As we’ve been reporting, patent venue case law continues to develop on multiple fronts in the aftermath of the Supreme Court’s decision in TC Heartland. In a pair of decisions discussed below, two jurisdictions—the Eastern District of Texas and the Southern District of Ohio—took contrasting approaches to how a defendant’s response to personal jurisdiction allegations affected the defendant’s ability to challenge venue. READ MORE
Lillian J. Mao
Lillian Mao's practice focuses on patent and trade secret litigation involving complex technologies. She has helped clients obtain favorable results at all stages of litigation, including a clean sweep jury verdict for MobileIron in the company's first patent trial.
Lillian has worked on matters for companies including Apple, Oracle, Sandisk, MiTAC, Toshiba, and NVIDIA, covering technologies such as flash memory, GPS, LEDs, image and video compression, and enterprise mobility management. She has practiced in California state court, in multiple federal district courts, before the International Trade Commission, and before the Patent Trial and Appeal Board.
A representative sample of Lillian's cases includes:
In the Matter of Certain Electronic Devices With Image Processing Systems, Components Thereof, and Associated Software. Lillian was part of a team that represented Apple in the International Trade Commission against complainant S3 Graphics. After hearing and briefing, the Commission found no violation by Apple of any of the four asserted patents.
Good Technology v. MobileIron (N.D. California). Lillian was a core member of the team that represented MobileIron in patent litigation against competitor Good Technology. Lillian wrote and argued motions including summary judgment, took fact and expert depositions, and examined witnesses at trial. At the end of a two week jury trial, the jury found no infringement by MobileIron and upheld the validity of MobileIron's enterprise application store patent.
Device Security v. Asurion (D. Delaware). Lillian helped defend Asurion against patent infringement claims. By framing the technical and damages-related issues to show the plaintiff's limited potential recovery, the Orrick team helped secure a favorable early settlement.
Medtronic v. Robert Bosch Healthcare Systems. A competitor filed 11 IPRs against our client, Robert Bosch Healthcare Systems. At that time institution rates for IPRs were 75%, and petitioner win rates were 85%. However we defeated six of 11 petitions, for a patent owner win percentage of 54%. We defeated three IPRs at the institution stage through strong technical arguments on the merits. We defeated another three IPRs by demonstrating that the petitioner violated the statutory requirements for IPRs, which caused the PTAB to terminate the proceedings.
Posts by: Lillian J. Mao
Since the Supreme Court’s decision in TC Heartland, many defendants in earlier-filed cases have tested whether they can raise an improper venue defense, or waived the issue by failing to raise it in their answers or through later litigation conduct. A majority of district courts to consider the issue have found that TC Heartland did not change the law so as to qualify as an exception to the waiver doctrine, but some jurisdictions have taken the opposite view. (A chart of exemplary cases is included below.) Judge Rayes’ recent decision in OptoLum v. Cree leads the District of Arizona into the minority group and suggests that the question will continue to be addressed district by district.
Defendant Cree was in a position that may sound familiar to many pre-TC Heartland defendants: At the start of the case, Cree had moved to dismiss under Rule 12(b)(6) and for transfer under 28 U.S.C. § 1404. After the court dismissed certain claims and denied transfer, Cree filed an answer admitting that venue is proper. In light of TC Heartland, however, Cree moved to amend its answer to deny proper venue and to dismiss on that basis. READ MORE
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 is a different court today than it was last week: Effective as of November 1, Senior District Judge Ronald M. Whyte has stepped down from the bench and assumed inactive status after serving over 24 years on the federal bench. Judge Whyte will leave a lasting mark on the Northern District and on intellectual property law more broadly based on his leadership in developing the patent local rules and many notable IP decisions, among other things. He has been widely recognized and praised by practitioners, academics, and other judges. As quoted in the court’s notice of his departure, Chief Judge Hamilton stated: READ MORE
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
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
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
Discovery Order, Richtek Technology Corp. v.. uPI Semiconductor Corp., et al., Case No. 09-cv-05659-WHA (Magistrate Judge Laurel Beeler)
Here is a riddle for you: when can an interest in reducing cost and burden justify broader discovery? The answer: when documents previously produced in a related case are at issue. That’s what Magistrate Judge Beeler concluded in Richtek Technology Corp. v. uPI Semiconductor Corp., in ruling that documents produced in an ITC investigation would be treated as if produced in the district court patent case, while simultaneously rejecting defendant uPI’s request to carve out trade secret discovery and discovery about non-accused products. READ MORE
As we have reported in the past, judges in the Northern District are generally willing to stay a case pending IPR, and sometimes even before the PTAB decides whether to institute review. But Judge Illston’s order in MLC v. Micron confirms there are limits. At least when an IPR petition is initially denied, and a decision on rehearing is nowhere in sight, the scales may tip in favor of lifting an existing stay and letting the district court action proceed, notwithstanding unfinished business before the PTAB. READ MORE
“The show business has all phases and grades of dignity, from the exhibition of the monkey to the exposition of the highest art in music or the drama which secures for gifted artists a world-wide fame princes well might envy.” ~ P.T. Barnum
Are photographic “selfies” a uniquely human conceit? Parties in a Northern District copyright lawsuit who purport to represent “Naruto” – the crested macaque monkey who in what might be described as a “primate whim of self-promotion” grabbed the camera of wildlife photographer David John Slater and took a series of his own “monkey selfies” to the delight of millions who have seen the images –argue “no.” READ MORE