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In a recent ruling from the United States District Court for the Sothern District of California, a Magistrate Judge allowed discovery to take place on an inequitable conduct defense after the discovery cut-off. The defendant propounded document requests a little more than 30 days before the discovery cut-off and plaintiff produced documents in response to those requests the day before the discovery cut-off. On the last day for discovery, defendant took the deposition of the inventor of the patent-in-suit.

Based on information learned during the deposition and documents produced by plaintiff at the close of discovery, defendant contended that the plaintiff made material misrepresentations to the Patent Office to overcome a section 112 rejection. Based on that contention, defendant sought leave to amend its answer, assert an affirmative defense of inequitable conduct and to pursue additional discovery directed toward that defense.
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Plaintiff Hurricane Shooters, LLC sought summary judgment of no invalidity on Defendant’s defenses of prior inventorship under Section 102(g) and lack of utility under Section 101. The patents-in-suit involve drinking cups for serving mixed drinks in bars and restaurants having a plural chamber that optimizes the mixing of fluids as they are simultaneously poured while minimizing interference with the nose of the drinker.

Defendant’s invalidity defense was based on a plural chamber “bomb cup” invented by a competitor. Rejecting Plaintiff’s evidence of an earlier date of invention in August 2004 consisting only of the uncorroborated inventor’s testimony, Plaintiff’s inventors’ evidence showed that they invented their plural chamber cup in November of 2004. Defendant, however, presented evidence that its plural chamber cup was invented in October 2004. The Hurricane Shooters court was faced with the issue of whether Defendant’s evidence of an earlier invention was sufficient to survive summary judgment.
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After the district court determined that the plaintiff’s patent was infringed and was not invalid based on anticipation or obviousness, the district court held a bench trial on the issue of damages. The district court first analyzed the issue of lost profits. Finding that the plaintiff could not meet several of the Panduit factors because, among other things there were acceptable, non-infringing substitutes in the marketplace during the relevant time period, the district court denied plaintiff’s request for lost profits. “As plaintiff has not shown a reasonable probability that it would have made the majority of [defendant’s] sales given the existence of non-infringing switchblade divot repair tools on the market, the Court finds plaintiff has not met its burden in this regard.”

The district court next analyzed whether the plaintiff was entitled to a reasonable royalty. Plaintiff contended that it was entitled to a 20% royalty on the gross profits of defendant’s infringing tools because the patented tools sold by the plaintiff had a high gross profit of 70%, there were few competitors, the tools were an impulse buy because they had a low price, the tools were an effective and low-cost promotional product, they had a unique design and function and the tools were accepted and known in the marketplace. The defendant argued for royalty rate of 5% of net profits.
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As the battle between Oracle and Google approaches nearer to trial, the United States District Court for the Northern District of California has denied Google’s objection to the selection of the pool of jurors who will hear the trial. The district court previously notified Oracle and Google that the district court intended to pre-clear a large number of potential jurors for a multi-month criminal trial and that it intended to use this same pool of potential jurors for the trial between Oracle and Google in the event the criminal trial was postponed. Oracle did not object to the procedure. Google did.

In its objection, Google argued that many potential jurors who would normally be available to serve on a three week trial would have significant personal or professional commitments that would prevent them from serving in a much longer criminal trial. As a result, Google reasoned that the pool cleared for the much longer criminal trial would be less diverse and less representative than a group specifically cleared for a shorter three week trial. In Google’s words, “[t]o maximize the size and diversity of the venire, enhance the [quality] of the jury-selection process, and increase the likelihood that the jury eventually selected will provide the parties with a fair cross section of the community, Google respectfully requests that the Court not use the pre-clearance process.”
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Plaintiffs filed a lawsuit for patent infringement, unfair competition and breach of fiduciary duty against several defendants, including AIM Sports. Plaintiffs design, develop and distribute firearm related tools, accessories and sporting optics. Defendants and plaintiffs had a business relationship that permitted Defendants to access trade secret information that belonged to the plaintiffs, including trade secrets regarding manufacturing, product development and plaintiffs’ patented products. After the plaintiffs sued defendants for patent infringement and settled the lawsuit, plaintiffs discovered that defendants had formed a new company that continued to infringe the patent and violated the settlement agreement.

After both parties filed motions to compel the production of documents, the Magistrate Judge granted both motions in part and denied both motions in part. Plaintiffs’ motion with respect to two of the requests was denied because the defendants represented in declarations signed under penalty of perjury that they had no responsive documents. Plaintiffs then conducted fact witness depositions and alleged, after conducting these depositions, that defendants had withheld responsive documents and that declarations filed with the district court were false. At this point, the Magistrate Judge granted plaintiffs’ motion, ordered the production of the responsive documents and ordered defendants to file new declarations. When the defendants failed to produce the financial and design documents sought and filed no new declarations, the plaintiffs moved for monetary sanctions and evidentiary sanctions.
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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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