Tuesday, September 19, 2017

Delaware Court Congestion Favors Transfer of Venue

The court granted defendant's motion to transfer venue from the District of Delaware to the Northern District of California and sua sponte raised the issue of court congestion. "While neither party addresses this factor, we do because this District is now reduced to two active district court judges with judges from other busy districts sitting as visiting judges to help address the busy docket until new district court judges are sworn. The Northern District of California has a full bench of talented district court judges experienced in patent litigation. . . . [T]his District is ranked 17th in the United States for weighted filings per judge (based on four judges as of March 31, 2017) while the Northern District of California is ranked 23rd based on fourteen judges as of March 31, 2017. This District is now reduced to two active judges, only increasing the number of cases on each judge's docket here. . . . Given the limited resources, we find it difficult to justly allocate judicial resources in this District to resolve a dispute between California and North Dakota citizens where there is no connection here other than [defendant's] single retail location."

Prowire LLC v. Apple Inc., 1-17-cv-00223 (DED September 15, 2017, Order) (Kearney, USDJ)

Monday, September 18, 2017

Laches Remains Viable Defense to Claim for Permanent Injunctive Relief

The court denied plaintiff's motion for judgment on the pleadings that defendants could not pursue a laches defense against plaintiff's claim for patent injunctive relief. "The Supreme Court recently held [in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 137 S.Ct. 954, 960 (2017)] that laches does not bar recovery of damages incurred within the statute of limitations in patent cases. In light of that holding, the parties dispute whether the defense of laches may ever bar injunctive relief. . . . [I]n SCA Hygiene, the Supreme Court explicitly declined to address the application of laches to equitable defenses and the portion of the Federal Circuit’s opinion addressing the issue. . . . The [Federal Circuit] concluded that 'laches in combination with the [eBay v. MercExchange, LLC, 547 U.S. 388, 391(2006)] factors may in some circumstances counsel against an injunction.'. . . The Federal Circuit merely articulates that a plaintiff’s delay in bringing suit is relevant to whether equitable relief is warranted. . . . [T]he Supreme Court has not held that laches is never a bar to injunctive relief, but rather that it only bars such relief when the delay is of 'sufficient magnitude.' Therefore, laches is still a viable defense to [plaintiff's] claims."

Spitz Technologies Corporation v. Nobel Biocare USA, LLC et al, 8-17-cv-00660 (CACD September 11, 2017, Order) (Selna, USDJ)

Friday, September 15, 2017

Continued Willful Infringement Justifies 1.5X Multiplier for Ongoing Royalty Award​

The court granted in part plaintiff's motion for an ongoing royalty and enhanced the jury's royalty rate by one and half times for defendants' willful infringement. "[Plaintiff] argues the jury’s verdict did not include damages for Defendants’ willful infringement. Thus, [plaintiff] contends enhancement for Defendants’ continued willful infringement is proper in the ongoing royalty context when using the jury’s non-willfulness rate as a starting point. The Court agrees. . . . [I]t is undisputed that, since the jury verdict, Defendants have continued to infringe the patents-in-suit. . . . [T]he Court does not find that trebling the jury-determined rate to be appropriate. [Plaintiff] has not addressed any circumstances that would relate to the egregiousness of Defendants’ conduct after the jury’s verdict. Nevertheless, after balancing the [Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992)] factors, the Court considers Defendants’ continued infringement to be unreasonable, deliberate and willful in nature. As such, the Court enhances the jury-determined rate by 1.5 times."

Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd. et al, 4-14-cv-00371 (TXED September 13, 2017, Order) (Mazzant, USDJ)

Thursday, September 14, 2017

Public Interest in Enhancing Safety Favors Permanent Injunction​

Following a jury trial, the court granted plaintiff's motion for a permanent injunction and rejected defendant's argument that the public interest weighed against an injunction of its flame barrier products. "Defendant argues that an injunction would harm the public interest because the public is better off with a multiple-supplier market for products affecting public safety. Defendant provides some evidence that Plaintiff may have had supply issues with its product. . . . Overall, I am not concerned with Plaintiff's ability to supply its product. Even if there were concerns, it could still be appropriate to award an injunction. It is also the case that 'copies of patented inventions have the effect of inhibiting innovation and incentive.' Guarding against such copies could foster the development of more technologies aimed at enhancing public safety."

EI du Pont de Nemours and Company v. Unifrax I LLC, 1-14-cv-01250 (DED September 12, 2017, Order) (Andrews, USDJ)

Wednesday, September 13, 2017

Frequent ANDA Filer May Have Regular and Established Place of Business in Delaware​

The court denied without prejudice defendant's motion to dismiss plaintiffs' ANDA infringement action for improper venue pending discovery on whether defendant had a regular and established place of business in the forum. "[Defendant] is part of [a] family of companies which have a nationwide and global footprint. . . . Within the [company] family, [defendant] appears to serve the role of securing regulatory approval for many of [their] generic products. . . . [I]t appears that a key to [defendant's] success in the generic drug business is its constant involvement in Hatch-Waxman litigation. Historically, the largest number of Hatch-Waxman cases each year are filed in the District of Delaware. . . . [Defendant], as a frequent ANDA filer, appears in front of this Court with regularity for the purpose of getting its generic drugs on the market, and when that litigation concludes in a way that is favorable for [defendant], those generic drugs are distributed to and used by Delaware residents through a distribution network that has been established for that purpose. In the Court's view, this business reality is a pertinent consideration in assessing whether [defendant] has a regular and established place of business in Delaware. . . . While [defendant] has been unable to this point to identify a 'fixed physical presence in the sense of a formal office or store' that [defendant] maintains in Delaware, this is not required. . . . [N]o relationship between a defendant's acts of infringement and its regular and established place of business is necessary to satisfy § 1400(b)."

Bristol-Myers Squibb Company et al v. Mylan Pharmaceuticals, Inc., 1-17-cv-00379 (DED September 11, 2017, Order) (Stark, USDJ)

Tuesday, September 12, 2017

Arguments in IPR Result in Prosecution Disclaimer Estopping Infringement Claim​

The magistrate judge recommended granting defendant's motion for summary judgment that plaintiff's infringement claims were estopped due to plaintiff's prosecution disclaimer in its response to intervenors' petition for inter partes review. "Regardless of whether an examiner or panel agreed with the patentee’s statement, the statement itself may result in disclaimer because it constitutes a representation to the public about the scope of the patent. [Plaintiff's] statements to the Patent Office in its preliminary response were clear and unmistakable. [Plaintiff] repeatedly emphasized that the TR 23.809 standards document does not describe a GGSN that preserves the PDP context after receiving an error indication because the GGSN marks the PDP context as invalid. . . . [Plaintiff's expert's] central thesis is that by complying with the TS 23.060 standard, [defendant's] network infringes. The problem is that the standard, and by extension [defendant's] network, includes a GGSN that marks the PDP context invalid."

Huawei Technologies Co. Ltd v. T-Mobile US, Inc. et al, 2-16-cv-00052 (TXED September 9, 2017, Order) (Payne, MJ)

Monday, September 11, 2017

Patentee's Threat of Litigation After PTO Warning of Likely Invalidity Justifies Award of Attorney Fees Under 35 U.S.C. § 285

​ Following judgment on the pleadings of lack of patentable subject matter, the court granted a declaratory judgment plaintiff's motion for attorney fees under 35 U.S.C. § 285 because defendant threatened litigation after the PTO asserted, during a reexamination appeal, that the patent claims were likely invalid under 35 U.S.C. § 101. "[T]he lone fact that a patent owner asserted patent claims in litigation that ultimately were found to be invalid under § 101 is typically insufficient for finding a case exceptional. But, this case does stand out from the typical case in which claims of a patent were invalidated by a court. That is because [defendant] was specifically warned by the USPTO, in [a Federal Circuit appellate brief in connection with a reexamination appeal], that it looked very unlikely that these claims were directed toward patentable subject matter and very likely that the claims were invalid. The USPTO did not directly address this subject matter eligibility issue in that opinion because doing so would have been outside the authority of the USPTO for that particular proceeding. . . . Instead of addressing this issue, after the USPTO created a serious cloud on the of the claims, [defendant] ignored it and continued to assert its patent against companies like [plaintiff]."

SAP America Inc v. InvestPic LLC, 3-16-cv-02689 (TXND September 7, 2017, Order) (Kinkeade, USDJ)