Read full biography at www.orrick.com

Posts by: Monte Cooper

A Defendant’s Understanding of Infringement Contentions Is Not Enough To Comply With The Patent Local Rules

Order Granting Motion to Strike, Staying Discovery, and Granting Leave to Amend, GeoVector Corporation v. Samsung Electronics Co. Ltd, Case No. 16-cv02463-WHO (Judge William H. Orrick)

Albert Einstein once noted:  “Any fool can know.  The point is to understand.”  That logic was recently applied in a patent infringement case brought by GeoVector Corporation against Samsung.  GeoVector learned that the Courts of the Northern District will not accept the sufficiency of infringement contentions that the Court itself finds inscrutable and unintelligible merely because the defendant has supposedly “demonstrated an understanding” of the plaintiff’s theories. 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

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

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

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

Synthesizing More Lessons From the Silicon v. Cresta Frequency Synthesizer Case

Order Re: Motions For Summary Judgement And Defendant’s Motion To Strike, Silicon Laboratories, Inc. v. Cresta Technology Corporation. Case No. 14-cv-03227-PSG (Judge Paul S. Grewal)

As we previously reported, the dispute between Silicon Laboratories and Cresta Technology regarding patents on frequency synthesizer circuits (which are used to generate an electric signal of a desired frequency) offers useful lessons on how to apply the definiteness standard post-Nautilus. The tale continues with a series of vignettes in an order by Magistrate Judge Paul Grewal in Silicon Laboratories, Inc. v. Cresta Technology Corporation Case No. 14-cv-03227-PSG (N.D. Cal. Mar. 3, 2016), who entered an Order addressing multiple substantive motions filed by both parties. READ MORE

It’s All “Relative”, But No Different Here Under the New Nautilus Indefiniteness Standard

Order Denying Defendant’s Motion For Summary Judgement As To Indefiniteness, Silicon Laboratories, Inc. v. Cresta Technology Corporation. Case No. 14-cv-03227-PSG (Judge Paul S. Grewal)

In one of his most famous dialogues from The Tempest, William Shakespeare’s character Prospero draws on the metaphor of the end of a wedding revelry to solemnly comment on the fleeting definiteness of existence.

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