Save Me Some Money: Paring Down Costs in Patent Litigation

Order Re Pilot Motions for Summary Judgment, Comcast Cable Communications, LLC v. OpenTV, Inc. et. al., N.D. Cal. (August 4, 2017) (Judge William Alsup)

It’s no secret that patent litigation is expensive—especially when multiple patents and a multitude of claims are in play.  In 2015, the American Intellectual Property Law Association estimated the median cost of patent litigation, through trial, ranged from $600,000 in lawsuits with less than $1 Million at risk to $5 Million in lawsuits with more than $ 25 Million at risk.  Given this expense and the complexity of these cases, it’s not surprising that courts and parties have sought ways to minimize the resources consumed by patent litigation through various narrowing tools particular to patent lawsuits, including by limiting the number of claims and/or patents litigated in a given lawsuit. READ MORE

“Weight” a Minute – Upon Further Review Those Claims Are Not Indefinite

Commission Opinion, Certain UV Curable Coatings For Optical Fibers, and Products Containing the Same, Inv. No. 337-TA-1031 (August 11, 2017) (ITC)

We previously posted – “Weight” a Minute- Those Claims Are Indefinite – about Administrative Law Judge (“ALJ”) MaryJoan McNamara’s Initial Determination (“ID”), finding claims of U.S. Patent No. 7,706,659 (“the ’659 patent”) indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA).  The United States International Trade Commission (“ITC”) recently reversed and vacated that ID.  The ’659 patent is entitled “Coated Optical Fiber” and claims primary coating compositions and primary coatings.

Complainants DSM Desotech, Inc. and DSM IP Assets B.V. petitioned the Commission to review the ID; Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) and the Office of Unfair Import Investigations opposed the petition.  In its petition for review, DSM argued that the ALJ’s construction of the disputed claim term referred to an “average molecular weight” and that term was not indefinite. READ MORE

From Northern California to the Entire IP Landscape: Orrick’s New Blog

We’re excited to announce the recent transition of Orrick’s former NorCal IP blog into its new iteration – IP Landscape (Today’s News, Tomorrow’s Strategy)!  Our new blog is more comprehensive in scope and will focus on a variety of intellectual property issues and events, both national and international, that are likely to affect the bottom line for many technology-driven enterprises. Through our blog, you’ll find information and updates to help drive business strategies.

We hope this new blog will be an entertaining and useful resource for those interested in the latest case law, happenings and events that affect the entire landscape of intellectual property. We’ll be covering patent, trademark and copyright rulings in what might be described as the most “popular” venues, such as the Northern and Central Districts of California, the Eastern District of Texas, the District of Delaware, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). We will also be reporting on other IP-related and newsworthy events, such as significant developments in copyright, trademark, antitrust, entertainment and trade secret litigation, not to mention legislative changes, local networking events, IP licensing issues and other hot topics of interest. READ MORE

Sneaker Wars: Adidas Defeats Summary-Judgment Motion That Claimed Stan Smith Shoe Design Lacks Distinctiveness

Order Granting in Part and Denying in Part Motion for Summary Judgment,  Adidas America Inc. et al. v. Skechers USA Inc., D. Or. (August 3, 2017) (Judge Marco Hernández)

The ever-increasing popularity (and collectability) of athletic shoes seems to have brought along with it an increase in the amount of litigation involving trade dress protection for the look of some of the more popular shoe designs. Last year, the International Trade Commission found that Converse’s trademark rights in the design of the Chuck Taylor sneaker were invalid due to widespread use of similar designs by competitors.  That decision is now the subject of a closely watched appeal at the Federal Circuit.  More recently, in a dispute between adidas and Skechers, a court found that factual issues prevented entry of summary judgment regarding whether the look of adidas’ Stan Smith shoe design is generic and whether it has acquired secondary meaning. READ MORE

When It Comes to Domestic Industry’s Economic Prong, Numbers Speak Louder Than Words

Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond, Certain Radio Frequency Identification (“RFID”) Products and Components Thereof, ITC Inv. No. 337-TA-979 (June 22, 2017) (ALJ MaryJoan McNamara)

In a recent Initial Determination, Administrative Law Judge (“ALJ”) MaryJoan McNamara ruled against Complainant Neology, Inc., finding no violation on multiple grounds.  This post focuses on ALJ McNamara’s analysis of the economic prong of the domestic industry requirement.  Her decision is notable because of the number and diversity of economic prong theories Neology advanced, and the ALJ’s focus on the presence or absence of quantitative evidence supporting those theories, further cementing the effect of the Federal Circuit’s 2015 Lelo v. ITC decision.

Neology tried two patents: Nos. 8,325,044 (“the ’044 patent”) and 8,587,436 (“the ’436 patent).  Both were directed to RFID technology, with the ’044 patent focusing on RFID tags, and the ’436 patent focusing on RFID readers.  Respondents did not contest that Neology satisfied the economic prong for the ’044 patent.  Neology had manufactured millions of RFID tags at its 14,000-square-foot facility in California and invested significantly in employment there. READ MORE

Fictional, but Protectable: Court Nixes “The Krusty Krab” Restaurant on Trademark Grounds

Summary Judgment Order, Viacom International Inc. v. IJR Capital Investments, LLC, S.D. Tex. (January 11, 2017) (Judge Gray Miller) 

The Emmy nominations have been announced, and the fall television season is just weeks away. Accordingly, we thought it would be fun to revisit an interesting trademark ruling from earlier this year that still seems timely given these events.

With the rise of social media, mobile phone applications and viral marketing, cross-overs between the real world and the fictional world of T.V. shows, movies and video games, are becoming increasingly commonplace. To promote the upcoming season of its popular T.V. show Better Call Saul, for example, AMC created actual Los Pollos Hermanos fast-food restaurants in cities across the U.S.  Similarly, in the summer of 2006, ABC and the creators of Lost created an alternative reality game called The Lost Experience that included such disparate activities as advertisements of fictional companies on a variety of ABC programs and advertising sponsor websites, the publication under a pseudonym of a best-selling mystery novel called “Bad Twin,” a live disruption at San Diego’s Comic-Con by a fictional protagonist named Rachel Blake trying to unravel some of Lost’s mysteries, and the world-wide sale at special locations of fictional “Apollo” candy bars that had been featured in the show.  As these examples reflect, the names and likeliness of fictional locations, objects, and characters can represent significant and valuable components of a company’s intellectual property rights. READ MORE

“Weight” a Minute – Those Claims Are Indefinite!

Initial Determination Granting MUV’s Motion for Summary Determination That Claims 16-18, 21, and 30 of U.S. Patent No. 7,076,659 are Invalid under 35 U.S.C. § 112, Certain UV Curable Coatings For Optical Fibers, and Products Containing the Same, ITC Inv. No. 337-TA-1031 (July 6, 2017) (ALJ MaryJoan McNamara)

In a rare move for the ITC, Administrative Law Judge (“ALJ”) MaryJoan McNamara granted a motion for summary determination by Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) finding that several claims of U.S. Patent No. 7,706,659 (“the ’659 patent”) are indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA). The ’659 patent is entitled “Coated Optical Fiber” and claims primary coating compositions and primary coatings.

This decision is significant because it is relatively unusual for ALJs to grant motions for summary determination on technical issues. Section 337 investigations move very quickly and motions for summary determination are often filed less than three months before the start of the hearing, so there is often little efficiency to be gained from granting such motions. READ MORE

District Courts Continue to Split on Whether TC Heartland Provides Grounds to Raise New Venue Challenges

Order Granting Leave to Amend Answer and Granting Transfer of Venue, OptoLum, Inc. v. Cree, Inc., D. Ariz. (July 24, 2017) (Judge Douglas Rayes)

Since the Supreme Court’s decision in TC Heartland, many defendants in earlier-filed cases have tested whether they can raise an improper venue defense, or waived the issue by failing to raise it in their answers or through later litigation conduct. A majority of district courts to consider the issue have found that TC Heartland did not change the law so as to qualify as an exception to the waiver doctrine, but some jurisdictions have taken the opposite view. (A chart of exemplary cases is included below.) Judge Rayes’ recent decision in OptoLum v. Cree leads the District of Arizona into the minority group and suggests that the question will continue to be addressed district by district.

Defendant Cree was in a position that may sound familiar to many pre-TC Heartland defendants: At the start of the case, Cree had moved to dismiss under Rule 12(b)(6) and for transfer under 28 U.S.C. § 1404. After the court dismissed certain claims and denied transfer, Cree filed an answer admitting that venue is proper. In light of TC Heartland, however, Cree moved to amend its answer to deny proper venue and to dismiss on that basis. READ MORE

Beware of Firing Your Own Witness Prior to Trial

Orders Granting Certain Motions to Exclude Testimony, Greatbatch Ltd. v. AVX Corp. et al., D. Del. (July 20, 2017) (Judge Leonard P. Stark)

Judge Leonard Stark recently decided several pretrial motions in this medical device patent infringement suit leading up to next month’s jury trial. In the process, he reiterated certain standards for allowing witnesses to testify at trial that future parties should keep in mind.

In one Order, Judge Stark granted Plaintiff Greatbatch’s motion to preclude Defendant AVX from presenting at trial the testimony of a former employee through his deposition. That former employee—Dr. Panlener—had been an employee-turned-consultant of AVX and testified at length in deposition. However, AVX fired him after his depositions, and Dr. Panlener thus became unavailable to testify live at trial. Greatbatch moved to exclude his deposition testimony at trial. Judge Stark granted the motion, finding that it would be unfair to permit Dr. Panlener’s testimony to be used at trial since Greatbatch “has had no opportunity to question him regarding his termination” by AVX. Judge Stark did not ultimately conclude whether AVX “procured” Dr. Panlener’s absence by terminating the relationship, which, under the Federal Rules, would prevent usage of his testimony. But he disagreed with AVX’s contention that it is “entitled” under the Rules to present the deposition testimony and kept it out based on “the Court’s discretion to manage the trial in a manner that is fair to both sides and consistent with all other applicable rules.” READ MORE

STRONGER Patents Act of 2017 Likely Too Heavy Lift for Congress

It may be late July, but the impending Congressional recess has not lessened potential interest by lawmakers in patent reform. On June 21, 2017, Sen. Christopher Coons (D-Delaware) introduced Senate Bill 1390, entitled the Support Technology and Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act of 2017. Sen. Tom Cotton (R- Arkansas), Sen. Richard Durbin (D- Illinois), and Sen. Mazie Hirono (D-Hawaii) cosponsored the bipartisan bill. The Bill’s stated purpose is “to strengthen the position of the United States as the world’s leading innovator by amending title 35, United States Code, to protect the property rights of the inventors that grow the country’s economy.” To accomplish this goal, the Senate Bill proposes to amend many of the patent law core concepts introduced by the America Invents Act of 2011 (AIA) and developed in the Courts in the past 20 years by, among other mechanisms, making patents more difficult to challenge in post-grant proceedings and overturning multiple Supreme Court decisions regarding injunctive relief and standards for induced infringement. The authors of the Bill, citing the fact that the U.S. Chamber of Congress in 2017 ranked the U.S. Patent System as being only the 10th strongest in the world after having ranked it first in every prior year, contend that unintended consequences of the AIA’s reforms and recent rulings from the Supreme Court have weakened the value of patents to such a degree that further legislative action is warranted. READ MORE