Friday, April 20, 2018

Disgorgement of Profits For Design Patent Infringement Does Not Preclude Award of Pre-Judgment Interest

The court granted plaintiff's motion for pre-judgment interest and rejected defendant's argument that plaintiff was not entitled to any interest because the jury awarded design patent profits under 35 U.S.C. § 289. "Under 35 U.S.C. § 284, a patent owner may recover 'damages adequate to compensate for the infringement . . . together with interest and costs as fixed by the court.' Under 35 U.S.C. § 289, a patent owner may recover an infringer’s 'total profit' made from the infringement. In this case, the jury awarded [plaintiff] $3,018,174 under § 289, the 'total profit' from [defendant's] infringement of the Design Patent. According to [defendant], prejudgment interest is unavailable to [plaintiff] because it can only be recovered under § 284. [Defendant's] position is without legal support and at odds with cases that have applied prejudgment interest to patent infringement awards for total profit under 35 U.S.C. § 289."

Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, 3-17-cv-01781 (CASD April 17, 2018, Order) (Hernandez, USDJ)

Thursday, April 19, 2018

Last Minute Trademark Infringement Claims Do Not "Ferryboat" Pendent Venue for Patent Infringement Claims

The court granted one defendant's alternative motion to transfer plaintiff's claims against it for improper venue and rejected plaintiff's attempt to establish pendent venue by asserting trademark claims in its amended complaint. "After the court requested supplemental briefing on where venue might be proper for the remaining defendants, [plaintiff] amended its complaint to add claims for federal and common-law trademark infringement. Based on those claims, [plaintiff] argues, the court should exercise pendent venue over all of [its] claims against [movant]. . . . Pendent venue is improper in this case. . . . The trademark infringement claims are to 'ferryboat in' venue for the underlying patent claim. [Plaintiff] waited six months to amend its complaint, and it did so only after the court requested additional briefing on where venue might be proper for all defendants. . . . Because the primary claim is for patent infringement and the patent venue statute contains the more specific provisions, pendent venue is not justified in this case."

Wet Sounds, Inc. v. Powerbass USA, Inc. et al, 4-17-cv-03258 (TXSD April 17, 2018, Order) (Rosenthal, USDJ)

Wednesday, April 18, 2018

Failure to Apportion Damages on Claim-by-Claim Basis Does Not Render Expert’s Opinion Unreliable

The court denied defendant's motion to exclude the testimony of plaintiffs' damages expert regarding a reasonable royalty for failing to apportion damages on a claim-by-claim basis. "Plaintiffs [argue] that [the expert's] opinion is economically justified because he opines that infringing any of the asserted patents would 'have the same economic effect as infringing all of them.' In other words, Plaintiffs lose the same profit whether one patent claim in one patent is infringed, or whether multiple claims in multiple patents are infringed. . . . [T]o the extent that Defendant quarrels with certain factual assumptions made by [the expert] in failing to apportion damages on a claim-by-claim basis, those disputes go to the weight that his testimony should be given. . . . [His] reasonable royalty opinion need not be excluded simply because he did not apportion damages on a claim-by-claim basis."

Integra LifeSciences Corporation et al v. HyperBranch Medical Technology, Inc., 1-15-cv-00819 (DED April 16, 2018, Order) (Burke, MJ)

Tuesday, April 17, 2018

Huawei Prohibited From Enforcing Chinese Injunctions Against Standard Essential Patents

The court granted defendant Samsung's motion for an antisuit injunction prohibiting plaintiff Huawei from enforcing injunction orders issued by a Chinese court and found that the Chinese injunction orders would frustrate domestic policies. "⁠[Defendant] argues that allowing [plaintiffs] to enforce the Shenzhen Court’s injunction would frustrate specific domestic policies against injunctive relief on [standard essential patents] and general public policies against anticompetitive conduct and breaches of contract. The bulk of precedent supports its position. . . . There is a risk of inconsistent judgments if I were to find that [plaintiff] is not entitled to seek injunctive relief for its SEPs. In addition, in the absence of an antisuit injunction, [defendant] faces the risk of significant harm, not just in China, but with impacts percolating around the world. The Chinese injunctions would likely force it to accept [plaintiffs'] licensing terms, before any court has an opportunity to adjudicate the parties' breach of contract claims. Under these circumstances, the Shenzhen Order 'interfere[s] with 'equitable considerations' by compromising the court’s ability to reach a just result in the case before it free of external pressure on [Samsung] to enter into a 'holdup' settlement before the litigation is complete.'"

Huawei Technologies Co., Ltd. et al v. Samsung Electronics Co., Ltd. et al, 3-16-cv-02787 (CAND April 13, 2018, Order) (Orrick, USDJ)

Monday, April 16, 2018

Change in Primary Reference Does Not Alter Scope of IPR Estoppel as to Non-Instituted Prior Art Combinations

The court denied in part plaintiff's motion in limine to exclude certain obviousness theories due to IPR estoppel. "⁠[F]or the combinations that Defendant tried to raise in the IPR, but which the PTAB did not institute, Defendant may pursue the combinations at trial. For those combinations 'A in view of B' on which the PTAB did not institute, I would regard that as reasonably raising 'B in view of A' also, and thus I reject Plaintiff's assertions to the contrary. On this point, Plaintiff's motion is denied."

Nox Medical ehf v. Natus Neurology Inc., 1-15-cv-00709 (DED April 12, 2018, Order) (Andrews, USDJ)

Friday, April 13, 2018

Questions of Fact Concerning Inventive Concept Preclude Dismissal for Invalidity Under 35 U.S.C. § 101

The court denied without prejudice defendant's motion to dismiss because plaintiff sufficiently pleaded that the asserted claims of its data organization patent encompassed patentable subject matter and that the claims did not lack an inventive concept. "Plaintiff contends that the [patent] solves a computer-specific problem by asking 'when a version should be deleted, not when it can be deleted.'. . . The statements in the specification, the allegations in the FAC and the language of Claim 8 . . . show that the FAC sufficiently alleges that deleting data in response to the combination of a particular time stamp and a measureable characteristic, 'thereby to increase a capacity of said memory' shows an inventive concept to the claims. Whether this recitation reflects a protectable, inventive concept is a question of fact."

Sound View Innovations, LLC v. Hulu, LLC, 2-17-cv-04146 (CACD April 11, 2018, Order) (Kronstadt, USDJ)

Thursday, April 12, 2018

$12.5 Million Infringement Verdict Remitted to $3.5 Million

Following a $12.5 million jury verdict for infringement of plaintiff's water system disinfectant patent, the court granted defendants' alternative motion for remittitur, subject to plaintiff's acceptance of a $3.5 million award, because the verdict was excessive. "Instead of apportioning its royalty claim based on a reasonable estimate of the value of the claimed technology, as is required, Plaintiff based its damages theory on the value to [defendants] of all of the chlorine dioxide it created. This theory inflated the damages Plaintiff was entitled to recover, because it included the chlorine dioxide [defendants] created through the use of a non-infringing and prior art technique. . . . [B]y adjusting the parties’ respective proposals by considering their methodological shortcomings, it is possible to ascertain the 'maximum amount sustainable by the proof.'. . . Balancing these two competing proposals, and considering the trial evidence in light of the apportionment analysis, the Court concludes that a remittitur to $3.5 million is appropriate. "

CH2O, Inc. v. Meras Engineering, Inc., 2-13-cv-08418 (CACD April 10, 2018, Order) (Kronstadt, USDJ)