Patent

TC Heartland – One Month Later Delaware, Texas, California and Illinois Courts Most Popular Venues

We previously reported on the early impact of the Supreme Court’s decision in TC Heartland based on the first few weeks of new filings. (For a summary of the TC Heartland opinion and its implications, click here.) It has now been one month, and based on the filing data for the month since TC Heartland as well as historical data since the beginning of 2016, we now have a better sense of how things have changed and how things may look in the future. Using data obtained from Docket Navigator, we compared filings in the month since TC Heartland came down on May 22 with filings earlier this year and also for all of 2016. READ MORE

Determination on Indirect Infringement Requires Factual Record, Warranting Denial of Motion to Dismiss

Order Denying Motion to Dismiss, The Regents of the University of California v. Boston Scientific Corporation, Case No. 16-cv-06266-YGR (Judge Yvonne Gonzalez Rogers)

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

The Northern District of California Shoots to Second Place After TC Heartland

It’s been just over two weeks since the Supreme Court decision in TC Heartland.  (For a summary of the opinion and its implications, click here.)  As plaintiffs and the courts now struggle to deal with venue in patent cases (and patent litigators brush up on venue law), we looked at recent filings to see what effect the decision had on where patent complaints are being filed.  Using data obtained from Docket Navigator, we compared filings in the sixteen days since TC Heartland came down on May 22 with filings earlier this year between March 1-May 21.  READ MORE

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

Full Disclosure: The Northern District Amends Its Local Rules to Require Early Damages-Related Disclosures

N.D. Cal. Patent Local Rules

Patent litigants in the Northern District of California will have something new to argue over following the Court’s approval in January of Patent Local Rule amendments that impose damages-related disclosure requirements. The Court also tweaked a few other patent local rules. 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

Daubert Exclusion for Double Counting

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

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

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