Alex Fields is an associate in the Intellectual Property group of Orrick's San Francisco office.
Alex represents individuals and corporate clients in various civil matters involving patent and copyright infringement, misappropriation of trade secrets, unfair competition, breach of contract, and wage disputes.
Olivia Garden, Inc. v. Stance Beauty Labs, Inc., et al., N.D. Cal (July 12, 2017) (Judge Haywood S. Gilliam, Jr.)
In a June 12, 2018, order, Judge Haywood S. Gilliam, Jr. granted the motion of defendant Stance Beauty Labs (“Stance”) to dismiss for improper venue, rejecting plaintiff Olivia Garden’s request that the court exercise pendent venue over its claims. The court found that pendent venue was unavailable for patent claims, despite being brought alongside related claims that the plaintiff brought against a codefendant.
Specifically, Olivia Garden brought claims against Stance (represented by Orrick) and codefendant Burlington Coat Factory of Texas (“Burlington Texas”) alleging design patent infringement, trade dress infringement and unfair competition based on certain of the defendants’ brush products. Stance subsequently moved to dismiss based on improper venue. In opposition, Olivia Garden acknowledged that Stance was incorporated in Connecticut and that it lacked facts sufficient to show proper venue under the second prong of 28 U.S.C. § 1400(b). READ MORE
ZitoVault, LLC v. International Business Machines Corporation and Softlayer Technologies, Inc., N.D. Texas (April 4, 2018)
The defendants in this case chose not to assert all relevant prior art patents and printed publications during an IPR (in order to increase their likelihood of joinder with an instituted IPR) and were subsequently precluded from asserting that prior art in defense to an infringement action in the Northern District of Texas. This case serves as a reminder that parties should perform a careful review of prior art patents and printed publications prior to filing or joining an IPR lest they lose their right to assert crucial prior art. READ MORE
Stuebing Automatic Machine Company v. Allan Gavronsky d/b/a Matamoros Machine Shop, et al., S.D. Ohio (June 12, 2017) (Judge Karen L. Litkovitz)
Under 28 U.S.C. § 1400(b), venue is only proper in a patent infringement suit in a jurisdiction (1) where the defendant resides, or (2) where the defendant has committed acts of infringement and has a regular and established place of business. The Supreme Court’s decision in TC Heartland focused on the first test, holding that a defendant “resides” only in its state of incorporation, not that personal jurisdiction over the defendant exists, as the Federal Circuit previously held. That narrowing of the first test put renewed focus on the second test, in particular whether a defendant maintained a “regular and established place of business.” In the wake of TC Heartland, Judge Karen L. Litkovitz granted the defendants’ motion to transfer six months after she initially denied it. READ MORE
Owens Corning v. Fast Felt Corporation, Fed. Cir. (October 11, 2017)
During inter partes review proceedings, the Patent Trial and Appeal Board (“PTAB”) is required to give claims their broadest reasonable construction in light of the specification. See 37 C.F.R. § 42.100(b). Thus, when the PTAB imports claim limitations based on the invention’s preferred embodiments, its decision upholding patent validity may be subject to reversal. In situations where a broader construction is argued by the petitioner and adopted in the Institution Decision, and the patent owner does not provide suitable arguments for nonobviousness in light of that broader construction, the Federal Circuit may choose to reverse rather than remand. READ MORE
Order Denying Motion to Modify Protective Order, PhishMe, Inc., v. Wombat Security Technologies, D. Del. (September 18, 2017) (Judge Christopher J. Burke)
As demonstrated by Judge Burke’s order, courts are reluctant to alter protective orders that have been in place for months and were specifically negotiated in an effort to protect against inadvertent disclosure and competitive misuse of confidential information. This is especially true when the parties are direct competitors and have capable outside counsel to manage the litigation.
Orders Granting Certain Motions to Exclude Testimony, Greatbatch Ltd. v. AVX Corp. et al., D. Del. (July 20, 2017) (Judge Leonard P. Stark)
Judge Leonard Stark recently decided several pretrial motions in this medical device patent infringement suit leading up to next month’s jury trial. In the process, he reiterated certain standards for allowing witnesses to testify at trial that future parties should keep in mind.
In one Order, Judge Stark granted Plaintiff Greatbatch’s motion to preclude Defendant AVX from presenting at trial the testimony of a former employee through his deposition. That former employee—Dr. Panlener—had been an employee-turned-consultant of AVX and testified at length in deposition. However, AVX fired him after his depositions, and Dr. Panlener thus became unavailable to testify live at trial. Greatbatch moved to exclude his deposition testimony at trial. Judge Stark granted the motion, finding that it would be unfair to permit Dr. Panlener’s testimony to be used at trial since Greatbatch “has had no opportunity to question him regarding his termination” by AVX. Judge Stark did not ultimately conclude whether AVX “procured” Dr. Panlener’s absence by terminating the relationship, which, under the Federal Rules, would prevent usage of his testimony. But he disagreed with AVX’s contention that it is “entitled” under the Rules to present the deposition testimony and kept it out based on “the Court’s discretion to manage the trial in a manner that is fair to both sides and consistent with all other applicable rules.” READ MORE
Order Granting in Part and Denying in Part Defendant’s Motion for Summary Judgment, Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc., Case No. 3:15-cv-04618-WHO (Judge William H. Orrick)
As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted. But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE
Order Denying Defendant’s Motion to Dismiss, X One, Inc. v. Uber Technologies, Inc., Case No. 16-CV-06050-LHK (Judge Lucy H. Koh)
Uber Technologies, the transportation network giant, recently lost a motion to dismiss a two-patent infringement suit when the Court found that Plaintiff X One, Inc.’s patent claims are directed to patentable subject matter under 35 U.S.C. § 101. The Court held that the individual claim elements are conventional, but as an ordered combination provide an inventive concept sufficient to defeat a motion to dismiss. READ MORE
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
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