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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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In a recent case in the United States District Court for the Eastern District of Texas, the court denied defendants’ motion to transfer the case to the District of New Jersey. The court’s analysis focused primarily on whether the case could have originally been filed in the District of New Jersey. The court began its analysis by noting that 28 U.S.C. § 1404(a) provides that “[f]or convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.”

Recognizing that the “first determination to be made under § 1404(a) is whether the claim could have been filed in the judicial district to which transfer is sought,” the court stated that the “‘critical time’ when making this threshold inquiry is the time when the lawsuit was filed.” Plaintiff contended that the matter could not have been filed in New Jersey initially because two of the defendants were not subject to personal jurisdiction in New Jersey. Defendants responded that the action could have been filed in New Jersey because the defendants consented to personal jurisdiction in New Jersey and were indemnified by another defendant, which was based in New Jersey.
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The Federal Circuit’s en banc decision in Therasense v. Becton, Dickinson & Co., is having its intended effect of reigning in inequitable conduct claims. In a recent decision, Judge Otero of the United States District Court for the Central District of California granted summary judgment of no unenforceability on defendant’s inequitable conduct claim. Plaintiff U.S. Rubber Recycling, Inc. filed suit alleging, among other things, that Defendant Ecore International, Inc. fraudulently procured and wrongfully enforced its patent relating to rubber acoustical underlayment (insulating material for use with floor tile) in order to monopolize the market for such products. Specifically, the Plaintiff asserted that, “during the prosecution of the [patent], Defendant intentionally failed to disclose to the PTO material prior art that showed the claimed invention had been sold in the United States and described in printed publications more than one year prior to the [patent] application.” In its summary judgment motion, the Defendant alleges “that the issuance of the reissue patent demonstrates that the alleged prior art are not material as a matter of law” and that the “Plaintiff cannot raise an issue of genuine fact that the Defendant failed to disclose any reference with bad intent.”
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Plaintiff brought a patent infringement action alleging direct infringement of a single patent. The defendant, a corporation, sought an extension of time to respond to the complaint through a request from its CEO. Because corporations cannot represented themselves and must instead be represented by a licensed attorney, the district court denied the requested extension and ordered the defendant to answer within 30 days. A few months later, the CEO of the defendant filed an extension request in order to complete a re-examination of the plaintiff’s patent even though there was no re-examination request pending before the Patent and Trademark Office. The defendant still had not filed an answer to the complaint.

In response, the plaintiff requested that the district court enter a default judgment against the defendant and to set a hearing to determine the appropriate amount of damages to be awarded to the plaintiff and whether a permanent injunction should issue. More than a week later, the defendant, through an attorney, filed an answer to the complaint. Plaintiff moved to strike the answer because the defendant had failed to seek leave of court to files its late answer. The district court denied plaintiff’s motion and permitted the defendant to answer the complaint.
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In a patent infringement action, the district court granted defendants’ motion for summary judgment based on the on sale bar and dismissed plaintiff’s claims with prejudice. Defendants then requested that the district court find the case exceptional due plaintiff’s litigation misconduct. Based on that misconduct, the district court found that the case was exceptional. Defendants then moved for an award of $800,000 in attorneys’ fees.

The district court noted under 35 U.S.C. § 285, it may in exceptional cases award reasonable attorneys’ fees to the prevailing party. To do so, the court must first determine that there is clear and convincing evidence that the case is exceptional and then the court must exercise its discretion in determining whether an award of fees is justified. The district court also noted that “[l]itigation misconduct and unprofessional behavior may suffice, by themselves, to make a case exceptional under § 285” but “[i]n cases deemed exceptional only on the basis of litigation misconduct, however, the amount of the award must bear some relation to the extension of the misconduct.”
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