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

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

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

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

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

“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?

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

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

Simple Beats Precise: No Need for Carve-Outs Before Using Previously Produced Discovery

Discovery Order, Richtek Technology Corp. v.. uPI Semiconductor Corp., et al., Case No. 09-cv-05659-WHA (Magistrate Judge Laurel Beeler)

Here is a riddle for you: when can an interest in reducing cost and burden justify broader discovery? The answer: when documents previously produced in a related case are at issue. That’s what Magistrate Judge Beeler concluded in Richtek Technology Corp. v. uPI Semiconductor Corp., in ruling that documents produced in an ITC investigation would be treated as if produced in the district court patent case, while simultaneously rejecting defendant uPI’s request to carve out trade secret discovery and discovery about non-accused products. Read More

District Courts Won’t Wait Forever: Stay Lifted Pending Rehearing of IPR Denial

Order Lifting Stay, MLC Intellectual Property, LLC v. Micron Technology, Inc., Case No. 14-cv-03657-SI (Judge Susan Illston)

As we have reported in the past, judges in the Northern District are generally willing to stay a case pending IPR, and sometimes even before the PTAB decides whether to institute review. But Judge Illston’s order in MLC v. Micron confirms there are limits. At least when an IPR petition is initially denied, and a decision on rehearing is nowhere in sight, the scales may tip in favor of lifting an existing stay and letting the district court action proceed, notwithstanding unfinished business before the PTAB. Read More

Defendants in Default: Motions for Default Judgment Must Demonstrate Infringement

Order Staying Case In Part And Denying Motion For Default Judgement Without Prejudice. e. Digital Corp. v. Ivideon LLC, et al. Case No. 15-cv-00691-JST (Judge Jon S. Tigar)

In a recent opinion, Judge Jon Tigar sua sponte stayed the vast majority of a patent infringement case pending the outcome of inter partes review proceedings, and also denied a motion for default judgment that was predicated upon the Defendants’ alleged infringement of two claims not subject to the ongoing proceedings before the Patent Trial and Appeal Board (“PTAB”). The opinion underscores that plaintiffs do not get a “free pass” in proving infringement, but rather must fully establish the predicate bases of a patent claim, even where a defendant has failed to make an appearance. Read More