Jan Voda, M.D. (“Dr. Voda”), filed a patent infringement action against Medtronic Inc. (“Medtronic”) based on a patent that taught how to use a guide catheter to perform angioplasty of the left coronary artery. After Dr. Voda filed an amended complaint adding an additional patent, Medtronic moved to dismiss the new count based on the new patent pursuant to Fed.R.Civ.P. 12(b)(6) and attached documents that were not referred to in the complaint and that were not central to Dr. Voda’s claims. The district court issued an order notifying the parties that it would treat the motion as a motion for summary judgment under Fed.R.Civ.P. 56 and would consider the documents.

Medtronic’s motion argued that one of the counts of the amended complaint should be dismissed because the newly added patent was unenforceable in light of the Terminal Disclaimers. The Terminal Disclaimers stated that the ‘195 patent “shall be enforceable only for and during such period that it” is commonly owned with the ‘213 patent and another patent (the ‘625 patent),
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A recent decision from the Central District of California held that a deposition of the author of source code, or similar engineers, cannot be withheld until the producing party, i.e., the party providing the witness, is satisfied that the pinpoint infringement contentions are sufficient. In so holding, the Court indicated that such a determination typically is fact-specific and that given the circumstances in this case the deposition was relevant and not an abuse of the discovery process.

In this instant case, the defendant took the position that until the plaintiff provided sufficient pinpoint citations to the source code, it would not permit the deposition of its principal systems architect over its source code. The defendant expressed its concern that, absent such pinpoint citations, the plaintiff would use the deposition as a “fishing expedition.” The plaintiff, on the other hand, argued that it could not supplement its infringement contentions to provide pinpoint citations to the source code until it took the deposition. Both sides supported their positions with expert testimony. Thus, the Court was faced with the proverbial “chicken and egg question.”
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In a patent dispute over a method for detecting fetal Down syndrome, the United States District Court for the District of Massachusetts invalidated the patent owner’s patent because it was anticipated and obvious. The patent at issue describes screening methods to determine Down syndrome in which physicians estimate the risk of Down syndrome using markers from both the first and second trimesters of a pregnancy. The patent teaches determining the risk for fetal Down syndrome by combining markers from both stages of pregnancy into a single assessment of risk.

According to the district court opinion, after the patent was filed tests that integrate first and second-trimester data into a single calculation of risk were considered to have a higher detection rate than any test that used the data from only one of the trimesters. The testing disclosed by the patent is widely adopted and is licensed to a number of entities with thousands of assessments conducted under theses licenses each year.
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Plaintiffs and defendant manufacture machines that automatically inspect integrated circuits made on semiconductor wafers. Plaintiffs sued defendant for patent infringement and a jury found that the patent was valid and infringed, but did not find that the infringement was willful.

After the jury verdict, the defendant notified its sales force of the verdict and emphasized that the process was not over and that no judgment had been entered. Plaintiffs notified the defendant that it would consider any sales that occurred after the jury verdict evidence of willful infringement. Several months later, the district court denied defendant’s post-trial motions and entered judgment for plaintiffs based on the jury verdict. The district court also entered a permanent injunction. Despite the permanent injunction, the defendant continued to sell the infringing product by meeting with potential customers in the United States who planned to use the machine in other parts of the world. The plaintiffs moved for contempt.
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