Friday, May 25, 2018

Defense Counsel’s Twenty-Year Representation of Plaintiff, Spanning Seven Months of the Instant Case, Does Not Justify Disqualification

The court denied plaintiff's motion to disqualify defense counsel who had previously represented plaintiff for 20 years on intellectual property matters and concurrently represented plaintiff in patent prosecution matters during seven months of the instant case because counsel's misconduct did not taint the underlying trial. "⁠[Counsel] has violated the Connecticut Rules of Professional Conduct. . . . However, not every violation of the Rules of Professional Conduct warrants disqualification. . . . [Plaintiff] has not . . . made any effort to identify any way in which it has been prejudiced or negatively affected by [counsel's] actions, let alone in a way significant enough to taint the integrity of the trial. . . . [T]here is no evidence that [counsel] obtained any confidential information from [plaintiff] in the course of its representation regarding the patent prosecutions. . . . [T]he subject matter of the current litigation is a different patent than those [counsel] prosecuted on behalf of [plaintiff], which representation originated from a joint venture with [defendant]. . . . Any substantive activity in [plaintiff's] patent prosecutions was completed with the issuance of the patents, the last of which occurred . . . over a year before [plaintiff] filed this case. . . . The parties agree that the extent of [counsel's] representation of [plaintiff] during the period of concurrent representation was limited to [plaintiff's] payment of an invoice and [counsel's] payment of a maintenance fee on the patent on [plaintiff's] behalf."

Rio Brands, LLC v. GCI Outdoor, Inc., 3-17-cv-00786 (CTD May 22, 2018, Order) (Hall, USDJ)

Thursday, May 24, 2018

Expert’s Reliance on Unaccepted License Proposal Does Not Render Opinion Unreliable

The court denied defendant's motion to exclude the testimony of plaintiff's damages expert regarding a reasonable royalty rate because his reliance on an unaccepted proposal was sufficiently reliable. "⁠[The expert] discussed several additional distinguishing characteristics between the contemplated cross-license and the hypothetical license, including that the cross-license was never executed, the negotiation was for a worldwide license, design-around costs, and the possible collaboration between the parties. . . . [Defendant] argues that [his] opinions regarding this contemplated royalty offer should be excluded, because offers -- particularly if never conveyed -- have little value. . . . [A]t the time of this offer, [plaintiff's predecessor] and [a third party] were discussing a cooperation agreement, a situation quite distinct from anticipation of litigation. [Defendant's] criticisms can be adequately addressed through cross-examination and the presentation of competing evidence."

Plastic Omnium Advanced Innovation and Research v. Donghee America, Inc. et al, 1-16-cv-00187 (DED May 22, 2018, Order) (Stark, USDJ)

Wednesday, May 23, 2018

Response to Interrogatory Seeking Conception and Reduction to Practice Dates May Not Identify Voluminous Documents

The court granted defendant's motion to compel further interrogatory responses regarding conception and reduction to practice. "⁠[Defendant] concedes that [plaintiff] has narrowed the dates (indeed, [plaintiff] has said it will use the filing date for [one patent-in-suit]) but the issue of [plaintiff] citing 'hundreds of documents' with no explanation of their relevance. . . . [Plaintiff] shall prepare a document entitled 'Date of Conception' as to the [other patent-in-suit]. The document shall list the documentary support for its date range and attach the relevant documentation -- limited to 10 documents -- which shall be highlighted. [Plaintiff] shall do the same for 'Reduction to Practice.' These documents will serve as a base line for conception and reduction to practice. Should [plaintiff] choose to amend the dates at some later date, it will have to be based on newly discovered evidence."

Magna Electronics, Inc. v. Valeo, Inc. et al, 2-13-cv-11376 (MIED May 18, 2018, Order) (Cohn, USDJ)

Tuesday, May 22, 2018

Ratification of Subsidiary’s In-District Facility Qualifies as Regular and Established Place of Business

The court denied a defendant's motion to dismiss plaintiffs' patent infringement action for improper venue because defendant had a regular and established place of business in the district by ratifying its subsidiary's manufacturing and research facility as its own place of business. "⁠[Defendant's] own corporate announcement and reports from San Antonio media reflect that [defendant] announced its move to San Antonio . . . more than 8 years ago. The court concludes that an 8-year presence reflects a regular and established place of business. . . . [W]hatever the lease arrangements are, the court concludes that [defendant] has ratified the San Antonio facility as its place of business. Also, [defendant] represents that it has a place of business in the district, as it lists the San Antonio facility as a place of business on its website, in the telephone and other web-based directories, and has placed its name on a large sign on the exterior of building."

Board of Regents, The University of Texas System et al v. Medtronic, Inc. et al, 1-17-cv-00942 (TXWD May 17, 2018, Order) (Yeakel, USDJ)

Monday, May 21, 2018

Technical Expert’s Indefiniteness Opinions Excluded as Irrelevant for Relying on Claim’s Intended Result

The court granted plaintiff's motion to exclude the testimony of defendants' technical expert regarding defendants' enablement and written description theories as irrelevant. "Defendants conclude the claim limitation doesn’t satisfy the written-description or enablement requirements because the reduction can be achieved in more ways than just reducing the thickness of the insulator. But the proper focus is on structure rather than the intended result. [The claim at issue] is directed to a device, and the specification describes an embodiment of that device . . . . While the limitation recites the result of selecting that range, that result is not a structural limitation of the claim. Because his opinion is based on an incorrect interpretation of the limitation, the Court will grant the motion and exclude as irrelevant [the expert's] opinion that the specification does not provide guidance as to how the parasitic capacitance is reduced."

Kaist IP US LLC v. Samsung Electronics Co., Ltd. et al, 2-16-cv-01314 (TXED May 17, 2018, Order) (Payne, MJ)

Friday, May 18, 2018

Disingenuous Licensing Discussions Sufficient to Support Willful Infringement Claim

The court denied defendant's motion to dismiss plaintiff's willful infringement claims for failing to sufficiently allege egregious conduct through defendant's licensing negotiations. "When considering [plaintiff's] allegations and other facts pled in the Complaint that show that [defendant] knew in detail about how it infringed each Asserted Patent as a whole, a reasonable inference can be drawn that [defendant's] licensing discussions were disingenuous. . . . As such, the Court finds that the Complaint contains sufficient facts from which a plausible conclusion could be reached that [defendant's] conduct went beyond those 'in a typical infringement case' and thus was egregious. . . . [T]o the extent that [defendant] is arguing that the allegations pertaining to the settlement discussions cannot lend any support to [plaintiff's] willful infringement claim at the pleading stage, the Court rejects that argument. Whether [plaintiff] has evidence to prove its claims is a matter for another day."

Finjan, Inc. v. SonicWall, Inc., 5-17-cv-04467 (CAND May 16, 2018, Order) (Freeman, USDJ)

Thursday, May 17, 2018

Pain Treatment Patents Do Not Claim Unpatentable Law of Nature

The court granted plaintiff's motion for summary judgment because the asserted claims of its pain treatment patents did not encompass unpatentable subject matter and found that the claims were not directed toward a law of nature. "⁠[Two claims] each recites a 'method of treating pain in a patient having mild or moderate hepatic impairment,' and teaches using a specific extended release formulation of hydrocodone bitartrate that has a particular release profile. Although the inventions recited in those claims were based upon a natural law -- the physiological response to hydrocodone in individuals with or without mild or moderate hepatic impairment -- the claims do more than merely report those physiological responses. Rather . . . the claims asserted in this case describe a specific dosing regimen to treat a specific condition based on the patient’s medical status."

Pernix Ireland Pain Ltd. et al v. Alvogen Malta Operations Ltd., 1-16-cv-00139 (DED May 15, 2018, Order) (Bryson, CJ)