Tuesday, February 20, 2018

Meritless Invalidity and Unenforceability Claim Justifies Award of Attorney Fees

Following dismissal of plaintiff's invalidity and unenforceability claims for lack of standing and failure to state a claim, the court granted defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics were unreasonable. "The plaintiff should have known from the inception of this litigation that its claim in Count X [seeking a declaration of patent invalidity and unenforceability] lacked substantive and legal merit, and even if it was unaware of such deficiencies at the time it filed its complaint, there is no question that the meet-and-confer communications from the defendants before the filing of their motion to dismiss directly pointed the plaintiff to such deficiencies. Even with such awareness, the plaintiff committed to seeing the claim through to the end, in defiance of the applicable law. Not only did the plaintiff persist in its frivolous claim, but they aggressively litigated the patent issues. This required the defendants themselves to develop their own expert testimony to address patent issues which should have never been present in this case. There is no doubt that the plaintiff’s steadfast commitment to this unfounded patent claim imposed additional expenses on the opposing parties which should never have been experienced."

Technology for Energy Corporation v. Hardy et al (JRG3), 3-16-cv-00091 (TNED February 15, 2018, Order) (Greer, USDJ)

Friday, February 16, 2018

Audio-Video Doorbell Patent Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s audio-video doorbell patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "⁠[T]he Court has rejected arguments that a patent claim is abstract because its only concrete, physical component not relying on a computer’s generalized computing capabilities was well-known or long-practiced. . . . Detecting the presence of a person at a door, sending a video of the person to be viewed, and speaking with the person at the door are all concrete steps requiring more than the abstract thinking capabilities of a person or a computer. Regardless of anticipation or nonobviousness under §§ 102 and 103 -- neither of which is at issue in the present motion, and upon which the Court states no opinion -- Claim 1 is patent-eligible under § 101."

Eyetalk365, LLC v. Zmodo Technology Corporation Limited, 2-17-cv-02714 (NVD February 14, 2018, Order) (Jones, USDJ)

Thursday, February 15, 2018

Successful Motion to Intervene Waives Venue Challenge

The court denied intervenors' motions to sever and transfer plaintiff's actions against them for improper venue because intervenors waived venue through their intervention. "By definition, an intervenor is '⁠[s]omeone who voluntarily enters a pending lawsuit because of a personal stake in it.' This choice to intervene (or consent to proceed in a particular jurisdiction and venue) has real and far-reaching consequences. . . . [T]he intervenors cannot now question the propriety or convenience of a venue they chose to enter. The intervenors voluntarily entered this proceeding and now must litigate in this, their chosen venue."

Team Worldwide Corporation v. Wal-Mart Stores, Inc. et al, 2-17-cv-00235 (TXED February 13, 2018, Order) (Gilstrap, USDJ)

Wednesday, February 14, 2018

Serving Responses to Contention Interrogatories Near Close of Fact Discovery Justifies Monetary Sanctions Against Defendant and Counsel

The court granted plaintiff's motion for monetary sanctions against defendant and its counsel following plaintiff's successful motion to compel further contention interrogatory responses because defendant's behavior was not substantially justified. "⁠[Defendant] now asserts that it was 'substantially justified in relying upon the existing, valid legal authority directly on point' to delay responses to the Contention Interrogatories. The authorities [defendant] cites, however, do not justify a refusal to respond to contention interrogatories until the last few days before the discovery cut-off. . . . [W]hile [defendant] cites cases for the proposition that responses may be delayed until discovery is 'almost complete,' none stand for the unreasonable conclusion that a responding party can wait until the discovery period is over before responding to demands."

Bal Seal Engineering, Inc. v. Nelson Products, Inc. et al, 8-13-cv-01880 (CACD February 12, 2018, Order) (Scott, MJ)

Tuesday, February 13, 2018

Contractual and Fiduciary Duty of Loyalty May Estop Defendant From Asserting Invalidity Defense

The court denied defendant's motion to dismiss on the ground that plaintiff’s synthetic gem investment product patent encompassed unpatentable subject matter because there were genuine disputes of fact whether an individual defendant was estopped from challenging the patent's validity. "⁠[T]he Court is unpersuaded by defendants' contention that [plaintiff] is legally precluded from asserting an estoppel or contractual bar to [the individual defendant's] invalidity argument arising from his fiduciary and contractual duties to [plaintiff]. Whether those duties actually bar [the individual defendant] (and [the LLC defendant] as his alleged alter ego) in the way asserted by [plaintiff] is another matter, and one the Court cannot adjudicate at this stage of the litigation -- as it may depend on factual disputes that cannot be adjudicated at this point. The upshot is that the Court does not believe that it can appropriately decide defendants' invalidity challenge in the context of their motion to dismiss for failure to state a claim."

Gemshares LLC v. Lipton et al, 1-17-cv-06221 (ILND February 11, 2018, Order) (Kennelly, USDJ)

Monday, February 12, 2018

Common Interest Doctrine Does Not Protect Communications With Litigation Funder Prior to Written Agreement

The court overruled plaintiff's objection to the special master's order granting in part defendants' motion to compel the production of documents plaintiff provided to a third party as part of a litigation financing agreement that plaintiff withheld under the common interest doctrine. "Plaintiff argues that '⁠[l]itigation funders provide funds 'for the sake of securing, advancing, or supplying legal representation,' and thus have a common legal interest with the plaintiffs they fund.'. . . However . . . 'it [does not] appear that there was any written agreement at [the time of the communications] to have a legally 'common interest' in whatever was provided by Plaintiff.' Furthermore, the Special Master explained that the 'documents were provided before any agreement was reached between Plaintiff and [the litigation funder], and before any litigation was filed.' Thus, Plaintiff has not shown that Plaintiff and [the litigation funder] possessed identical legal interests in the patents-in suit or were otherwise 'allied in a common legal cause' at the time of the communications."

Acceleration Bay LLC v. Activision Blizzard, Inc., 1-16-cv-00453 (DED February 9, 2018, Order) (Andrews, USDJ)

Friday, February 9, 2018

Breach of Duty to Disclose Patent to Standards Setting Organization Equitably Estops Enforcement

Following a jury verdict of infringement and invalidity, the court granted in part defendant's motion for judgment as a matter of law that plaintiff was equitably estopped from enforcing its anticoagulant patent. "⁠[Plaintiff] had a duty to disclose its patent to [a standards setting organization] and it breached that duty through silence. . . . This Court agrees that there was credible testimony supporting the inference that [defendant] relied on [an SSO provision] for its continued use of the 15-25% procedures. . . . [Defendant] has shown that it would be economically prejudiced if [plaintiff] were permitted to enforce the patent against it. . . . Because [one] procedure does not comply with [the SSO provision], [plaintiff] is only equitably estopped from enforcing its patent against the 15-25% procedures."

Momenta Pharmaceuticals, Inc., et al v. Amphastar Pharmaceuticals, Inc., et al, 1-11-cv-11681 (MAD February 7, 2018, Order) (Gorton, USDJ)