Unworkable Interplay Between Court and PTO Proceedings Requires Stay of Litigation

The court sua sponte stayed plaintiff's patent infringement action pending ex parte reexamination to conserve judicial resources. "⁠[H]appening essentially in real time, there are accusations of perjury being submitted to the PTO based on declarations and arguments before this Court, and there are arguments of inequitable conduct being submitted to this Court based on accusations of perjury before the PTO. The questionable and challenging interplay between these two proceedings has become unworkable. Continuing in this tandem fashion will only ensure that even more judicial and agency resources are wasted. . . . It’s become apparent that there’s no chance of [...]

2018-03-23T11:26:02+00:00 March 23rd, 2018|Docket Report, Patent|

Expert’s Flawed Royalty Rate Analysis Requires New Trial on $75 Million Verdict

Following a jury verdict of $75 million, the court granted defendant's motion for new damages trial because the application of plaintiff's survey expert's results by plaintiff's damages expert was unreliable. "⁠[Plaintiff's damages expert] directly translated the roughly 28% of survey respondents who allegedly would not have bought [defendant's] phone without the infringing feature to [defendant's] profit in an effort to determine the potential 'at-risk' profit. . . . [The expert] did not consider the numerous patented features on the accused phones, many of which a consumer would consider essential, assuming [another expert's] survey results were extrapolated. . . . [He] [...]

2018-03-22T15:22:02+00:00 March 22nd, 2018|Docket Report, Patent|

Internal Invention Disclosure Document Protected by Attorney-Client Privilege

The court denied plaintiff's motion to compel the production of a clawed back deposition exhibit and found the document was privileged. "⁠[Senior in-house counsel] confirmed that [the exhibit] is consistent with the format required for submission of an invention disclosure to [defendant's Patent Review Committee] through the Portal. . . . Although [the exhibit] does not expressly state that it is a request for legal advice, the request is implied. . . . The fact that attorneys on the PRC required engineers or technical experts to assist them in evaluating the invention for purposes of determining whether to pursue a [...]

2018-03-21T11:56:03+00:00 March 21st, 2018|Docket Report, Patent|

Doctrine of “Ancillary” Venue Does Not Provide Independent Basis for Venue

The court granted counterclaim defendants' motion to dismiss for improper venue because defendants lacked a regular and established place of business in the district and ancillary venue did not apply. "Even assuming that [defendants] have committed acts of infringement in the Northern District of Illinois, venue would still be improper because neither maintains a 'regular and established place of business' in the District. [One defendant] has no offices or property in the District, and no phone number or mailing address here. [The other defendant] likewise does not have a regular and established place of business in the District. . . [...]

2018-03-20T12:19:02+00:00 March 20th, 2018|Docket Report, Patent|

Pre-Markman Attorney Fees Awarded Due to Unreasonable Manner of Litigation

The court awarded defendant its attorney fees under 35 U.S.C. § 285 and rejected plaintiff's argument that defendant was not entitled to attorney fees prior to claim construction. "The Federal Circuit stated that '⁠[plaintiff's] suit became baseless after the district court’s Markman order.'. . . However, as the Federal Circuit identified, this was not the extent of [plaintiff's] misconduct. [Plaintiff] also 'litigated the case in an "unreasonable manner.". . . [T]his Court, in an exercise of its discretion and as guided by the Circuit’s opinion and directive, finds that it is appropriate in this exceptional case to award [defendant] the [...]

2018-03-19T11:43:02+00:00 March 19th, 2018|Docket Report, Patent|

Nonparty’s Compilation of Prior Art Protected by Work Product Doctrine

The ALJ denied respondents' motion to certify for judicial enforcement its prior art subpoena to two nonparties whom complainants sued for infringement of the same patents in district court because the documents sought were protected attorney work product. "⁠[Nonparty] represents in its opposition that the prior art at issue 'was developed by [its] counsel because of' the district court litigation. [Respondent] speculates that [nonparty] may have also identified prior art 'outside the contours' of the district court case. [Respondent's] speculation, however, is groundless. . . . Such a compilation of prior art is protected under the work-product doctrine, even if [...]

2018-03-16T11:39:03+00:00 March 16th, 2018|Docket Report, Patent|

Previously Undisclosed Market Share Apportionment Theory Stricken From Expert Report

The court overruled plaintiff's objections to the magistrate judge's order partially striking the report of plaintiff's damages expert. "⁠[Plaintiff] contends . . . all of the information [the expert] relied upon in forming his market share apportionment opinion was made known to [defendant] during fact discovery. To the extent [defendant] needed additional third-party discovery, [plaintiff] alleges it is [defendant's] fault for not seeking it earlier. The Court disagrees. Even if all the information [the expert] relied upon in forming his opinion was made known to [defendant], the market share apportionment theory itself was never disclosed prior to [his] report. Instead, [...]

2018-03-15T11:33:02+00:00 March 15th, 2018|Docket Report, Patent|

Post-Trial Amendment of Pleadings Permitted to Assert Alter-Ego Claim Against Bankrupt Defendant’s Individual Owners

Following a $30 million jury verdict and defendant's filing for bankruptcy, the court granted plaintiff's motion to amend its complaint to add defendant's co-owners as defendants along with alter ego and veil-piercing claims. "⁠[Plaintiff] explains that it learned of [defendant's] and the [defendant's owners'] alleged efforts to avoid liability only when it reviewed the bankruptcy filings.⁠ . . . [Defendant] counters that [plaintiff] was 'on clear notice before trial of the substantial risk that [defendant] would be unable to pay the enormous sums [plaintiff] was seeking. Had it wanted to hedge its bets by asserting claims against other entities, it [...]

2018-03-14T11:28:03+00:00 March 14th, 2018|Docket Report, Patent|

Apple Not Collaterally Estopped From Denying Infringement by Redesigned Version of FaceTime

The court denied plaintiff's motion for summary judgment that the redesigned version of defendant's adjudicated product infringed its network security patents because there were genuine disputes of material fact which precluded a finding of collateral estoppel. "⁠Apple argues that issue preclusion is inapplicable here, as the redesigned product differs in design and operation from the product at issue in the [earlier lawsuit]. . . . Particularly, Apple notes that the accept message from the FaceTime servers to the caller device was changed between the first version of FaceTime and the redesigned FaceTime. Apple suggests this change to FaceTime was so [...]

2018-03-13T11:50:03+00:00 March 13th, 2018|Docket Report, Patent|

Office Closed a Few Weeks Before Lawsuit is a Regular and Established Place of Business for Venue

The court overruled defendant's objection to the magistrate judge's recommendation to deny its motion to transfer for improper venue because defendant had a regular and established place of business in the district through its office that closed a few weeks before plaintiff filed suit. "Abiding by the Federal Circuit's admonition that '⁠[i]n deciding whether a defendant has a regular and established place of business in a district, no precise rule has been laid down and each case depends on its own facts,' the undersigned finds that the fact that [plaintiff] filed suit in this District within weeks after [defendant] closed [...]

2018-03-12T11:40:03+00:00 March 12th, 2018|Docket Report, Patent|