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Morris James Blogs

Attorney is not disqualified, but conflicts counsel must be retained for any discovery directed to movant

TQ Delta, LLC v. 2Wire, Inc., et al., C.A. Nos. 13-1835-RGA; 13-1836-RGA; 13-2013-RGA, September 26, 2016.

Andrews, J. Plaintiff’s motion for clarification regarding conflict of interest allegations is granted in part and denied in part; non-party’s cross motion to disqualify plaintiff’s counsel is denied.

Non-party Broadcom argues that plaintiff’s counsel McAndrews is conflicted because of its former representation of Broadcom. It is undisputed that counsel and Broadcom have an attorney-client relationship, that his work in this case for plaintiff is materially adverse to Broadcom; and that Broadcom has not consented to counsel’s representation in this matter. The dispute is over whether the present matters are substantially related to matters in which counsel represented Broadcom.  The court finds that the matters are substantially related. The DSL patents on which counsel worked are related to the DSL chips accused in this litigation. His representation in this matter violates Rule 1.9. Plaintiff argues that Broadcom was aware of this representation and waived the conflict. The court finds there is a conflict, and in any event Broadcom did not waive a conflict with respect to counsel seeking Rule 45 discovery from Broadcom. The court finds the balance of factors weighs against disqualification. Although the representation was long and broad, it did not touch on the subject matter of this lawsuit to any great extent. The stage of these proceedings and their complexity also weigh against disqualification.  The court rules that plaintiff may retain counsel in this representation, but any discovery from Broadcom must be undertaken by conflicts counsel.

ANDA case survives motion for judgment on the pleadings

Novartis AG, et al. v. Ezra Ventures, LLC, C.A. No. 15-150-LPS, September 22, 2016.

Stark, C. J. Defendant’s motion for judgment on the pleadings is denied.  Oral argument took place on April 19, 2016.

Ezra's motion challenges the validity of the patent term extension of the patent-in-suit, which discloses compounds useful as immune suppressants, including fingolimod, the active ingredient in Plaintiffs' Gilenya product. The patent was set to expire in 2014, but the term was extended until February, 2019. Defendant argues that extension of the '229 compound patent beyond the life of the '565 patent is impermissible because it: (1) de facto extends the life of the method patent, (2) violates  the "bedrock principle” that the public may practice an expired patent; and (3) renders the '229 patent invalid for statutory and obviousness-type double patenting. The court finds that that (1) § 156(c)(4) permits the "de facto" patent term extension to which Defendant objects in this case.  Also, (2) defendant has not identified authority supporting the view that even a "fundamental" policy precept should override the express statutory language adopted by Congress. Finally, (3) fact issues remain as to the double patenting claim. Defendant’s motion is denied.

Court allows defendant to amend its pleadings to add defenses

SunPower Corporation v. PanelClaw, Inc., C.A. No. 12-1633 – MPT, September 19, 2016.

Thynge, C. M. J. Defendant’s motion to amend answer to assert inequitable conduct defenses is granted in part and denied in part. Defendant’s motion for leave to supplement its motion to amend is granted.

The disputed technology relates to photovoltaic roofing products.  The court finds that the motion to amend is timely and there was no undue delay in seeking leave to amend. No bad faith or undue prejudice. The court denies the motion with respect to allegations concerning a prior art patent and the prosecution of one of the patents-in-suit, noting that the Examiner was aware of the reference.  The motion has adequately pled facts relating to failure to disclose certain prior art relating to the second patent-in-suit, but denies the motion with respect to two pieces of prior art. The motion is denied with respect to allegations relating to the “real reason” plaintiff filed a reissue application.  Defendant has sufficiently pled claims alleging backdating and alteration of lab notebooks and also claims relating to the violation of the duty of candor and goof faith.  Remaining contested pleadings are not allowed.

Court resolves discovery disputes

Posted In Discovery

Novanta Corporation v. Iradion Laser, Inc., C.A. No. 15-1033 – SLR-SRF, September 16, 2016.

Fallon, M. J. Plaintiff’s motion to compel is granted in part and denied in part. A discovery dispute teleconference took place on September 12, 2016.

Plaintiff asks the court to require defendant to supplement its production of core technical documents and discovery responses. Defendant contends the requested discovery is irrelevant and disproportional to the needs of the case. The court requires defendant to produce recently discovered testing documents as well as documents relating to non-infringing products. It takes defendant at its word that it does not possess documents relating to other disputed categories. Defendant is ordered to produce these disputed core technical documents within 10 days. With respect to other documents, the court does not require production of documents relating to document retention and destruction policies, the location of defendant’s servers hosting e-commerce; general corporate documents unrelated to infringement; documents related to prior litigation; identification of certain defendants’ employees; and policies and opinions on infringement of patent rights. It compels the production of documents relating to fact witnesses who will testify at trial, and to produce a privilege log with respect to documents withheld, including those relating to fact witnesses. The plaintiff’s motion is granted in part and denied in part with respect to unaccused products. Plaintiff’s motion to compel more sufficient answers to its contention interrogatories is granted-in-part and denied-in-part.

Magistrate recommends dismissing co-plaintiff with prejudice

Posted In Dismissal

Contour IP Holding, LLC, et al., v. GoPro, Inc., C.A. No. 15-1108 – LPS-CJB, September 16, 2016.

Burke, M. J. Report and Recommendation recommending that Plaintiffs’ motion to dismiss one plaintiff with prejudice be granted.

Plaintiffs seek to dismiss the iON plaintiff with prejudice in that iON is not a necessary party and lacks standing to maintain infringement claims. Defendant does not oppose the motion but reserves any remedies it might have against iON in connection with this case such as recovery of attorneys fees and costs, and any remedies it may have against the remaining plaintiff in connection with adding iOn to this case.

Judgment on the pleadings is granted due to unpatentable subject matter

Callwave Communications, LLC v. AT&T Mobility, LLC, et al., C.A. Nos. 12-1701-RGA; 12-1704-RGA; 12-1788-RGA, September 15, 2016.

Andrews, J. Defendants’ renewed motions for judgment on the pleadings based on section 101 are granted.  Oral argument took place on March 16, 2016.

The patent-in-suit is directed to systems and methods of determining the location of mobile platforms. Pursuant to Mayo and Alice, the court finds that the asserted claims are directed to the abstract idea of relaying location information via an intermediary. Furthermore, there is no inventive concept as the claims are the quintessential example of implementing an abstract idea using generic computer components.

Case is dismissed for lack of patentable subject matter

Nice Systems Ltd., et al. v. Clickfox, Inc., C.A. No. 15-743-RGA, September 15, 2016.

Andrews, J. Defendant’s motion to dismiss for failure to state a claim as to patentable subject matter is granted. Its motion to dismiss for failure to state a claim of induced infringement is dismissed as moot. Oral argument took place on April 22, 2016.

The disputed technology relates to a system and method of tracking web interactions and using that information to generate real-time recommendations. Plaintiff contends the patent is directed to a computer-rooted, Internet-specific problem, while defendant claims  it covers a basic business concept of providing a customer recommendation by gathering data from on communication channel and providing a recommendation by another.  Under the Mayo/Alice analysis, the court finds the claims are directed to the abstract idea of cross-channel customer service. In addition, the court finds no inventive concept in the asserted claims of the patent.

Improper inventorship defense is allowed

Intellectual Ventures I LLC, et al. v. Toshiba Corporation, et al., C.A. No. 13 – 453- SLR, September 7, 2016.

Robinson, J. Defendants’ motion for leave to amend their amended answers is granted.

April 24, 2015 was the deadline to amend pleadings.  An amended schedule provided that facto discovery was to close March 11, 2016 and expert discovery by July 1, 2016.  On June 15, 2016 defendants moved to include a defense of improper inventorship.  Defendants seek to invalidate the patent rather than obtain a certificate of correction.  The patent issued 17 years before this motion was filed. Defendants claim they could not have filed the motion before the purported inventor’s deposition was taken.  The court bifurcates the new defense for discovery and separate motion practice and trial.

Claims are construed in pharmaceutical formulations case

Cosmo Technologies Limited, et al. v. Actavis Laboratories FL Inc., et al., C.A. Nos. 15-164-LPS; 15-193-LPS, September 7, 2016.

Stark, C. J.   Claim construction opinion issues regarding seven terms from four patents.  A Markman hearing took place on July 11, 2016.

The disputed technology relates to formulations containing budesonide, which are used to treat ulcerative colitis. The following terms were considered:

  1. “matrix”
  2. “macroscopically homogeneous composition" and "macroscopically homogeneous structure”
  3. "outer hydrophilic matrix"
  4. "lipophilic matrix"
  5. "amphiphilic matrix"
  6. "melting point"
  7. "lipophilic/amphiphilic matrix"

Dismissal due to unpatentable subject matter is denied without prejudice

Posted In Dismissal

JSDQ Mesh Technologies LLC v. Fluidmesh Networks LLC, C.A. No. 16-212 – GMS, September 6, 2016.

Sleet, J. Defendant’s motion to dismiss for patent ineligible subject matter under section 101 is denied without prejudice.

Defendant asserts that a representative claim discloses a method of providing a radio communication route among nodes independent of a central computer.  There are four patents-in-suit, and the court is not convinced that defendant has identified a consistent abstract idea upon which to base its motion under Alice.  There is thus a factual dispute as to whether the non-representative claims add inventive concepts that would result in patent eligibility.  No reason has been asserted as to whether there are issues of claim construction must be resolved before deciding the motion.  The court is not inclined to dismiss without claim construction and discovery. The motion is denied without prejudice.

New trial is granted with respect to anticipation

EMC Corporation, et al. v. Pure Storage, Inc., C.A. No. 13-1985 – RGA, September 1, 2016.

Andrews, J. Defendant’s renewed JMOL and new trial motion is denied in part with respect to JMOL and granted in part and denied in part with respect to a new trial.  Plaintiff’s motion for a permanent injunction is denied as moot.

Trial took place beginning March 7, 2016. The jury found that plaintiff prevailed on one of the three patents-in-suit and awarded reasonable royalty damages in the amount of $14 million. The technology relates to systems and methods for efficient data storage, including eliminating data redundancy using deduplication. The court finds that a reasonable jury could have found defendant failed to meet its burden to prove anticipation with respect to certain prior art references.  However, the jury did not make a finding whether a particular reference, the sun patent, discloses each and every limitation of the asserted claims of the disputed patent. A reasonable jury could find that this patent discloses or does not disclose the claimed “space efficient, probabilistic summary.”  This question cannot be decided as a matter of law and is therefore a fact question for the jury. Defendant is entitled to JMOL with respect to other disclosures in this prior art reference. A new trial is granted on the issue of anticipation by the sun patent.

Defendants’ labels induce infringement in this dronedarone case

Sanofi, et al. v. Glenmark Pharmaceuticals Inc., USA, et al., C.A. No. 14-264 – RGA, August 31, 2016.

Andrews, J. Court makes rulings following a three-day bench trial and post-trial briefing.

The disputed product in this ANDA case is 400 mg dronedarone tablets used as an antiarrhythmic drug. The court finds that defendants’ proposed product labels induce infringement of 12 claims of one patent but not another of the asserted claims. There are substantial non-infringing uses for this drug and there is no contributory infringement. All asserted claims of the patent-in-suit are valid.  The disclaimer of polysorbate surfactants in one patent does not carry over to that patent’s parent. The court’s claim construction of “nonionic hydrophilic” was disputed in in limine motions, and after post-trial briefing, the court revisits that construction.

Discovery from foreign affiliate is denied

Posted In Discovery

Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., et al., C.A. No. 12-1461-LPS-CJB, August 31, 2016.

Burke, M. J. Plaintiff’s motion to compel discovery is denied.  Argument took place on August 25, 2016.

Plaintiff seeks core technical documents regarding certain accused products that are in the possession of defendant’s foreign affiliates. He court finds that plaintiff has not demonstrated defendant’s control over the documents in the possession of the foreign affiliates such that the U.S. defendant should be required to produce them.  Very little evidence about the relationship between the companies was provided. The foreign affiliates have different presidents, separate Boards of Directors, and the US company does not have access to or authority to direct the foreign entity to turn over its documents. There is furthermore no record that employees of the foreign entities are directing this litigation. This does not foreclose plaintiff from obtaining the evidence by other means, i.e.  either through a renewed motion with a more developed record or through the Hague Convention.

Court allow Hague deposition albeit after close of fact discovery

Posted In Discovery

Cosmo Technologies Limited, et al. v. Actavis Laboratories FL, Inc., et al., C.A. No. 15-164 – LPS; 15-193-LPS, August 31, 2016 (Unsealed September 2, 2016).

Stark, C.J. Defendants’ Rogatory motion is granted.

Defendants seek the assistance of the Italian authorities in compelling the testimony of the named inventor of the patent-in-suit. Defendants deposed the other inventors and then moved to supplement their motion with evidence discovered after the initial briefing. The court finds the supplemental brief will assist the court and grants that motion. Defendants argue that his testimony as unlikely to be duplicative and that documents relating to him are few.  Plaintiff contends, however, that the motion is untimely. The court finds that waiting until after completion of document production was reasonable and the motion is not untimely. Although taking a deposition in Italy after the close of fact discovery is not a trivial concern, there is sufficient time left in the schedule to allow for the deposition. Defendants’ potential prejudice outweighs any perceived prejudice to plaintiff.

Claims are construed in roofing technology case

SunPower Corporation v. PanelClaw, Inc., C.A. No. 12-1633-MPT, August 31, 2016.

Thynge, C.M. J.   Claim construction opinion issues regarding eight terms from one patent.  A Markman hearing took place on June 3, 2016.

The disputed technology relates photovoltaic roofing assembly. The following terms were considered:

  1. “fluidly coupling”
  2. “spacer”/”variable-height spacer”
  3. “access openings”
  4. “whereby wind uplift forces are resisted”
  5. “combined weight of about 2-4 (or 1.67-5) pounds per square foot”/” plurality of PV assemblies has a weight of not more than about four pounds per square foot”
  6. “means for interlocking”
  7. “means for interengaging adjacent photovoltaic assemblies, said array defining a perimeter”
  8. “means for resisting wind uplift forces sufficiently to eliminate the need for penetrations to the rooftop”