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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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Xerox Corporation (“Xerox”) filed a patent infringement action against Google and Yahoo! in the United States District Court for the District of Delaware. After construing certain terms of the patent-in-suit as part of a claim construction proceeding, the district court resolved a discovery dispute between the parties over the production of communications between Xerox and a third-party licensing company, IPValue. Google and Yahoo! sought production of documents that Xerox exchanged with IPValue and which Xerox had listed on its privilege log based on a common interest privilege.

Google and Yahoo! contended that the documents could not be protected by the common interest privilege because the relationship between Xerox and IPValue is purely commercial. Xerox disagreed contending that both it and IPValue retain attorneys to perform legal analyses on issues relating to patent rights and because Xerox and IP Value have a joint objective of successfully asserting the Xerox intellectual property rights, which requires close cooperation between the companies. IPValue is a patent licensing company that works with other companies to help monetize their patent portfolios. Prior to the litigation, Xerox and IPValue had entered into agreements designating IPValue as Xerox’s worldwide agent for intellectual property licensing.
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It is fast becoming clear that it is very difficult to transfer a patent infringement case out of the United States District Court for the District of Delaware when the defendant is incorporated in Delaware. In this case, Netgear sued Ruckus Wireless for patent infringement in the District of Delaware. Ruckus is a Delaware corporation with its principal of business in California. Netgear is also a Delaware corporation with its principal place of business in California.

Ruckus moved to transfer the case to the Northern District of California based on the arguments that both it and Netgear have their headquarters and primary places of business in the Northern District, nearly all key events, parties, documents and third party witnesses are in the Northern District, there are already two patent infringement lawsuits involving related technologies pending between the parties in the Northern District and there is significant court congestion in Delaware.
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In a patent case brought by Plaintiff Rembrandt Vision Technologies, L.P. (“Rembrandt”) against Defendant Johnson & Johnson Vision Care, Inc. (“J&J”) in the Eastern District of Texas, J&J moved to transfer the case to the United States District Court for the Middle District of Florida. Central to the Judge Ward’s grant of J&J’s motion was the fact that he and Magistrate Judge Everingham soon would be retiring effective October 1, 2011, which — along with the balance of private and public interest factors — resulted in the transferee venue being “clearly more convenient than the venue chosen by [Rembrandt].”

Initially, the district court noted that Rembrandt is a New Jersey limited liability partnership with offices in Pennsylvania and no facilities in Texas. The district court also noted that the inventors of the patent-in-suit have no connection to Texas, but own a house in the Middle District of Florida. The district court pointed out that the only connection that Rembrandt had to the Eastern District of Texas was the pending lawsuit and other lawsuits it had filed there. On the other hand, the district court countered that J&J had been involved in litigation in the Middle District of Florida involving the same accused products, J&J was a Florida corporation with its headquarters in Jacksonville, Florida, and that it employed over 1200 people to manufacture the accused product in its Florida facility.

After concluding that the threshold determination that Rembrandt’s claim could have been brought in the Middle District of Florida, the district court turned to Rembrandt’s argument that judicial economy weighed against transfer. Rembrandt argued that judicial economy weighted against transfer because of the district court’s experience with the patent-in-suit and also because J&J waited 17 months to file its transfer motion. Judge Ward stated that “[b]ecause both the undersigned and Magistrate Judge Everingham are retiring from the bench on October 1, 2011, these issues do not weigh as heavily, with respect to judicial economy, as they may have otherwise.” Judge Ward further explained that “[w]ith respect to the Court’s familiarity and experience with the patents-in-suit, due to the approaching retirement of both the undersigned and Magistrate Judge Everingham, there will no longer be a judge in the Marshall Division with familiarity of this case.”

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In a patent infringement action between Kimberly-Clark (“K-C”) and First Quality Baby Products (“First Quality”) pending in the United States District Court for the Eastern District of Wisconsin, K-C filed a motion to compel First Quality to produce sales evaluation files relating to products accused of infringement. K-C asserted that the files were necessary because they might lead to admissible evidence regarding damage claims for a reasonable royalty and for lost profits due to price erosion. First Quality admitted in a deposition that the sales evaluation files contain information that is used in setting prices.

In analyzing whether the files should be produced, the district court began by stating that “[i]n calculating a reasonable royalty courts consider, among other things, the ‘infringer’s anticipated profit from the use of the patented invention.'” The district court found that First Quality’s sales evaluation files contain contribution margin analysis, which is a profitability measure used by First Quality to set prices. As a result, the district court noted that “it logically follows that First Quality’s sales evaluation files should be produced as they may aid in any calculation of reasonable royalties.”
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In a recent case from the United States District Court for the Eastern District of Virginia, the district court granted defendants’ motion to limit damages for failure to mark for all but one of the patents-in-suit. Pursuant to 35 U.S.C. §287(a), a patentee must either mark a patented product or provide actual notice of infringement in order to recover damages. Section 287 can be satisfied either by constructive notice, accomplished by marking a product or packaging with the applicable patent number, or actual notice, such as sending a cease and desist letter or providing the alleged infringer with actual notice of infringement through another affirmative act.

Defendants filed a motion for judgment as a matter of law asserting that the plaintiff had failed to introduce sufficient evidence to support a finding that it was entitled to recover pre-suit damages because it failed to comply with the marking requirements of Section 287. Plaintiff argued that Section 287 did not apply because the defendants were aware of the patents and, therefore, had actual knowledge regardless of plaintiff’s failure to mark. The plaintiff also argued that with respect to one of the patents Section 287 did not apply because the plaintiff was only asserting method claims and not apparatus claims.
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The United States District Court for the Central District of California denied a motion for partial summary judgment finding that certain means-plus-function limitations were sufficiently definite to survive a challenge to the patent’s validity. The plaintiff filed a patent infringement action against the defendant over a patent that relates to a computer mouse with a roller element for scrolling in computer application programs. The defendant argued that the patent was invalid because the patent includes means-plus-function limitations that do not identify corresponding structure in the specification.

In analyzing the definiteness of the means-plus-function limitations, the district court noted that construction of such a limitation is a two step process involving first determining the function of the term and second connecting that function to sufficient structure. The district court also stated that “[w]hen a function is implemented in software, identification of a general purpose computer, microchip, or software program will not suffice as description of its structure.”
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