Indirect Infringement

Did the Defendant Know? Filing a Complaint Can Sustain the Knowledge Element Required to Maintain a Claim of Induced Infringement

Order Granting Motion to Dismiss and Denying Request for Attorneys’ Fees and Sanctions, Edwin Lyda v. CBS Interactive, Inc., Case No. 16-cv-06592-JSW (Judge Jeffrey S. White)

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

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

August Recap

In August 2014, we saw perhaps the first ND Cal decision awarding attorney’s fees under the Supreme Court’s Octane Fitness decision. Judge Illston based her exceptional case finding on the plaintiff’s lack of adequate pre-filing investigation and unreasonable litigation tactics. (Also interesting was her finding that plaintiff had waived attorney-client privilege by failing to adequately screen its document production.) Litigants were also reminded, however, that the recent Supreme Court decisions only help so much: finding that Akamai had been limited to the issue of indirect infringement, Judge Cousins barred a plaintiff from amending contentions to add a divided direct infringement theory.

Looking at threshold issues, Judge Chhabria transferred a case for insufficient ties to California while finding he had declaratory judgment jurisdiction when the patentee’s C&D letter identified accused features, even if it failed to name specific products. Meanwhile Judge Davila, consistent with prior practice, granted another stay pending a third-party IPR on the condition that defendants agreed to be bound by the same estoppel. Getting into merits issues, we saw a pair of decisions on expert reports, one by Judge Wilken applying Daubert and one by Judge Illston considering whether theories and evidence had been adequately disclosed during discovery. In addition, the Federal Circuit affirmed claim construction decisions by Judges Ware and Chen in Mformation Technologies v. RIM (also noted on Patently-O). And we’ll be getting more attention from the East Coast soon, as the Patent Office announced that its America Invents Act roadshow will be coming to Cupertino in October.

Play The Cards In Your Hand: Limelight v. Akamai Does Not Open Door For New Divided Direct Infringement Theory

Motion to Amend Infringement Contentions Granted in Part and Denied in Part, Nalco Co. v. Turner Designs, Inc., Case No. 13-cv-02727 (Magistrate Judge Nathanael Cousins)

“The law is always evolving, but the parties must play with the legal cards they have, rather than the ones they hope to be dealt.”

With that colorful analogy, Judge Cousins denied plaintiff Nalco’s attempt to amend its infringement contentions to add a new direct infringement theory. Nalco argued that its proposed addition of a new theory was justified based on the Supreme Court’s recent decision in Limelight Networks, Inc. v. Akamai Technologies, Inc., hoping to “preserve the ability to assert direct infringement if the Federal Circuit further articulates a theory of divided (but nonetheless direct) infringement.” Judge Cousins disagreed. The Court in Limelight had limited its analysis to indirect infringement, so the decision did not make a direct infringement theory suddenly viable for Nalco, and divided direct infringement has never been the law.


Why Make Razors, When the Money’s In Blades?

LifeScan Scotland Ltd. v. Shasta Technologies, LLC.  3:11-cv-04494-WHO

Now here’s a scenario that would offer Count Dracula a sweet tooth – er, a sweet fang.  Like the proverbial manufacturer that makes razors to sell razor blades, LifeScan Scotland Ltd. makes the One Touch Ultra blood glucose meter and sells 40% of them at “below cost” and distributes the remainder for free.  LifeScan then earns its bread and butter on the sale of disposable glucose test strips.  The test strips incorporate electrical and chemical sensors necessary for the meter to do its work, and every time the customer uses the monitor, he or she must use—and then dispose of—a test strip.  Shasta Technologies intended to skip straight to the profitable part of the business by developing a “half-price” disposable strip compatible with LifeScan’s meters.  And like Count Dracula eying an erstwhile sleeping victim, Lifecan bit back at this affront to its business model. READ MORE

To Plead or Not To Plead; Knowledge Is the Question

Motion to Dismiss Claims of Inducement, Contributory Infringement, and Willful Infringement Denied, Sykworks Solutions, Inc. v. Kinetic Technologies Inc., Case No. C 14-00010 (Judge Susan Illston)

“Ignorance is the curse of God;  knowledge is the wing wherewith we fly to heaven.”  William Shakespeare, Henry VI Part II.

You don’t need to be the Bard of Avon to prepare a complaint setting out allegations of patent infringement.  As underscored by a recent ruling from Judge Illston denying a motion to dismiss a complaint for patent infringement, so long as a patentee can successfully plead pre-suit knowledge of the patents-in-suit, it also should be relatively straightforward for the patentee to plead theories of willful infringement, contributory infringement, and inducement. READ MORE