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Posts by: Daniel Justice

Foreign Party Cannot Hide Behind Hague Convention To Avoid Service

Order Re Service and Motion to Dismiss Re Service, Xilinx, Inc., v. Godo Kaisha IP Bridge 1, Case No. 3:17-cv-00509-JD (Judge James Donato)

It is not uncommon for parties to race to file competing patent suits in their preferred districts once negotiations break down and litigation appears necessary. In some cases, recognizing that federal courts generally give priority to cases which are the “first filed” and procedurally further along, a party may attempt to delay service of an opposing party’s complaint.  That was the apparent strategy of Japan-based Godo Kaisha IP Bridge 1 (“IPB”) in its patent dispute with San Jose-based Xilinx, Inc. (“Xilinx”).  But as IPB discovered, delay tactics do not always work. READ MORE

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

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

What a Difference a Few Letters Make – Judge Donato Strikes Patent Claim over Ambiguous Typo, While Sparing Another Through Claim Construction

Order Re: Claim Construction and Invalidity, Altera Corp. v. PACT XPP Tech., AG, Case No. 14-cv-02868-JD (Judge James Donato)

When filing a patent application, make sure to cross your t’s and dot your i’s—and also check for typos and ambiguous antecedents. In a recent order addressing claim construction and a motion for summary judgment on indefiniteness, Judge Donato invalidated a patent claim based on a typographical error, and nearly invalidated a claim for an ambiguous antecedent. READ MORE

CEOs May Be at the “Apex” of Their Companies, But They Can Still Be Deposed

Order Re: Discovery Dispute, Finisar Corp. v. Nistica, Inc., Case No. 13-cv-03345-BLF (Magistrate Judge Jacqueline Scott Corley)

One of the more contentious issues in civil litigation involves the question of under what circumstances can the highest ranking officer in a corporation find himself or herself answering questions at a deposition related to the business activities of the company.  In a recent order in a patent infringement suit, Magistrate Judge Corley examined this “apex” deposition doctrine and compelled the deposition of the CEO of the plaintiff Finisar Corp., subject to several limitations on how the deposition was to be conducted. READ MORE

Judge Donato Refuses to Let the Tail Wag the Dog

Order Directing Entry of Partial Judgment Under FRCP 54(b), Largan Precision Co., Ltd., v. Genius Electronic Optical Co., Ltd., Case No. 13-cv-02502-JD (Judge James Donato)

In a recent order directing entry of partial judgment under Rule 54(b), Judge Donato refused to let the tail wag the proverbial dog, so to speak.  He elected not to permit the existence of a few hundred domestic sales of an accused product to otherwise hold up a Rule 54(b) final judgment that concluded millions of extraterritorial sales did not infringe.  READ MORE

HP Fails to Construct a “Concrete” Path to Patentability Under Alice

Order Granting Motion for Summary Judgment, Hewlett Packard Co. v. ServiceNow, Inc., Case No. 14-cv-00570-BLF (Judge Beth Labson Freeman)

Since the Supreme Court decided Alice, district courts have increasingly invalidated patent claims directed to the use of general computers to implement “abstract” ideas.  One strategy for patent owners to demonstrate patent-eligible subject matter [i] and thus survive Alice scrutiny is limiting claim constructions to define the implementing computer structure in a specific, concrete and specialized way.  This is what Hewlett Packard recently attempted, but failed to do, when defendant ServiceNow, Inc. moved for summary judgment of invalidity on the claims in four asserted patents. READ MORE

Obtaining a Judgment as a Matter of Law Is Not an Easy Task, as Both Parties Learned

Order on Post-Verdict Motions, Digital Reg of Texas, LLC v. Adobe Systems, Inc., No. C 12-1971 CW (Judge Wilken)

It’s easy to forget that in patent litigation, the question of whether a claim is invalid as obvious is not a fact question.  Rather, it is a question of law.  That is not to say, however, that a jury cannot be asked to address the underlying factual questions related to obviousness, and render an advisory verdict that the claim is, or is not obvious.  And, as a recent ruling from Judge Claudia Wilken reflects, the jury’s conclusions frequently can, and will, be adopted by the Court.

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Bringing a Baseless Copyright Claim Can be Costly: Judge Wilken Grants Defendant’s Request for Attorneys’ Fees

Order Granting In Part Defendant’s Motion for Attorneys’ Fee, Lewis v. Activision Blizzard, Inc., No. C 12-1096 CW (Judge Wilken)

Activision Blizzard, Inc. has had a memorable month. Along with its partner Bungie, on September 9, the company behind the wildly popular “Call of Duty” franchise of videogames introduced “Destiny,” a Massively Multiplayer Online (“MMO”) videogame reputed to have a $500 million budget – which, if true, makes it the most expensive videogame ever developed (and more expensive than cost of all three of the Lord of the Rings movies combined). While it remains to be seen whether and to what extent Destiny revolutionizes the videogame industry, Activision can at least take solace that Northern District Judge Claudia Wilken just awarded it a modest award of attorneys’ fees related to a dispute about its earlier successful franchise, “World of Warcraft” (commonly referred to in the gaming community as “WoW”).
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No Personal Jurisdiction in Declaratory Patent Action Without Sufficient Enforcement Activity

Order Granting Defendant’s Motion to Dismiss for Lack of Personal Jurisdiction, Petzilla, Inc. v. Anser Innovation LLC, Case No. C-14-1354 EMC

Every dog owner knows that the single word “treat” can unleash canine ecstasy in their favorite pet. As a result, if you haven’t had “sufficient contacts” with your dog lately, then the “greet-and-treat” pet products offered by the parties involved in Petzilla, Inc. v. Anser Innovation LLC may be of great help. On the other hand, if you are accused of infringing a patent directed to such canine delights and want to bring a declaratory judgment action arguing that the underlying patent claims are not infringed and are invalid, then you better be prepared to show that the patentee has “sufficient contacts” with your forum state. Otherwise, your declaratory judgment action may end up being a dog.
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You Don’t Need to Hire Sherlock Holmes to Conduct a Meaningful Investigation, but You Should at Least Inspect an Accused Infringer’s Website

Order Denying Plaintiff’s Motion to Amend Infringement Contentions, Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Case No. 12-cv-03844-JST

Both Shakespeare’s Henry IV and Sherlock Holmes famously uttered “The game is afoot!” Each had a slightly different meaning when doing so, but when both famous characters exclaimed that now iconic statement, they meant that some sort of hunt was still in progress – and in Sherlock Holmes’ case, that was a hunt for the truth. Interpreting the Northern District’s Patent Local Rules in Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Judge Jon S. Tigar might have elected to modify the Bard’s and Sir Arthur Conan Doyle’s literary monikers to read “The game is afoot, as long as you remain diligent!” Perhaps not as elegant, but from a legal standpoint it’s quite accurate. And Sherlock Holmes, at least, would likely applaud such attempts to hold Plaintiffs to their Local Rule obligations—indeed, he was on record in The Sign of the Four as indicating he never made “exceptions,” since “exceptions disprove the rule.”
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