Judge Edward Chen

A Day Late And A Dollar Short – Court Grants Summary Judgment On Laches Defense

Order Granting Summary Judgment On Dropbox Laches Claims, Dropbox, Inc. v. Thru Inc., Case No. 15-cv-01741-EMC (Judge Edward M. Chen)

The proverb “[e]quity aids the vigilant, not the sleeping ones” aptly describes the rationale behind the defense of laches-i.e., the legal doctrine which states that a plaintiff who unjustifiably delays pursuing a claim may forfeit it. Intended to encourage the timely resolution of disputes and to avoid prejudice to defendants, laches can have dire consequences for plaintiffs who unreasonably delay bringing their claims. 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

Third Time’s A Charm? Court Denies Motion to Dismiss and Anti-SLAPP Motion

Order Denying Defendants’ Motion to Dismiss and Anti-SLAPP Motion to Strike, Sonus Networks, Inc. v. Inventegry, Inc., C-15-0322 EMC (Judge Edward Chen)

Patent licensing company Inventegry, Inc. recently suffered some setbacks when Judge Edward M. Chen denied its motion to dismiss and Anti-SLAPP motion to strike several claims that plaintiff Sonus brought as part of its declaratory judgment action. READ MORE

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.

No Personal Jurisdiction in Declaratory Patent Action Without Sufficient Enforcement Activity

Order Granting Defendant’s Motion to Dismiss for Lack of Personal Jurisdiction, Petzilla, Inc. v. Anser Innovation LLC, Case No. C-14-1354 EMC

Every dog owner knows that the single word “treat” can unleash canine ecstasy in their favorite pet. As a result, if you haven’t had “sufficient contacts” with your dog lately, then the “greet-and-treat” pet products offered by the parties involved in Petzilla, Inc. v. Anser Innovation LLC may be of great help. On the other hand, if you are accused of infringing a patent directed to such canine delights and want to bring a declaratory judgment action arguing that the underlying patent claims are not infringed and are invalid, then you better be prepared to show that the patentee has “sufficient contacts” with your forum state. Otherwise, your declaratory judgment action may end up being a dog.
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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.

Stop Taking Bites At That Apple! Some Guidance on Motions for Reconsideration (and Bifurcation)

Order Denying Xycarb’s Motion To Bifurcate And Lam’s Motion For Summary Judgment, Lam Research Corp. v. Schunk Semiconductor, Case No. C-03-1335-EMC.

On August 22, 2014, Judge Edward Chen denied defendant Xycarb Ceramics, Inc.’s (“Xycarb”) motion for a bifurcated trial and Lam Research Corp.’s (“Lam”) motion for partial summary judgment, deeming Lam’s motion to be an improper motion for reconsideration.

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An Issue with Reissue: Lam Research v. Schunk Semiconductor

Motion re Intervening Rights Denied, Lam Research Corp. Micro Inc. v. Schunk Semiconductor, et al., Case No. C 03-1335 (Judge Edward Chen)

The Patent Office’s reexamination and post-grant review procedures have generated a lot of discussion lately.  But a recent order in the Lam Research case shines the spotlight on their older and somewhat less divisive sibling procedure, the reissue.  Lam Research obtained a reissue of one its patents in litigation to fix a claim that had been previously impossible to infringe.  Defendant Xycarb, which is owned by Schunk, argued that Lam’s correction nullified its infringement case because Xycarb had acquired intervening rights with respect to the reissued patent.  Judge Chen disagreed and concluded that the reissued claim was “substantially identical” to the original version of the patent claim, based on a review of the specification, the nature of the correction, and prosecution history. READ MORE

Right to License is Not the Same as Right to Sue

Minden Pictures, Inc. v. John Wiley & Sons, Inc., Case No. C-12-4601 EMC (Judge Chen)

Just because you have the shared right to reproduce copyrighted works, the shared right to distribute copies of the works to the public, the shared right to display the works publically, and the exclusive agency right to license the works to third parties, does not mean that you have standing to sue others for infringement of those copyrighted works under 17 U.S.C. § 501, according to a recent opinion from Judge Chen. READ MORE

Personal Jurisdiction Over Foreign Defendant Where Trademark Owner Advertised Its ND Cal Presence

d.light design, Inc. v. Boxin Solar Co., Case No. 13-5988 (Judge Chen)

Suing a foreign defendant in the district can be a tricky thing.  Personal jurisdiction is obviously a prerequisite to obtaining any relief on an IP claim.  Recent orders by Judge Chen in the d.light case suggest that a trademark plaintiff may have a better chance if it makes clear to the world that it is located in ND Cal and that it owns the trademarked goods and services at issue. READ MORE