Rules & Legislation

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

Full Disclosure: The Northern District Amends Its Local Rules to Require Early Damages-Related Disclosures

N.D. Cal. Patent Local Rules

Patent litigants in the Northern District of California will have something new to argue over following the Court’s approval in January of Patent Local Rule amendments that impose damages-related disclosure requirements. The Court also tweaked a few other patent local rules. READ MORE

A Defendant’s Understanding of Infringement Contentions Is Not Enough To Comply With The Patent Local Rules

Order Granting Motion to Strike, Staying Discovery, and Granting Leave to Amend, GeoVector Corporation v. Samsung Electronics Co. Ltd, Case No. 16-cv02463-WHO (Judge William H. Orrick)

Albert Einstein once noted:  “Any fool can know.  The point is to understand.”  That logic was recently applied in a patent infringement case brought by GeoVector Corporation against Samsung.  GeoVector learned that the Courts of the Northern District will not accept the sufficiency of infringement contentions that the Court itself finds inscrutable and unintelligible merely because the defendant has supposedly “demonstrated an understanding” of the plaintiff’s theories. READ MORE

Mind Reading Infringement Contentions

Order Regarding Discovery Letter Briefs, InteraXon Inc. v. NeuroTek, LLC, Case No. 15-cv-05290 (Magistrate Judge Kandis A. Westmore)

InteraXon, maker of a mind reading meditation aid, is not required to read the patentee’s mind to figure out his infringement contentions.

Licensing negotiations between InteraXon and defendants fell apart sometime in the spring of 2015, prompting InteraXon to file a declaratory judgment suit for non-infringement and invalidity against defendants NeuroTek, LLC, MindWaves, Ltd. and Dr. Jonathan Cowan, an inventor of U.S. Patent No. 5,983,129. Dr. Cowan then filed a counterclaim for infringement. READ MORE

No Good Cause? No Amendment.

Order Denying Defendant’s Motion for Leave to Supplement Invalidity Contentions, MLC Intellectual Property, LLC v. Micron Tech., Inc., Case No. 14-cv-03657 (Judge Susan Illston)

In the Northern District of California, as with other districts, invalidity contentions are meant to crystalize theories early in litigation and prevent the “shifting sands approach to claim construction.” Once disclosed, those invalidity contentions may only be amended “by order of the Court upon a timely showing of good cause.” Patent L.R. 3-6. Defendant Micron failed to demonstrate good cause when it recently sought to amend its January 2015 invalidity contentions to add (1) two well-known textbooks from 1973 and 1990 and (2) two of MLC’s non-asserted, expired patents.  Judge Illston thus denied Micron’s motion in its entirety. READ MORE

No “Last Resort” Striking of Undisclosed Expert Opinion

Order Granting-in-Part Motion to Strike Declaration of Miguel Gomez, VIA Techs., Inc. et al. v. ASUS Computer Int’l, et al., Case No. 14-cv-03586 (Magistrate Judge Paul Grewal)

In a recent order in VIA Techs., Inc. v. ASUS Computer Int’l, Magistrate Judge Grewal Court found VIA’s expert disclosures insufficient under the “straightforward” claim construction process of the Northern District’s Patent Local Rules. Despite VIA’s failure to strictly comply with the rules, the Court rejected the “last resort” penalty of striking the expert’s testimony altogether, and instead granted ASUS additional deposition time to inquire into his opinions. In so ruling, the Court considered the “relative banality” of the undisclosed opinions and the weeks remaining before the claim construction hearing. READ MORE

Wise People Are Diligent

Johnstech Int. Corp. v. JF Microtechnology SDN BHD, Case No. 14-cv-02864-JD (Judge James Donato)

Buddha said, “To be idle is a short road to death and to be diligent is a way of life; foolish people are idle, wise people are diligent.” This is a lesson Judge James Donato bestowed on the parties in Johnstech Int. Corp. v. JF Microtechnology SDN BHD, when he denied, in part, JF Microtechnology SDN BHD’s (“JFM”) motion to amend its invalidity contentions after the close of fact discovery to correct a clerical error and to add a new prior art reference and invalidity theories. Judge Donato allowed the clerical correction but denied JFM’s remaining amendments as JFM “failed to manifest the required degree of diligence.” READ MORE

RECAPPING THE NEW RULES – Amendments to the Federal Rules of Civil Procedure Are Effective

As we posted earlier this month, amendments to the Federal Rules of Civil Procedure (“Rules”) are effective December 1, 2015. The amendments apply to newly filed cases, as well as pending cases “insofar as just and practicable.” The amendments are expected to impact numerous aspects of litigation including service of process, discovery (including electronically stored information (“ESI”)), default judgments, and possibly pleadings requirements in patent cases. The following is a summary of changes to the Rules: READ MORE

A BETTER WAY TO LITIGATE? – The December 1, 2015 Amendments To The Federal Rules Of Civil Procedure Aim For More Efficiency And Less Delay

Civil litigation can sometimes be less than civil or efficient.  Indeed, some parties have been found to engage in “abusive” discovery practices or dilatory tactics intended to prolong and increase the costs of litigation. This has not gone unnoticed by courts, parties, and commentators, including the Advisory Committee on Rules of Civil Procedure (the “Committee”). In August 2013, the Committee proposed amendments to the Federal Rules of Civil Procedure (“the Rules”) aimed at curbing certain abusive practices, amongst other things. The amendments include changes to Rules 1, 4, 16, 26, 30, 31, 33, 34, 36, and 37, and would impact numerous aspects of litigation including service of process, discovery (including electronically stored information (“ESI”)), default judgments, and possibly pleadings requirements.  READ MORE

January/February Recap

It’s interesting to look at the first two months of 2015 against the backdrop of the previous year.  Judge Illston’s orders, for example, suggest that one should not expect much to change in ND Cal judges’ willingness to invalidate patents under Alice (specifically, in her case, a patent for storing “link relationships” between “document objects” in a network) and to stay cases pending IPR (especially when a large number of patents and products are involved).  Magistrate Judge Grewal also followed an approach that we’ve seen before, ruling that both sides in a discovery dispute should make foreign-based party witnesses available for deposition in the Northern District.  Typo Products found itself haunted by the past when Judge Orrick awarded $1 million in sanctions to Blackberry for Typo’s violation of a preliminary injunction.  Meanwhile, Rep. Goodlatte, R-VA, hoped to shake off past failures by reintroducing a version of the Innovation Act bill that died in the Senate last May.

February 2015 was also trial month for the patent litigation between Open Text and Box.  In the preceding weeks, Judge Donato issued several noteworthy decisions, including a Rule 12(c) judgment of invalidity of claims from 5 patents under Alice and a Daubert order excluding the damages opinions of plaintiff Open Text’s expert.  Notwithstanding Open Text’s lack of expert testimony on a reasonable royalty, the jury awarded Open Text $4.9 million in a lump sum (Law360, subscription required).

Over at Patently-O, guest author Andres Sawicki discusses the role of intellectual property in the uniquely Silicon Valley practice of “acqui-hires.” And if all that isn’t enough recap for you, why not revisit our most popular blog posts from 2014?