In an effort to promote judicial efficiency, Courts often allow a plaintiff to supplement its complaint if doing so would settle the parties’ controversies in one action. This is the rationale Judge Alsup applied in Illumina, Inc. et al v. Qiagen N.V. et al, Case No. 16-02788 (N.D. Cal. Nov. 29, 2016) when allowing plaintiff Illumina to amend its complaint to add a newly issued patent that was granted after plaintiff filed its complaint. Judge Alsup listed several efficiency-related factors favoring supplementation: (1) the supplemental claims accuse the very same product already in the action; (2) the newly issued patent has narrower claims, so allowing them in this action would avoid duplicating some of the issues already in the case; (3) even though there are new issues associated with the supplemental claims, there is no evidence that these new issues would be so burdensome as to delay the current schedule. Thus, because of the significant commonalities between the two patents, the Court decided that it would serve the purpose of judicial efficiency to enable the parties to litigate both patents in the same case.
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 →
Expert witnesses are often used during patent claim construction to offer extrinsic evidence relevant to the meaning of claim terms, such as how one skilled in the art would have understood the terms at the time of the invention. Yet, experts must be careful to avoid offering opinions on the ultimate meaning of claim terms, which is a question of law. This is a subtle balance that can be tricky to carry out in practice. As Judge Alsup’s recent opinion makes clear, an expert must be careful not to cross the line into “gamesmanship” territory when parsing “fact” opinions versus ultimate opinions on claim constructions. READ MORE →
March 2015—like January and February—saw decisions on a variety of fronts from ND Cal judges. ND Cal judges demonstrated their willingness to apply the Supreme Court’s decisions in Nautilus and Alice to invalidate patents on summary judgment. Nautilus held claims invalid if they “failed to inform, with reasonable certainty, those skilled in the art….” Judge Alsup applied that reasoning in Aquatic AV, Inc. v. Magnadyne Corp. et al., Case No. C 14-01931, where he found Aquatic’s asserted claims invalid, in part, because the its definition of “hermetically seals” lacked sufficient fixed meeting: “taking our patentee at its word that ‘hermetically seals’ has no fixed meaning.” READ MORE →
Order on Claim Construction and Partial Summary Judgment, Aquatic AV, Inc. v. Magnadyne Corp. et al., Case No. C 14-01931 (Judge William Alsup)
A patent plaintiff typically hates getting boxed into a specific meaning of its patent terms, but every shift in position can leave it more and more exposed to an indefiniteness challenge. In a dispute over waterproof housings for portable electronic devices, Judge Alsup decided that plaintiff Aquatic AV had crossed the line, noting the “cascade of ever-changing meanings that . . . introduces the very imprecision Section 112 prohibits.” Applying the Supreme Court’s 2014 Nautilus decision, which held claims invalid if they “fail to inform, with reasonable certainty, those skilled in the art,” Judge Alsup granted summary judgment that the asserted claim is invalid as indefinite.
Defendants had moved for summary judgment of non-infringement and/or invalidity of claims in one of two asserted patents. Those issues depended on the construction of certain terms. READ MORE →
June 2014 was a busy month for this blog, and for patent law in other arenas. Perhaps the biggest news was a trio of decisions on patents from the U.S. Supreme Court – Akamai (inducement and divided/joint infringement), Nautilus (indefiniteness), and CLS Bank (software patents). Nautilus, which threw out the old indefiniteness standard, has already helped one ND Cal defendant turn the tables during summary judgment, and is surely being cited widely in other cases.
Cardpool Inc., v. Plastic Jungle, Inc., No. C 12-04182 WHA (Judge William Alsup)
It might seem tempting for a losing plaintiff in a patent-infringement suit to later use an ex parte reexamination certificate from the USPTO to “moot” its losing judgment by changing the claims of the patent in suit. That is exactly what the plaintiff in Cardpool Inc. v. Plastic Jungle, Inc. attempted to do. However, the plaintiff’s strategy backfired, and its original loss was upheld in a recent case before Judge Alsup. READ MORE →
Motion to Dismiss Affirmative Defenses granted, Blackberry Limited v. Typo Products LLC, Case No. 3:14-cv-00023-WHO (J. Orrick).
In 2007, the Supreme Court’s Bell Atlantic v. Twombly opinion altered the Rule 8 pleading standard by tightening up the “permissive” pleading standard for complaint, requiring plaintiffs to state facts showing that its claims were not merely “conceivable,” but “plausible.” A “plausible” claim under Twombly requires stating “enough fact[s] to raise a reasonable expectation that discovery will reveal evidence [of the alleged wrongdoing].” At first, many courts and commentators believed that the Twombly standard would not find broad application beyond the antitrust context, until Ashcroft v. Iqbal, when the Supreme Court clarified that Twombly appliedto all civil complaints. READ MORE →
On January 16 Judge Alsup denied motions by both defendant and a plaintiff in a patent case to amend their patent contentions. Defendant Sirius attempted to bring in six new invalidity references and plaintiff Catch a Wave sought to accuse an additional new Sirius product near the end of fact discovery. Sirius argued that the plaintiff’s proposed claim construction went in an unexpected direction, making six new references relevant and Catch a Wave argued that the new product was not available to be identified at the time the original infringement contentions were due. READ MORE →