Ever since the abolition of form complaints in patent cases (see our previous reporting here, here, and here), patent defendants have been incentivized to file motions to dismiss, and many have succeeded. But as Judge Gonzalez Rogers’ recent Order in this case reminds us, even after Twombly and Iqbal, Rule 12(b)(6) still offers a relatively lenient pleading standard and, in many cases, requires development of a factual record before dismissal can be considered. READ MORE
George Kanabe, partner in the San Francisco office, is a member of the Intellectual Property group.
George's practice focuses primarily on patent litigation; and his experience includes negotiating license agreements, performing due diligence investigations, conducting patentability, infringement and validity analyses, authoring opinion letters, and preparing reexamination requests for issued patents.
He has significant experience drafting and prosecuting patent applications, as a registered practitioner before the U.S. Patent and Trademark Office.
George has represented litigation and prosecution clients in a variety of technological fields, including the electrical arts, computer software, telecommunications, mechanical and medical devices, and financial services.
The following is a sample of George’s current and past representations.
- AIP v AT&T (D. Del. 2014). Represented AT&T entities in five-patent infringement case involving VoIP products and services.
- Auburn University v. IBM (M.D. Al.). Represented Auburn in patent infringement suit relating to reliability selection of dies on semiconductor wafers.
- CardSoft v. First Data (E.D. Tex.). Represented First Data Corporation in two-patent case involving operating systems for credit and debit card reader PoS (Point of Sale) terminals.
- CardSoft v. VeriFone and Hypercom (E.D. Tex.). Represented VeriFone et al. in infringement cases involving patents directed to Virtual Machine functionality for credit card payment terminals.
- Document Generation Corporation v. McKesson (S.D. Ill. And E.D. Tex.). Represented McKesson Information Solutions, LLC in multi-defendant patent infringement claims involving medical personnel report and notes generating systems.
- DR Systems v. McKesson (S.D. Cal.). Represented McKesson Information Solutions, LLC in multi-defendant patent infringement claim involving Picture Archiving and Communication Systems (PACS).
- Enzo Medical Systems v. Siemens (D. Del.). Represented Siemens Healthcare Diagnostics, Inc. in patent case involving RNA diagnostics equipment.
- Extricom v. Meru Networks (D. Del.). Represented Extricom in dispute involving patent infringement claims relating to WLAN and WiFi technologies and advanced managerial functions.
- GeoTag v Walmart (E.D. Tex.). Represented Walmart in multi-defendant patent infringement suit relating to store locator mapping technology.
- Intellect Wireless v. HTC (N.D. Ill). Represented HTC at trial in a post-Therasense inequitable conduct trial resulting in a full defense judgment.
- LBS Innovations v Walmart (E.D. Tex.). Represented Walmart in multi-defendant patent infringement suit relating to wireless system for providing information about proximate destinations to mobile devices.
- Mohawk Brands v. Shaw Industries Group (N.D. Ga.). Represented Shaw in multi-patent infringement suit relating to carpet tiles.
- NICE Systems and STS Software v Witness Systems (N.D. Ga. and D. Del.). Represented Witness Systems, Inc., now part of Verint, in multiple (offensive and defensive) patent infringement suits involving more than a dozen patents in the fields of telecommunications, voice recording, agent monitoring, and VOIP conferencing and recording.
- Novitaz v. Shopkick (D. Conn. and N.D. Cal.E.D. Tex.). Represented Shopkick in multi-patent case involving retail and shopping applications and technologies.
- Openwave Systems v. 724 Solutions (N.D. Cal.). Represented 724 Solutions in dispute involving mobile device web interface and data rendering systems.
- Radiant Systems v. Ameranth (N.D. Ga.). Represented Radiant Systems, Inc., declaratory judgment plaintiff, in patent infringement claim involving point of sale computing systems.
- RBIDR v. Airbnb (D. Del.). Represented Airbnb in patent case involving methods for selling time-based inventory over a communications network.
- Siemens v. SIPCO (N.D. Ga.). Represented plaintiff Siemens Industry, Inc. in license and patent infringement dispute involving networking technologies.
- Sintered Rare Earth Magnets, Methods of Making Same and Products Containing Same (ITC Investigation No. 337-TA-855). Represented respondent Monster Cable Products, Inc. before the ITC in an investigation concerning technology for manufacturing magnets deployed in audio products.
- TQ Delta v. DIRECTV (D. Del.). Represented DIRECTV in eight patent case involving DSL-related patents as applied to the MoCA (Multimedia over Coax Alliance) standards and compliant products and services.
Posts by: George L. Kanabe
As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted. But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE
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
In a helpful ruling for defendants, Judge White held in a recent order that res judicata prevented a plaintiff from filing a complaint for alleged inducement of patent infringement after a prior suit for direct infringement was dismissed with prejudice. He held that the filing of the original complaint provided a colorable basis to allege the knowledge element of an inducement claim, and thus there was nothing to prevent the pursuit of an inducement claim in the original case. READ MORE
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.
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
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
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
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
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