Posts by: Editorial Board

Orrick Antitrust Team Authors Article on Pivotal Decision Involving Worldwide FRAND Licenses

Our colleagues recently published a paper in e-Competitions discussing some of the dangerous implications of worldwide FRAND licenses and the UK High Court of Justice’s decision to enter an injunction in Unwired Planet v. Huawei.  Read the paper here.

Matthew G. Rose, Jay Jurata, Emily Luken, The UK High Court of Justice issues an injunction prohibiting an undertaking from selling wireless telecommunications products in Britain due to its failure to enter into a worldwide patent license (Unwired Planet / Huawei)7 June 2017e-Competitions Bulletin August 2017, Art. N° 84684

Written Description: A License to Hunt or a Wild Goose Chase?

Order Denying Gilead’s Motion for Summary Judgment and Granting Merck’s Motion for Summary Judgment, Gilead Sciences, Inc. v. Merck & Co., Inc. et al., Case No. 5:13-cv-04057 (Judge Beth Freeman)

Gilead sued Merck on August 30, 2013, seeking a declaratory judgment that Gilead’s drugs Sovaldi and Harvoni, do not infringe Merck’s U.S. Patent Nos. 7,105,499 (“the ‘499 Patent”) and 8,481,712 (“the ‘712 Patent”).  Sovaldi and Harvoni are the brand names of sofosbuvir, an RNA polymerase inhibitor used to treat Hepatitis C therapeutically.  The patents-in-suit claim a Hepatitis C treatment using sofosbuvir, and the question raised by Gilead’s motion for summary judgment was whether the patents-in-suit provided adequate written description to practice the claimed methods as of the 2002 filing date of the patents. READ MORE

No Amendments and No Stay

Adaptix v. ZTE Corporation, et al. (Magistrate Grewal)

Magistrate Grewal recently issued two orders in related cases between plaintiff Adaptix and various defendants.

In the first order, he denied plaintiff’s request to amend its preliminary infringement contentions to reassert a theory of contributory infringement and add four additional accused products. Plaintiff argued that it learned of new information from a third-party deposition that gave rise to its contributory infringement theory and was diligent because it waited only 18 days after the deposition to seek amendment. READ MORE

Reveal Your Hurt

Corning Optical Communications Wireless Ltd. v. Solid, Inc. et al., 5:14-cv-03750 (Magistrate Paul Grewal) (April 14, 2015)

The days of “wait until we serve our expert report” to reveal damages figures might be over, at least if your case is in front of Judge Grewal.  Patent damages present an especially difficult situation for the parties to calculate damages without discovery, since damages theories will turn, in part, on information known only to the opposing party, such as revenues, sales and licensing practices.  Moreover, though the Patent Local Rules contain extensive disclosure requirements on patent liability issues, they do not contain any similar requirements for the disclosure of damages contentions prior to expert discovery. READ MORE

“Taming the Trolls: Why Antitrust Is Not a Viable Solution for Stopping Patent Assertion Entities” Nominated for Concurrences Antitrust Writing Award

Orrick Partner Jay Jurata and Managing Associate Amisha Patel have been nominated for a Concurrences Antitrust Writing Award for their comprehensive article, “Taming the Trolls: Why Antitrust Is Not a Viable Solution for Stopping Patent Assertion Entities,” which appeared in the Fall edition of the George Mason Law Review.

We invite you to review the article and cast your vote! Click here to cast your ballot. Voting ends Friday, Feb. 27.

Denied if You Do, Denied if You Don’t

owaMotions for Leave to Amend denied in whole or in part.  Horus Vision, LLC v. Applied Ballistics, LLC, Case No. 5:13-cv-05460-BLF(HRL); Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Case No. 12-cv-03844-JST

The Northern District of California, like several other districts, has adopted patent local rules which require litigants to state their infringement and invalidity positions nearly at the outset of a case, 14 and 45 days after the initial case management conference, respectively.  These rules are intended to provide each party with the basic legal theories the other side intends to pursue, allowing each to build its case during discovery and engage in informed claim construction.  Once disclosed, a litigant can only modify its infringement or invalidity contentions with the court’s permission, which requires the amending party to make a timely showing of good cause to prove it diligently developed its case.  Even after meeting this burden, a court may still deny leave to amend when the amendments would prejudice the other party.  A pair of decisions this week in the Northern District highlight how motions for leave to amend can play out—and not always the way you think.


New Civil and Patent Local Rules in N.D. Cal Effective November 1

Pursuant to new Patent Local Rule 2-1, when actions concerning the same patent are filed within two years of each other by the same plaintiff, they will be deemed related and all later-filed cases will be assigned to the judge presiding under the lowest-numbered case. If the lowest-numbered case is assigned to a magistrate judge to whom the parties in that case have consented to proceed before, the magistrate shall retain any related higher-numbered cases regardless of the parties’ consent. Thus, even suits against a different defendant are (assuming jurisdiction exists) affected by this rule.


The Right to Exclude Others Even if You Don’t Practice the Patent

Sealant Sys. Int’l Inc. v. TEK Global S.R.L., Case No. 5:11-cv-00774-PSG (Magistrate Judge Grewal, October 13, 2014)

Back in March, we reported that Magistrate Grewal enjoined defendant TEK Global from selling any tire repair kit that practices Accessories Marketing , Inc. (“AMI”)’s patent after the jury found TEK infringed.  Now TEK has returned to ask for a stay of the injunction or at least an extension of the nine-month sunset period pending the Federal Circuit’s decision of TEK’s appeal. Magistrate Grewal denied the stay and extension request.


Cat Got Their Tongue, Public Got Their Transcripts. A Bad Day for Ariosa Diagnostics

Discovery requests denied as moot. Verinata Health, Inc. v. Ariosa Diagnostics, Inc. et al., No. C 12-06602 SI

There is a line between preparing deponents to give concise, truthful answers without volunteering information and counseling them to be evasive and obstruct a deposition. Last Tuesday, counsel for Ariosa Diagnostics learned where Judge Illston draws that line, and found themselves on the wrong side of it.

It’s Nothing Personal – DJ Action Dismissed for Want of Jurisdiction

Motion to Dismiss for Lack of Personal Jurisdiction Granted. NXP Semiconductors USA, INc. v. France Brevets S.A.S., et al.,
No. C 14-1225 SI

In 2012, France Brevets and INSIDE Secure, both French corporations, announced the launch of a Near Field Communication (“NFC”) patent licensing program under which France Brevets would license INSIDE’s portfolio of NFC patents. In 2013, France Brevets formed NFC Technology (“NFCT”) to handle licensing in the United States. NFCT is a Delaware corporation with its chief (and presumably only) place of business in Marshall, Texas.