Disqualifying an Expert: When Is an Expert’s Prior Relationship Prejudicial to the Opposing Party?

Opinion Regarding Disqualification of Plaintiff’s Expert, Tabaian v. Intel Corp., D. Or. (September 22, 2018) (Judge Marco A. Hernandez) 

Expert witnesses play a critical role in patent litigation, particularly where the subject matter is highly technical.  The more specialized the technology, the more common it is for an expert witness to have had some prior relationship with the opposing party.  To determine whether such an expert should be disqualified, courts analyze the relationship under a three-part test: (1) whether the relationship between the expert and the opposing party was confidential; (2) whether the confidential information that the expert obtained under that relationship is relevant to the present lawsuit; and (3) how granting or denying a disqualification motion may prejudice the parties or affect the integrity of the legal process.  A recent opinion from the District of Oregon sheds light on this test. READ MORE

IPR Reply Briefs: Drawing the Line Between “Responsive” and “New”

Ericsson Inc. v. Intellectual Ventures I LLC, Fed. Cir. (Aug. 27, 2018)

37 C.F.R. § 42.23(b) limits a petitioner’s inter partes review (“IPR”) reply papers to arguments raised by the patent owner in its opposition. Under this rule, a petitioner cannot assert new invalidity arguments, cite previously unidentified parts of a prior art reference, or introduce new evidence such as a new prior art reference. The line between this and what is merely responsive, however, can be blurry. The Federal Circuit’s recent decision in Ericsson sheds some light on this line. READ MORE

Court Declines to Exercise Pendent Venue Over a Patent Case and Denies Section 1400(b) Discovery

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

Seven Months’ Delay Too Much for Venue Transfer After TC Heartland…. Or Is It?

Order Granting Defendant’s Motion to Transfer for Improper Venue or, Alternatively, to Dismiss, Blue Rhino Global Sourcing, Inc. v. Best Choice Products a/k/a Sky Billiards, Inc., M.D.N.C. (June 20, 2018) (Judge Loretta C. Biggs) and Adrian Rivera v. Remington Designs, LLC, C.D. Cal. (June 19, 2018) (Judge John A. Kronstadt)

Courts continue to work through the backlog of venue motions created by the combo of TC Heartland and In re Micron Tech. rulings. In a pair of almost concurrently issued opinions two courts reached differing conclusions as to whether a seven month delay was sufficient to deem a venue transfer motion waived. READ MORE

Are Early Motions to Dismiss Under § 101 No Longer a Natural Phenomenon?

Illulmina, Inc. v. Natera, Inc., Case No. 18-cv-01662-SI (N.D. Cal. June 26, 2018 Order Denying Motion to Dismiss).

Confirming that the difficulty in interpreting 35 U.S.C. § 101 in order to determine which subject matter is patentable is not limited to abstract ideas, Judge Illston of the Northern District of California grappled with the problem of identifying unpatentable natural phenomena.

Pursuant to the two-step test established by the Supreme Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) and enshrined in Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014), a patent claim is unpatentable if it is both directed to a patent-ineligible concept and fails to recite additional elements that transform the nature of the claim into a patent-eligible application by reciting an inventive concept. READ MORE

Patentee Cannot Recover Post-Judgment Damages Via a Late Motion for Accounting

Order Denying Motion for Accounting to Determine Supplemental Damages, Kaneka Corporation v. JBS Hair, Inc., N.D. Tex. (June 13, 2018) (Judge David Godbey)

In a long running dispute between Kaneka Corporation and Uno & Company over flame retardant polyester fibers for artificial hair, the patent owner Kaneka won nearly $6 million in lost profits damages in June 2013, and received an accounting of damages through the entry of judgment in November 2013. In March of 2015, Kaneka also received a permanent injunction against Uno precluding the company and others from further infringement of the asserted patents.


Third-Party Litigation Financing: When Can a Defendant Follow the Dollar Signs?

Order Denying Discovery Regarding Litigation Financing, Space Data Corp. v Google LLC, N.D. Cal. (June 11, 2018) (Magistrate Judge Nathanael M. Cousins)

In recent years, third-party litigation financing has become increasingly common.  Funding by an outside investor in exchange for a stake in any recovery has raised questions about the ethics of this practice as well as about whether such information must be disclosed in the litigation.  With the exception of class actions, courts often have concluded that information about actual or potential litigation funding is immune from disclosure under the attorney work product doctrine or common interest privilege.


Turning the Looking Glass at the Alice Inquiry

Orders Denying Petition for Rehearing En Banc, Aatrix Software, Inc. v. Green Shades Software, Inc., Fed. Cir. (May 31, 2018); Berkheimer v. HP Inc., Fed. Cir. (May 31, 2018)

Last week, the Federal Circuit denied petitions for rehearing en banc in two separate cases:  Berkheimer v. HP, Inc. and Aatrix Software, Inc. v. Green Shades Software, Inc.  Both cases involved the question of whether an invention was patent-eligible under 35 U.S.C. § 101.  That is, in Berkheimer a digital file archiving idea and, in Aatrix, a data manipulation idea.  In the prior panel decisions, the Federal Circuit had determined that there were factual questions regarding patent eligibility in both cases, reversing the district court’s grant of judgment on the pleadings in each instance.  Although the denials for rehearing en banc were made in per curiam orders, what is unusual and noteworthy is that they were accompanied by concurring and dissenting opinions that dealt squarely with the question of how properly to analyze patentability under 35 U.S.C. § 101.  READ MORE

Labrador, Labrado, Labradont – Patent for Method for Genotyping Labrador Retrievers Found Invalid

Order Granting Motion for Judgment of Law, Genetic Veterinary Sciences, Inc. d/b/a Paw Prints Genetics v. LABOklin GmbH & Co. KG et al., (E.D. Va. May 14, 2018) (Judge Henry Coke Morgan Jr.)

Imagine this: You’re enjoying a nice day out with your Labrador Retriever when you notice his little puppy nose looks a bit dry and crusty. As days pass, the symptoms worsen and your pup develops a dry, rough, gray-to-brown crustiness on the tip of his nose. A trip to the veterinarian’s office leaves you with bad news, your puppy has Hereditary Nasal Parakeratosis (HPNK), a genetic defect caused by a mutation in a gene that regulates differentiation of nose skin cells. This specific mutation was identified by defendants who developed a corresponding method for genotyping Labrador Retrievers – the subject of U.S. Patent No. 9,157,114 (“the ‘114 patent”). Specifically, the ‘114 patent teaches an in vitro method for genotyping Labrador Retrievers in order to discover whether the Labrador Retriever might be a genetic carrier of the disease HNPK. READ MORE

ITC’s Amended Section 337 Rules Streamline Investigations

Orrick’s Jordan Coyle and Diana Szego Fassbender co-authored an article for Law360 on the U.S. International Trade Commission’s long-awaited final amendments to its Rules of Practice and Procedure pertaining to investigations under Section 337 of the Tariff Act. The amended rules are designed to reduce the costs and burdens associated with Section 337 investigations for parties, third parties and the commission. Jordan and Diana describe the most significant amendments to the rules, comment on the circumstances surrounding some of the amendments and offer practice tips.

Read the full article here.