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Posts by: Cam Phan

No Junior Associates, No Hearing: Supplementation Granted


Illumina, Inc. et al v. Qiagen N.V. et al, Case No. 16-02788 (Judge William Alsup) (November 29, 2016)

In an effort to promote judicial efficiency, Courts often allow a plaintiff to supplement its complaint if doing so would settle the parties’ controversies in one action. This is the rationale Judge Alsup applied in Illumina, Inc. et al v. Qiagen N.V. et al, Case No. 16-02788 (N.D. Cal. Nov. 29, 2016) when allowing plaintiff Illumina to amend its complaint to add a newly issued patent that was granted after plaintiff filed its complaint. Judge Alsup listed several efficiency-related factors favoring supplementation: (1) the supplemental claims accuse the very same product already in the action; (2) the newly issued patent has narrower claims, so allowing them in this action would avoid duplicating some of the issues already in the case; (3) even though there are new issues associated with the supplemental claims, there is no evidence that these new issues would be so burdensome as to delay the current schedule. Thus, because of the significant commonalities between the two patents, the Court decided that it would serve the purpose of judicial efficiency to enable the parties to litigate both patents in the same case.


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

An Ounce of Prevention: Patent Claiming Anti-Malware Software Is Not Abstract

Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-03999 (11.20.15 Judge Beth Freeman)

It looks like the battle between non-practicing entity Finjan and defendant Blue Coat Systems is coming to an end, at least in the Northern District. Since the last time we posted about this case (here and here), the jury has found Blue Coast Systems infringed five of the asserted patents and awarded nearly $40M in damages. READ MORE

No Amendments and No Stay

Adaptix v. ZTE Corporation, et al. (Magistrate Grewal)

Magistrate Grewal recently issued two orders in related cases between plaintiff Adaptix and various defendants.

In the first order, he denied plaintiff’s request to amend its preliminary infringement contentions to reassert a theory of contributory infringement and add four additional accused products. Plaintiff argued that it learned of new information from a third-party deposition that gave rise to its contributory infringement theory and was diligent because it waited only 18 days after the deposition to seek amendment. READ MORE

Don’t Get Personal

Xilinx, Inc. v. Papst Licensing GMBH & Co. KG (Judge Lucy Koh) (July 9, 2015)

The Supreme Court’s 2014 ruling in Daimler v. Bauman raised the bar to establish personal jurisdiction over a defendant. Daimler has made it substantially more difficult for a foreign corporation to be haled into US courts. While Daimler dealt specifically with the issue of whether the acts of a US-based subsidiary should be imputed to the parent foreign corporation for personal jurisdiction purposes, it generally found that a court only has general personal jurisdiction if the foreign defendant’s affiliations with the forum state are “so continuous and systemic as to render [it] essentially at home in the forum state.” READ MORE

The Judge Next Door

Corning Optical Communications Wireless Ltd. v. Solid, Inc. et al., 5:14-cv-03750 (Magistrate Paul Grewal) (May 13, 2015)

It is common to have discovery disputes in patent litigation, and parties often resolve such disputes without the court’s intervention.  Often, but not always.  After alleged repeated acts of inappropriate conduct by Plaintiff Corning’s counsel in the above-captioned action, Defendants resorted to asking for a discovery referee, at Plaintiff’s expense, to oversee all remaining depositions of Defendants’ witnesses. READ MORE

Reveal Your Hurt

Corning Optical Communications Wireless Ltd. v. Solid, Inc. et al., 5:14-cv-03750 (Magistrate Paul Grewal) (April 14, 2015)

The days of “wait until we serve our expert report” to reveal damages figures might be over, at least if your case is in front of Judge Grewal.  Patent damages present an especially difficult situation for the parties to calculate damages without discovery, since damages theories will turn, in part, on information known only to the opposing party, such as revenues, sales and licensing practices.  Moreover, though the Patent Local Rules contain extensive disclosure requirements on patent liability issues, they do not contain any similar requirements for the disclosure of damages contentions prior to expert discovery. READ MORE

No Means No

Blackberry Limited v. Typo Products, LLC, 14-cv-00023-WHO (Judge William Orrick)

Judge Orrick ordered Typo Products LLC last week to pay sanctions and attorneys’ fees to BlackBerry Limited for disobeying the court’s preliminary injunction order.

In March 2014, Judge Orrick enjoined Typo from distributing its add-on keyboard for the iPhone, which Blackberry alleged infringes its patents.  After that order Typo sold 1,908 keyboards to another reseller and 16,829 to customers outside the United States, provided 369 warranty replacements, and referred six customers to other third parties to buy the enjoined keyboards.  The court sanctioned Typo for these violations. READ MORE

Revived Innovation Act to Curb Patent Trolls

Here we go again.

Back in October 2013, Rep. Bob Goodlatte, R-VA, introduced H.R.3309 entitled “Innovation Act” in the House of Representatives with the stated aim of curbing frivolous patent suits brought by non-practicing entities, aka patent trolls.  That bill passed the House by a vote of 325 to 91. But in May 2014, the bill was then taken off the Senate Judiciary Committee Agenda, effectively dead.


The Right to Exclude Others Even if You Don’t Practice the Patent

Sealant Sys. Int’l Inc. v. TEK Global S.R.L., Case No. 5:11-cv-00774-PSG (Magistrate Judge Grewal, October 13, 2014)

Back in March, we reported that Magistrate Grewal enjoined defendant TEK Global from selling any tire repair kit that practices Accessories Marketing , Inc. (“AMI”)’s patent after the jury found TEK infringed.  Now TEK has returned to ask for a stay of the injunction or at least an extension of the nine-month sunset period pending the Federal Circuit’s decision of TEK’s appeal. Magistrate Grewal denied the stay and extension request.