It’s no secret that patent litigation is expensive—especially when multiple patents and a multitude of claims are in play. In 2015, the American Intellectual Property Law Association estimated the median cost of patent litigation, through trial, ranged from $600,000 in lawsuits with less than $1 Million at risk to $5 Million in lawsuits with more than $ 25 Million at risk. Given this expense and the complexity of these cases, it’s not surprising that courts and parties have sought ways to minimize the resources consumed by patent litigation through various narrowing tools particular to patent lawsuits, including by limiting the number of claims and/or patents litigated in a given lawsuit. READ MORE
Usually, one benefit of being a plaintiff is deciding in what forum to pursue litigation. Generally, even a foreign-based plaintiff may pursue litigation in a U.S. forum where a defendant may be found or in which there is a substantial connection to the litigation. There are, however, limits on a plaintiff’s choice of forum, and a recent decision in Tapgerine LLC v. 50Mango, Inc. demonstrates that pushing those limits may result in sanctions. READ MORE
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.
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
Order Re Crossroads’ Motion To Strike, Quantum Corporation v. Crossroads Systems Inc., Case No. C 14-04293 WHA (Judge William Alsup)
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.
Leading us into summer, the interplay between district court and patent office was a hot issue. We learned more about what ND Cal judges do with cases when the PTO is not reviewing all asserted patents: Judge Armstrong and Judge Davila showed their willingness to stay early-stage, non-competitor cases in their entirety, while Judge Orrick held that the PTO’s denial of IPR on some of the patents did not justify lifting a previously imposed stay. And what of patentees’ use of PTO proceedings? Well, Judge Alsup held that the patentee’s amending claims through reexamination did not justify vacating the Court’s earlier decision invalidating the unamended claims.
There was also plenty of business as usual as ND Cal judges managed their cases and dockets. Showing sensitivity to the burdens of discovery, the court issued a new patent-specific model order for e-discovery, while Judge Cousins ordered that depositions of party employees occur in the Northern District rather than foreign jurisdictions where the companies were headquartered. We also saw illuminating rulings on pleading motions, claim construction, transfers, declaratory judgment of non-infringement, and attacks on damages experts.
Outside the court, the UC system’s “active patenting and patent licensing program” led it to top the list in number of patents granted to a university, while local company Tesla Motors promised not to sue on its patents.
Finally, at the end of June, patent practitioners and judges across the country, including the ND Cal, bid farewell to the appellate oversight of Judge Rader, who stepped down from the Federal Circuit bench.
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