Patent Lawyer Blog

Published on: August 19, 2013

Tomita v. Nintendo: Remittitur or New Trial Ordered on $30M Damage Verdict Where Jury Likely Weighed Profitability of Games Rather Than the Profitability of the Accused Device

Tomita Technologies USA, LLC (“Tomita”) won a jury verdict of $30M against Nintendo in patent infringement action. The jury found that Nintendo’s 3DS infringed the patent-in-suit (the ‘664 patent) and that the ‘664 patent was not invalid. Nintendo filed several post-trial motions, including a motion for a remittitur of the damages or a new trial.

The district court explained the background of the case as follows: “The ‘664 patent is a patent relating to stereoscopic (or 3D) imaging technology and includes four major elements: (1) ‘a stereoscopic video image pick-up device’ (i.e., two cameras), (2) a ‘stereoscopic video image display,’ (3) a ‘cross-point measuring means for measuring [cross-point] information on the cross-point (CP) of optical axes,’ and (4) an ‘offset presetting means for offsetting and displaying said different video images.’ U.S. Patent No. 7,417,664 col. 2, 1.44-65. Tomita claims that Nintendo uses the `664 patent’s technology in the 3DS’s two outer cameras. Thus, only the 3DS’s camera application (which allows the user to take and view 3D photos and videos) and the augmented reality (“AR”) game card application (which allows some games to be superimposed over real-world images captured by the 3DS’s cameras) are at issue. The 3DS’s other applications, including its 3D display, do not rely on the `664 patent.”
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Published on: August 19, 2013

Stay Pending Inter Partes Review Granted Even Where Defendant Seeking Stay Had Not Initiated the Review

by Stan Gibson

Plaintiff e-Watch, Inc. filed a patent infringement action against several defendants, including Defendant FLIR Systems, Inc. (“FLIR”). FLIR filed a motion to stay pending an inter partes review of the patent-in-suit by the Patent Office.

In deciding to grant the stay, the district court noted that the action was at an early stage and that the inter partes review could simplify the issues in the case. “This action is at a very early stage, and a stay could materially simplify the issues in the case if the United States Patent and Trademark Office (“USPTO”) decides to institute an inter partes review with respect to either of the patents at issue.”
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Published on: August 14, 2013

Patent Acquisition Bar Precluding Plaintiff’s Counsel from Advising Any Clients on the Acquisition of Patents Granted Where Defendant Was Disclosing “Crown Jewel” Technology

by Stan Gibson

In this patent infringement action, Defendant Sirius XM Radio, Inc. (“Sirius”) sought a “patent acquisition bar” against plaintiff’s counsel from Freitas Tseng & Kaufman, LLP (“Freitas”). In seeking the bar, Sirius asserted that the Freitas attorneys who would gain access to Sirius’ confidential technical information should be barred from advising any clients in the “acquisition of patents involving satellite radio signal processing for the purpose of asserting them against” Sirius for two years after the conclusion of the litigation, including any appeals. Freitas objected to the patent acquisition bar.
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Published on: August 12, 2013

Motion for Leave to Amend Infringement Contentions Denied Where Plaintiff Sought to Add Thousands of New Products

by Stan Gibson

Plaintiff Keranos, LLC (“Keranos”) alleged that Silicon Storage Technology (“Silicon Storage”) and other defendants infringed three related patents by manufacturing certain flash memory products. Keranos sought leave to amend its infringement contentions to add additional products that the defendants disclosed during discovery.

As explained by the district court, the Eastern District of Texas’ Local Patent Rule 3-1 requires a party claiming infringement to identify each accused product in its infringement contentions. The “identification shall be as specific as possible,” including name and model number, if known. PR 3-1(b). Generally, infringement contentions may only be amended or supplemented upon a showing of good cause. PR 3-6(b). The Court considers four factors when reviewing a motion to amend infringement contentions: “(1) the explanation for the party’s failure to meet the deadline, (2) the importance of what the Court is excluding, (3) the potential prejudice if the Court allows the thing that would be excluded, and (4) the availability of a continuance to cure such prejudice.” Alexsam Inc. v. IDT Corp., No. 2:07-cv-420-CE, 2011 WL 108725, at *1 (E.D. Tex. Jan. 12, 2011). As part of the good cause showing, the party seeking to amend must demonstrate that it was diligent in discovering the additional products and in seeking to amend. Id.; see also West v. Jewelry Innovations, Inc., No. C 07-1812, 2008 WL 4532558, at *2 (Oct. 8, 2008) (finding that a party must be diligent in discovering the basis for amendment).
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Published on: August 7, 2013

Motion to Strike Expert Testimony Granted to Preclude Expert’s “Logic Analysis” to Determine the Physical Structure of a Circuit but Expert Permitted to Opine That Logic of Accused Circuit Corresponds to Patent

by Stan Gibson

Plaintiff Cobra International, Inc. (“Cobra”) filed a patent infringement action against several defendants, including BCNY International (“BCNY”) alleging infringement of a patent for the design of lighted footwear. The defendants create children’s shoes that have a small electrical module with an integrated circuit mounted on a chip. As explained by the district court, “[t]he chip, which is mounted on a circuit board and covered by a dot of epoxy, is a small rectangular piece of silicon less than one-quarter of an inch across on which the various electrical components are formed through a multi-layer process. The chip is connected to a switch, a battery, and a number of LED lights on the outside of the shoe. When the switch is triggered, the LEDs flash in a pattern for a short period and then stop.”

The Defendants moved to exclude two of Cobras expert opinions: (1) the opinion that the schematics relied on by Defendants do not accurately represent the circuit in the accused product; and (2) the opinion that the circuit in the accused product uses the same “logic” as Cobra’s patent.
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Published on: August 5, 2013

Plaintiff Allowed to Amend Complaint to Include Willful Infringement Based on Allegation That Defendant Continued to Sell Infringing Products after Learning of Patent Through Service of Original Complaint

by Stan Gibson

Englishtown, Inc. (“Englishtown”) filed a patent infringement action against Rosetta Stone, Inc. (“Rosetta Stone”) for alleged infringement of patents pertaining to language-learning products, software, online services and practice tools. Englishtown sought leave to amend its complaint to include an allegation of willfulness based solely on post-litigation knowledge and conduct. Rosetta Stone opposed the motion on the ground that the amendment would be futile.

As explained by the district court, “[t]o prevail on a claim of willful infringement, the patentee must prove that: (1) the accused infringer ‘acted despite an objectively high likelihood that its actions constituted infringement of a valid patent’; and (2) this objectively defined risk was either known or so obvious that the accused infringer should have known about it. K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1378 (Fed. Cir. 2012).”
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Published on: July 31, 2013

Declaratory Judgment Jurisdiction Found Where Patent License Negotiations Reached an Impasse and NDA Did Not Preclude a Lawsuit

by Stan Gibson

Plaintiff Biomet, Inc. (“Biomet”) filed a complaint for Declaratory Judgment against Bonutti Skeletal Innovations, LLC (“Bonutti”) seeking a declaration that the manufacture, use, or sale of Biomet’s products does not infringe on Bonutti’s patents. Bonutti filed a motion to dismiss for lack of subject matter jurisdiction pursuant to Fed. R. Civ.P. 12(b)(1), arguing that, at the time the complaint was filed, there was no case or controversy as defined by the Declaratory Judgment Act, 28 U.S.C. § 2201(a).

The district court explained the facts as follows. In June 2012, Acacia Research Group (ARG), Bonutti’s parent company, contacted Biomet about a new licensing agreement. Shortly afterwards, Plaintiff and ARG began negotiating the terms of the licensing agreement. The bargaining process included the signing of a Non-Disclosure Agreement (“NDA”). The NDA’s purpose was to facilitate the licensing of patents to avoid litigation. There was nothing in the NDA that prevented the parties from filing a lawsuit against each other at any point, for any reason.
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Published on: July 29, 2013

Disclosure of Opinions of Counsel to Customers Waived Privilege as to the Opinions and the Subject Matter of the Opinions

by Stan Gibson

Plaintiff The Procter & Gamble Company (“Plaintiff”) filed a patent infringement action against Clio USA, Inc. (“Clio”). Plaintiff moved to compel certain opinions of counsel and other documents concerning the subject matter of those opinions. In the litigation, Clio had produced to Plaintiff copies of two abridged opinions, which were marked on their face as containing privileged communications.

Clio intentionally disclosed the abridged opinions to various third parties, including Clio’s co-Defendants, the co-Defendants’ customers, and Plaintiff. Clio claimed that it disclosed one of the abridged opinions to co-Defendants under a common interest privilege. But Plaintiff identified documents from co-Defendant Team Technologies, Inc. (“Team Tech”) showing further dissemination of counsel’s opinions to retailers. For example, CVS demanded documentation of a “legal nature” to “show there is no patent infringement,” and Clio responded that it would provide such documentation. Meijer requested a similar legal opinion, and a legal opinion letter was furnished to CVS.

Plaintiff asserted that these productions waived the attorney client privilege.
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Published on: July 24, 2013

Adobe Moved to Disqualify Opposing Counsel Where Counsel Had Done Opinion Work and Had Never Sent a Letter Terminating the Relationship Before It Took Matter Adverse to Adobe

by Stan Gibson

Plaintiff TQP Development, LLC (“TQP”) filed a patent infringement action against Adobe Systems Incorporated (“Adobe”). TQP was represented by the law firm of Russ August & Kabat in the action against Adobe (“RAK”). Based on the fact that RAK had previously represented Adobe in opinion work, Adobe moved to disqualify RAK.

As explained by the district court, “[i]t is undisputed that RAK, the current lead counsel for TQP, represented Adobe in a series of matters between 2006 and 2012 involving the issuance of opinion letters concerning whether Adobe products infringed certain patents. The last of these engagements, herein referred to as the “Manufacturers” matter, commenced in 2010 with an analysis of certain patents owned by Manufacturers and whether they were infringed by Adobe products. According to the Declaration of Nicholas Martini (Dkt. No. 34-4), these opinions were updated and revised several times through December 2011 (requiring about 112 hours of RAK attorney time) as additional patents were obtained by Manufacturers and additional information was received by Adobe. The last services by RAK on this matter were provided by Marc Fenster of RAK during a February 6, 2012 conference call with two of Adobe’s inside counsel and a Senior Vice President. Mr. Fenster declares that he asked during this call whether Adobe needed any further work on this matter and he was told they did not. The Adobe declarants do not recall this exchange. Both sides agree that there were no further communications regarding the matter before Mr. Fenster and RAK undertook to represent TQP in this matter several months later.”
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Published on: July 22, 2013

Inequitable Conduct Claim Dismissed on Summary Judgment Motion Where Conduct of Patent Prosecutor Was Disputed and Did Not Require a Finding of Intent to Deceive

by Stan Gibson

KFx Medical Corp. (“KFx”) alleged that Arthrex, Inc. (“Arthrex”) infringed three of its patents: United States Patent Number 7,585,311 (“311 Patent”), United States Patent Number 8,100,942 (“942 Patent”) and United States Patent Number 8,109,969 (“969 Patent”). All three patents share the same name: “System and Method for Attaching Soft Tissue to Bone.” KFx’s moved for summary judgment of no inequitable conduct in connection with the ‘942 Patent and the ‘969 Patent.

As explained by the district court, Arthrex’s claim of inequitable conduct was directed to the conduct of Ryan Melnick, the attorney who prosecuted the patents. Arthrex alleged that Mr. Melnick intentionally diverted the Examiner of the ‘942 and ‘969 Patents away from a statement by KFx’s President and CEO, Tate Scott (“the Scott Statement”), and instead directed the Examiner to less relevant prior art references. Arthrex contended the Scott Statement explained that the work performed in a 2004 article by Peter J. Millett, M.D., et al., entitled “Mattress Double Anchor Footprint Repair: A Novel, Arthroscopic Rotator Cuff Repair Technique” (“the Millett article”) was prior art to all of the patents. Arthrex claimed that Mr. Melnick’s diversionary tactic caused the Examiner not to apply the Millett article, and that if the Examiner had applied that article, he would have rejected the claims. Arthrex also asserted that “Mr. Melnick failed to disclose to the Examiner the correct priority date for the ‘969 patent and, in fact, took steps to mislead the Examiner into believing the ‘969 patent was entitled to the same priority date as the ‘942 patent, when he knew it was not.”
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