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Posts by: Lillian J. Mao

Judge Whyte Retires

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

Trying to Erase the Past: Judge Won’t Vacate Section 101 Ruling After Settlement

Order Denying Motion to Vacate Judgment, Protegrity USA, Inc. v. Netskope, Inc., Case No. 15-cv-02515-YGR (Judge Yvonne Gonzalez Rogers)

When parties settle a case, they usually want to put it all behind them and move on. But what if the court’s decisions still hang over their heads? Protegrity thought it could erase the past by agreeing with its opponent to have an undesirable ruling vacated, but it learned the hard way that such a result is outside the parties’ control. READ MORE

Section 101 Blocks Caller ID Patent

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

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

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

Monkey Business: A Primate Can’t Claim Copyright in Selfies

Order Granting Motions to Dismiss, Naruto, et al. v. Slater, et al., Case No. 15-cv-04324-WHO (Judge William Orrick)

The show business has all phases and grades of dignity, from the exhibition of the monkey to the exposition of the highest art in music or the drama which secures for gifted artists a world-wide fame princes well might envy.”  ~  P.T. Barnum

 Are photographic “selfies” a uniquely human conceit? Parties in a Northern District copyright lawsuit who purport to represent “Naruto” – the crested  macaque monkey who in what might be described as a “primate whim of self-promotion” grabbed the camera of wildlife photographer David John Slater and took  a series of his own “monkey selfies” to the delight of millions who have seen the images –argue “no.” READ MORE

Bad Timing? Judge Defers § 101 Issue Until After Claim Construction

Order Denying Motion for Judgment on the Pleadings, Cave Consulting Group, Inc. v. Truven Health Analytics Inc., Case No. 15-cv-02177-SI (Judge Susan Illston)

It has been just over a year since Judge Illston last decided a motion asserting a patent is invalid under 35 U.S.C. § 101. Last time, Judge Illston’s order in Bascom Research v. LinkedIn was part of an initial wave of post-Alice ND Cal decisions invalidating claims that covered abstract ideas. This time, the patent defendant didn’t fare as well. READ MORE

Build On A Strong Foundation: How Expert Reports Are Constrained By Earlier Disclosures

Order on Motions to Strike Portions of Expert Reports, Finisar Corporation v. Nistica, Inc., Case No. 13-cv-03345-BLF (Judge Beth Freeman)

Expert reports are not written on a blank slate. Instead, parties are generally bound by what they’ve disclosed (or haven’t) earlier in the case. In ruling on Finisar’s and Nistica’s motions to strike portions of each other’s expert reports, Judge Freeman identified several rules of disclosure under the patent local rules and demonstrated their application. READ MORE

Algorithm Optional? A Guide to Computers as Structure in Means-Plus-Function Claiming

Summary Judgment Order, Fortinet, Inc. v. Sophos, Inc., et al., Case No. 13-cv-05831-EMC (Judge Edward Chen)

Means-plus-function claim elements are less common than in the past, due to stricter rules about their scope and requirements for validity. But when they do arise, it is still necessary to know how to deal with them. Judge Chen recently entertained cross-motions for summary judgment on whether a means-plus-function element is indefinite if the specification discloses using a computer but no algorithm. And while Judge Chen ultimately found he could not render summary judgment for either side, his order offers a primer on approaching software-related “means” elements. READ MORE