A Day Late And A Dollar Short – Court Grants Summary Judgment On Laches Defense

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Order Granting Summary Judgment On Dropbox Laches Claims, Dropbox, Inc. v. Thru Inc., Case No. 15-cv-01741-EMC (Judge Edward M. Chen)

The proverb “[e]quity aids the vigilant, not the sleeping ones” aptly describes the rationale behind the defense of laches-i.e., the legal doctrine which states that a plaintiff who unjustifiably delays pursuing a claim may forfeit it. Intended to encourage the timely resolution of disputes and to avoid prejudice to defendants, laches can have dire consequences for plaintiffs who unreasonably delay bringing their claims. READ MORE

“Use in Commerce”: Look Before You Leap

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Order Granting Motion to Dismiss, With Leave to Amend, Stag’s Leap Wine Cellars, LLC, et al. v. Treasury Wine Estates Americas Co., 16-cv-04922-RS (Judge Richard Seeborg)

Plaintiffs in trademark cases may be tempted to file suit as early as possible to head off any potential consumer confusion. But as a recent order explains, plaintiffs need to keep in mind that the Lanham Act requires a “use in commerce” to maintain a complaint. Plaintiffs who fail to plead an adequate “use in commerce” could find themselves fighting (and losing) a motion to dismiss. READ MORE

Judge Whyte Retires

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The Northern District of California is a different court today than it was last week: Effective as of November 1, Senior District Judge Ronald M. Whyte has stepped down from the bench and assumed inactive status after serving over 24 years on the federal bench. Judge Whyte will leave a lasting mark on the Northern District and on intellectual property law more broadly based on his leadership in developing the patent local rules and many notable IP decisions, among other things. He has been widely recognized and praised by practitioners, academics, and other judges. As quoted in the court’s notice of his departure, Chief Judge Hamilton stated: READ MORE

When Strategy Backfires: A Plaintiff Pays the Price for Dumping Too Much Information Into a Trade Secret Disclosure

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Order Regarding Discovery Dispute Joint Report #1, VIA Tech., Inc. v. ASUS Computer Int’l et al., Case No. 14-cv-3586 (Magistrate Judge Howard Lloyd)

There is a tension in many IP cases between disclosure rules that require a plaintiff to identify its liability theories early in the case, and the understandable desire of the plaintiff to keep open its options for seeking recovery. Some plaintiffs respond to these tensions by stating their allegations in highly general terms, often leading defendants to ask for more specifics. Other plaintiffs attempt to overwhelm their opponents with detail, triggering calls by their opponents to narrow the relevant claims.  Sometimes such obfuscatory tactics work, but they can backfire too. That was the recent result in VIA Tech., Inc. v. ASUS Computer Int’l et al., in which a plaintiff seeking recovery for misappropriation of trade secrets was ordered not only to trim its case, but also to disclose the alleged trade secrets to the defendant (rather than only to defense counsel). READ MORE

Mind Reading Infringement Contentions

26september2016

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

Trying to Erase the Past: Judge Won’t Vacate Section 101 Ruling After Settlement

21sept2016

Order Denying Motion to Vacate Judgment, Protegrity USA, Inc. v. Netskope, Inc., Case No. 15-cv-02515-YGR (Judge Yvonne Gonzalez Rogers)

When parties settle a case, they usually want to put it all behind them and move on. But what if the court’s decisions still hang over their heads? Protegrity thought it could erase the past by agreeing with its opponent to have an undesirable ruling vacated, but it learned the hard way that such a result is outside the parties’ control. READ MORE

Piracy Pays (The IP Owner) – Judge Whyte Grants Motion for Default Judgment After Awarding Sanctions in Unauthorized Software Distribution Case

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Order Granting Motion for Default Judgment, Adobe Systems Inc. v. Software Tech, et al., Case No. 5:14-cv-02140-RMW (Judge Ronald M. Whyte)

Everyone in the software field (and probably every computer user) is familiar with Adobe and at least one of its products, including Acrobat and Photoshop. Popular software vendors like Adobe are often the victims of piracy and the unauthorized distribution of their products. As such, many have adopted policing measures like employing investigators to purchase products from third-party distributors to verify authenticity and proper licensing.  READ MORE

Prior Art Take 2: Finjan and Sophos Gear up for a Second Battle on Whether Prior Art Was Publicly Available

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Order Denying Finjan, Inc.’s Motion for Summary Judgment, Finjan, Inc. v. Sophos, Inc., Case No. 14-cv-1197 (Judge William Orrick)

In a battle that likely felt like déjà vu for the parties, Finjan for the second time argued its patents were valid over Sophos’s prior art because Sophos failed to produce sufficient evidence of public availability. The first time was in a 2010 Delaware action, when Finjan unsuccessfully made this same argument with respect to similar patents and similar prior art. Those patents were ultimately held invalid based on the prior art. In the present case, Sophos’s invalidity case survived yet again. But Sophos could have had a more resounding victory had it adequately disclosed all of its prior art earlier in the case. READ MORE

Daubert Exclusion for Double Counting

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Order Granting in Part Daubert Motion, Finjan, Inc. v. Sophos, Inc., Case No. 14-cv-1197 (Judge William Orrick)

Yogi Berra once said that “baseball is 90% mental; the other half is physical.” The humor in this statement, of course, is that Yogi’s percentages add up to more than 100%, which is impossible. The same idea applies to patent damages—a patent expert cannot double-count the value of patented features, especially when doing so might lead to damages greater than 100% of a product’s overall value. It sounds easy enough, but applying this rule can be difficult in multi-patent cases. A recent opinion from Judge Orrick sheds light on how to value patented features where multiple patents purport to cover similar features. READ MORE

Section 101 Blocks Caller ID Patent

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Order Granting Judgment on the Pleadings, Whitepages, Inc. v. Isaacs, et al., Case No. 16-cv-00175-RS (Judge Richard Seeborg)

Litigants continue to use Alice and its progeny to cull the ranks of patents asserted in the Northern District.  In Whitepages v. Isaacs, Judge Seeborg considered a patent that purported to bring caller ID to mobile phones and the internet.  His opinion holding the patent invalid mentions factors that are becoming familiar hallmarks of patents vulnerable to § 101 challenges: reciting longstanding business practices, invoking industry-standard technology, and requiring no more than generic use of computers. READ MORE