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

No Good Cause? No Amendment.

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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

Insurance Policies and IP: Don’t Exclude a Closer Look Because of an IP Exclusion Clause

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Courts often narrowly interpret insurance policy exclusions in favor of policyholders. Coverage may not always be available for many patent and other IP claims, but companies facing IP-related claims should not automatically assume that their commercial general liability policies will not provide coverage. A recent decision in the Northern District of California from a leading voice on intellectual property suggests taking a closer look at the allegations and the policy, as intellectual property exclusions in CGL policies may not necessarily apply in certain IP disputes. You can read a full discussion of the decision by our colleagues Darren Teshima and Harry Moren at Orrick’s Policyholder Insider blog.

Separated at the District Court, Possibly Reunited on Appeal

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Defendants Are Reunited Notwithstanding Plaintiff’s Attempts To Keep Them Apart:  Order Denying Plaintiff’s Motion to Stay and Granting Defendant’s Motion for Summary Judgment, Emmanuel Gonzalez v. Tagged, Inc., Case No. 16-cv-00574 (Judge Yvonne Gonzalez Rogers)

“We came into the world like brother and brother,
And now let’s go hand in hand, not one before another.”

William Shakespeare, The Comedy of Errors

In Shakespeare’s The Comedy of Errors, twin brothers are separated at birth and reunited under amusing and confused circumstances many years later. READ MORE

A Time For Everything: Defendant Can Add To Invalidity Contentions After The Lifting Of A Years-Long Stay

15Jun16

Order Granting Leave to Amend Invalidity Contentions, Richtek Technology Corp. v.. uPI Semiconductor Corp., et al., Case No. 09-cv-05659-WHA (Judge William Alsup)

Much can change procedurally while a patent case is stayed, especially if the parties continue to litigate the patent in other jurisdictions.  In Richtek, the parties returned to district court after the conclusion of reexamination proceedings and two related ITC investigations.  Defendant uPI moved to amend its invalidity contentions, originally served in December 2010, to account for claim interpretations that the plaintiff Richtek disclosed during reexamination.  Judge Alsup permitted the amendment, which added new prior art references, while distinguishing a decision he had rendered a month earlier which precluded Richtek from adding new accused products. READ MORE

No “Last Resort” Striking of Undisclosed Expert Opinion

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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

The “Pot, Kettle, Black” Doctrine

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“Oho!” said the pot to the kettle;
“You are dirty and ugly and black!
Sure no one would think you were metal,
Except when you’re given a crack.”

-Anonymous (excerpt)

The adage “the pot calling the kettle black”—referring to someone who is guilty of the very thing that he accuses another of—is a bit of equitable common sense that practitioners ought not to forget. READ MORE

Motion to Dismiss Granted: What Are The Facts?

Apr 22

Order Granting Motion to Dismiss, Bluestone Innovations LLC v. Bulbrite Industries, Inc., Case No. 15-cv-5478 (Judge Phyllis Hamilton)

Before the recent amendment to the Federal Rules abolishing form complaints, it was rare to see parties file motions to dismiss in patent infringement cases, and even rarer to see them granted. But Judge Hamilton recently granted such a motion that defendant Bulbrite filed directed at allegations in a complaint that was not subject to those recent amendments. And now, plaintiff Bluestone must amend its complaint to add more specificity concerning its infringement allegations, notwithstanding its arguments that it provided the level of notice required to establish its claims of infringement that existed under applicable law prior to December 2015. READ MORE

Bench Trial Findings Come Back to Bite Finjan

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Collateral Estoppel Results In Summary Judgment On Priority Date, Finjan, Inc. v. Proofpoint, Inc., et al., Case No. 13-cv-05808 (Judge Haywood Stirling Gilliam, Jr.)

How does an accused infringer use a patentee’s prior $40 million infringement win against the patentee? Defendant Proofpoint bolstered its invalidity position by successfully moving to limit patentee Finjan to a later priority date for one of its patents, based on the findings from a related bench trial that otherwise produced a favorable ruling for Finjan. READ MORE