Infringement Contentions

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

Mind Reading Infringement Contentions

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

Producing 500,000 Pages of Documents and Source Code Found to be Good Cause For Leave to Amend Infringement Contentions

Order Granting Motion For Leave To Amend Infringement Contentions, Delphix Corp. v. Actifio, Inc., Case No: 13-CV-04613 BLF-HRL(Judge Howard R. Lloyd)

The NorCal IP Blog has reported on multiple decisions granting or denying leave to amend infringement contentions. See http://blogs.orrick.com/norcal-ip/?s=infringement+contentions. A constant theme throughout has been the Northern District’s strict adherence to the Patent Local Rules for guidance on allowing amendments. Magistrate Judge Howard R. Lloyd echoed that theme this week in Delphix Corp. v. Actifio, Inc., Case No. 13-cv-04613 BLF (HRL), when he granted defendant/counterclaim plaintiff Actifio, Inc.’s (“Actifio”) motion to amend its infringement contentions. Critical to his decision was plaintiff/counterclaim defendant Delphix Corp.’s (“Delphix”) production of source code and over 500,000 pages of new information about the accused product, not otherwise available to Actifio. READ MORE

When a Picture is Not Enough: Specificity of Infringement Contentions

Order Requiring Parties to Meet and Confer Regarding Infringement Contentions, Monolithic Power Systems, Inc. v. Silergy Corporation, et al., 14-cv-01745 (Magistrate Judge Westmore)

The cliché that “a picture is worth a thousand words” does not provide much comfort to patent plaintiffs facing vague infringement contentions.  A recent order from Magistrate Judge Westmore explains that while pictures are helpful in infringement contentions, they are no substitute for a written explanation of a party’s infringement theories. READ MORE

“And One”: Stricken Infringement Contentions Warrant Dismissal And Judgment of Non-Infringement

Order Entering Judgment, Blue Spike LLC v. Adobe Systems, Inc., 14-cv-01647 (Judge Yvonne Gonzales-Rogers)

Bay Area fans of the red-hot Golden State Warriors are familiar with basketball’s “and one” rule:  if a player is fouled while making a shot, his team gets two points and the player has a chance to take “one”  free throw for another point.  Similarly, an “and one” situation for a patent defendant is obtaining both a dismissal of the plaintiff’s claims, and a judgment of non-infringement.  Adobe Systems Inc. recently obtained exactly that relief in its litigation with Blue Spike LLC.  There, a Magistrate Judge had stricken the plaintiff’s infringement contentions.  In light of that fact, Judge Gonzalez-Rogers held that, because the parties had not entered into a covenant not to sue, it was proper both to grant judgment of non-infringement, and further to dismiss the plaintiff’s claims with prejudice. READ MORE

October Recap

October 2014 began with an echo of September, with another patent invalidated under the Supreme Court’s Alice Corp. decision on software patent eligibility under section 101. As for cases that run their entire course, Judge Wilken issued findings in a trade secret bench trial. Other decisions provided some valuable lessons for patent practitioners: we learned that a patentee may be able to obtain an injunction against a competitor, even if it doesn’t practice the infringed patent; that ND Cal judges may favor a stay of more rather than fewer patents pending IPR, once a patentee concedes that a partial stay is warranted; that a plaintiff may not be able to amend infringement contentions if public documents had put it on notice of an infringement theory; and that motions to compel may be prerequisite to a dismissal for failure to prosecute based on a plaintiff’s deficient discovery responses and contentions. Over at Patently-O, you can see some bigger picture data on patent litigation (plus speculation about what we might see from a new ND Cal case filed by HP).

Public Domain Documents Dispel “Good Cause” for Amending Infringement Contentions

Order Granting-in-Part Motion for Leave to Amend Infringement Contentions, Finjan, Inc. v. Blue Coat Systems, Inc., 5:13-cv-03999 (Magistrate Judge Grewal)

A new order from Magistrate Judge Grewal shows why patentees are well-advised to do their homework – including conducting a thorough search for public domain documents describing the defendant’s products – before drafting their infringement contentions. Failing to do so could mean that products they could otherwise have accused of infringement by additional patents are off the table, even where documents obtained during discovery provide detailed descriptions of the accused products supporting infringement by the additional patents.
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September Recap

In September 2014, we started to see ND Cal judges applying the Supreme Court’s Alice Corp. decision to invalidate software patents under section 101. Also with her eye on Alice and other Supreme Court decisions, Hastings Professor Robin Feldman examines the ongoing dialogue between Supreme Court and Federal Circuit. ND Cal judges also used other means to kick out patent cases early, with Judges Illston and Chen each rejecting a declaratory judgment action for lack of sufficient ties to California. Stepping into discovery battles, Judge Tigar issued a decision on diligence and timing to amend infringement contentions, while Judge Illston criticized evasive deposition witnesses. And, in the endgame, Judge Wilken awarded attorneys’ fees to a copyright defendant in light of the plaintiff’s baseless claim and evidence of an improper motive.

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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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.

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