Patent Docket Report for April 3, 2018
Patent ReportApril 3, 2018
Post-Hoc "Parade of Horribles" Does Not Justify Award of Attorney Fees
Following a jury trial, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics as a whole were not exceptional. "Defendants’ strategy with its § 285 Motion seems to be to throw out as many different aspects of Plaintiff’s behavior as it can to support its fee request and 'see what sticks.' But it would be both tedious and wasteful for the Court to consider each and every individual tree when it should be looking at the landscape in the bigger forest. . . . And while perhaps true that Plaintiff had some shortcomings in its litigation and pre-litigation conduct and positions, the Court is unconvinced that those shortcomings amount to a showing that Plaintiff’s behavior was exceptional. . . . A party cannot simply hide under a rock, quietly documenting all the ways it’s been wronged, so that it can march out its 'parade of horribles' after all is said and done. That is the tenor of many of Defendants’ arguments here. Or alternatively, where Defendants did come forward at some point and challenged Plaintiff’s positions with some success, Defendants have not proven that they have been exceptionally wronged -- they got at least some of the relief they sought."
ATEN International Co., Ltd. v. Uniclass Technology Co., Ltd. et al, 2-15-cv-04424 (CACD 2018-03-30, Order) (Andrew J. Guilford)
 
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United States District Courts
 
13 New cases
2 Awards
1 Injunction
6 Claim terms construed
3 Determinations
19 Significant decisions
 
  
Patent Trial & Appeal Board
 
6 New petitions
27 Claim terms construed
1 Determination
17 Institution decisions
9 Significant decisions
 
  
International Trade Commission
 
1 New case
1 Significant decision
 
 
United States District Courts - New Cases
 
Interlink Products International, Inc. v. Aldi, Inc.  
1-18-cv-02344 (ILND) April 2, 2018
District Judge Jorge L. Alonso
 
Claim
Infringement
 
Defendant
Aldi, Inc.
 
Plaintiff
Interlink Products International, Inc.
 
Law Offices of Jason B. Lattimore
Jason B Lattimore
 
SpencePC
Jacob R Graham
Jason M Wejnert
William Cory Spence
 
 
Patents
 
7299510 November 27, 2007
Holder device for shower head and nozzle
7373954 May 20, 2008
Multi-ways water distributing device
 
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Progme Corporation v. Fox Network, LLC et al  
2-18-cv-11057 (MIED) April 2, 2018
Magistrate Judge Mona K. Majzoub
District Judge Avern Cohn
 
Claim
Infringement
 
Defendant
Fox Broadcasting Company
 
Plaintiff
Progme Corporation
 
Law Office of David A. Reams
David A Reams
 
 
Patents
 
8713425 April 29, 2014
Audio/video program-related hyperlink printer
 
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United States District Courts - Significant Decisions
 
ATEN International Co., Ltd. v. Uniclass Technology Co., Ltd. et al  
2-15-cv-04424 (CACD) March 30, 2018
District Judge Andrew J. Guilford
 
Motion for Attorney Fees (35 USC § 285) Denied
  Attorney Fees Denied
  Litigation Misconduct
Following a jury trial, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics as a whole were not exceptional. "Defendants’ strategy with its § 285 Motion seems to be to throw out as many different aspects of Plaintiff’s behavior as it can to support its fee request and 'see what sticks.' But it would be both tedious and wasteful for the Court to consider each and every individual tree when it should be looking at the landscape in the bigger forest. . . . And while perhaps true that Plaintiff had some shortcomings in its litigation and pre-litigation conduct and positions, the Court is unconvinced that those shortcomings amount to a showing that Plaintiff’s behavior was exceptional. . . . A party cannot simply hide under a rock, quietly documenting all the ways it’s been wronged, so that it can march out its 'parade of horribles' after all is said and done. That is the tenor of many of Defendants’ arguments here. Or alternatively, where Defendants did come forward at some point and challenged Plaintiff’s positions with some success, Defendants have not proven that they have been exceptionally wronged -- they got at least some of the relief they sought." (page 4)
 
  Attorney Fees Denied
  Pre-Filing Investigation
Following a jury trial, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 on the ground that plaintiff's pre-filing investigation was unreasonable. "Defendants’ affirmative arguments regarding the sufficiency of Plaintiff’s original infringement contentions and late-disclosed infringement theories leads the Court to again ask its number one reemerging question. (I.e., why didn’t Defendants raise its concerns with the contentions sooner?). The Court doesn’t believe Defendants’ belated arguments regarding Plaintiff’s contentions are sufficient to prove that Plaintiff conducted an insufficient pre-filing investigation. . . . Defendants simply haven’t persuasively proven, by a preponderance of the evidence, that Plaintiff failed to conduct an adequate pre-filing investigation. Importantly, the burden is on Defendants -- not Plaintiff -- to make such a showing on this Motion." (page 6)
 
 
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Bristol-Myers Squibb Company et al v. Prinston Pharmaceutical Inc.  
1-17-cv-00426 (DED) March 30, 2018
District Judge Leonard P. Stark
 
Outcome: Settled/Voluntarily Dismissed
Patent Infringement
 
Patentee Patent Challenger
Bristol-Myers Squibb Company
1 MORE
Prinston Pharmaceutical Inc.
 
 
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Sumitomo Dainippon Pharma Co., Ltd. et al v. Aurobindo Pharma Ltd. et al  
2-18-cv-02620 (NJD) March 29, 2018
Magistrate Judge Cathy L. Waldor
 
Outcome: Non-merits dismissal
Patent Infringement
 
Patentee Patent Challenger
Sumitomo Dainippon Pharma Co., Ltd.
1 MORE
Par Pharmaceutical, Inc.
 
 
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Cioffi et al v. Google Inc.  
2-13-cv-00103 (TXED) March 29, 2018
District Judge Rodney Gilstrap
 
Motion for New Trial Denied In Part, Granted in Part
  Issues for Jury Versus Court
  Recapture Rule
Following a jury verdict of infringement and no invalidity, the court granted in part defendant's motion for a new trial and ordered a bench trial on defendant's 35 U.S.C. § 251 invalidity defense. "⁠[T]he Court concludes that sending a question as to the recapture rule justifies a grant of appropriate post-trial relief to [defendant]. While the Federal Circuit has indeed stated that the 'underlying factual findings [of the recapture rule] are reviewed for substantial evidence,' implying that resolution by a jury is proper, the appellate court has, on balance, reserved the issue to the determination of the trial court. . . . Absent definitive controlling authority to the contrary, the Court concludes that, like prosecution history estoppel, it is proper for the Court as opposed to the jury to determine whether or not the recapture rule was violated." (page 8)
 
  Issues for Jury Versus Court
  Recapture Rule
Following a jury verdict of infringement and no invalidity, the court denied in part defendant's motion for a new trial after ordering a bench trial on defendant's 35 U.S.C. § 251 invalidity defense. "⁠[Defendant's] argument that a new trial on all issues is warranted in this case [is] without merit. In some instances, the improper submission of issues to the jury may cause jury confusion and can take material time away from the parties to present their cases. This is not such a case. . . . [Defendant] 'did not use its full 12 hours.' As to any possible jury confusion, juries routinely consider the evidence relevant to a § 251 consideration -- e.g., a patent’s claims, a patent’s specification, and opinion testimony -- to resolve fact issues in a patent infringement case. Such consideration is not confusing to juries and no evidence of confusion has been presented here." (page 10)
 
 
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Patent Trial & Appeal Board - New Petitions
 
Comcast Cable Communications, LLC et al v. Promptu Systems Corporation  
CBM2018-00033 (PTAB) April 2, 2018
Claim
PTAB Petition for Covered Business Method Patent Review
 
Defendant
Promptu Systems Corporation
 
Plaintiff
Comcast Cable Communications, LLC
Comcast Corporation
 
Farella Braun + Martel
Daniel C Callaway
James L Day
 
Keker Van Nest & Peters
Leo L Lam
 
 
Patents
 
7047196 May 16, 2006
System and method of voice recognition near a wireline node of a network supporting cable television and/or video delivery
 
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Alnylam Pharmaceuticals, Inc. et al v. Silence Therapeutics GmbH  
PGR2018-00059 (PTAB) April 2, 2018
Claim
PTAB Petition for Post Grant Review
 
Defendant
Silence Therapeutics GmbH
 
Plaintiff
Alnylam Pharmaceuticals, Inc.
Alnylam US, Inc.
Sanofi Genzyme
The Medicines Company
 
Fitzpatrick Cella Harper & Scinto
Prajakta Anilkumar Sonalker
Scott K Reed
 
 
Patents
 
9695423 July 4, 2017
Interfering RNA molecules
 
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Patent Trial & Appeal Board - IPR/CBM Institutions
 
Google, Inc. et al v. Uniloc Luxembourg SA et al  
IPR2017-02067 (PTAB) March 29, 2018
Petitioner Google LLC (and 6 others)
 
Patent Owner Uniloc Luxembourg SA (and 1 others)
 
Patent 8995433
System and method for instant VoIP messaging
 
Administrative Patent Judge Miriam L. Quinn
 
 
Institution Rulings
Grounds Claims Result
Anticipation (§102) 9, 12-14, 17, 25 Denied
Obviousness (§103) 1-8, 10, 11, 15, 16, 18-24, 26, 27 Denied
 
PTAB Institution of Inter Partes Review Denied
  PTAB Same prior art or arguments (35 U.S.C. § 325(d))
  Other PTO proceedings (35 U.S.C. 315(d))
The Board denied the institution of inter partes review of an internet phone patent under 35 U.S.C. §§ 315(d) and 325(d) where the challenged patent claims were already the subject of other IPRs over the same primary prior art reference. "⁠[O]ur exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on [WIPO patent application '824] as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on [the '824 application] in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, [the '824 application] is being considered on the merits in pending IPRs. . . . [and] the time of filing of this Petition leads us to conclude that Petitioner gained the benefit of Patent Owner’s preliminary responses in the previous IPRs. Patent Owner filed those responses . . . [and t]hree days later Petitioner filed the instant petition. . . . We look to Petitioner to explain its delay in its filing. Petitioner provides no reason here." (page 9)
 
 
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Patent Trial & Appeal Board - Significant Decisions
 
Emerson Electric Co. et al v. IPCO, LLC et al  
IPR2017-00007 (PTAB) March 29, 2018
Petitioner Emerson Electric Co. (and 3 others)
 
Patent Owner IPCO, LLC (and 2 others)
 
Patent 8233471
Wireless network system and method for providing same
 
Administrative Patent Judge Robert J. Weinschenk
 
 
Patent Determinations
8233471 Unpatentable/Cancelled
Wireless network system and method for providing same
 
 
Claim Terms Construed
8233471 9 Terms
Wireless network system and method for providing same
 
PTAB Final Written Decision -- Patentability of Challenged Claims N/A
  Combining/Modifying Prior Art Elements
In a final written decision, the Board found claims of a wireless network transmission patent unpatentable as obvious under 35 U.S.C. § 103 over a combination of references. "Petitioner argues that a person of ordinary skill in the art would have had a reason to combine the cited teachings of [a conference proceeding publication 1004] and [an IEEE article]. We agree with and adopt Petitioner’s reasoning. Specifically, [the conference proceeding and article] relate to the same field of endeavor as the ’471 patent, that is, a wireless network for transmitting data packets between clients and servers. . . . It would have been obvious to a person of ordinary skill in the art to combine [the two references] because [the IEEE publication's] search protocol would have improved [the conference publication's] network by increasing the likelihood of successfully transmitting a data packet to its intended destination. In addition, a person of ordinary skill in the art reasonably would have expected the combination to work. . . . Like [the conference publication and the IEEE article], [a conference proceeding publication 1007] relates to the same field of endeavor as the ’471 patent, that is, a wireless network for transmitting data packets between clients and servers. It would have been obvious to a person of ordinary skill in the art to combine [publication 1004] and [publication 1007] so that [the 1004 publication's] station implements [the 1007 publication's] authentication technique to advantageously prevent unauthorized access. In addition, a person of ordinary skill in the art reasonably would have expected the combination to work. . . . Petitioner has shown by a preponderance of the evidence that claims 2–4, 6–8, 10–12, 14–16, 40, and 41 of the ’471 patent are unpatentable." (page 30)
 
  Secondary Considerations
In a final written decision, the Board found claims of a wireless network transmission patent unpatentable as obvious under 35 U.S.C. § 103 and rejected the patent owner's arguments for secondary considerations of nonobviousness. "Patent Owner argues that certain objective indicia, including a long-felt but unmet need and unexpected results, demonstrate non-obviousness of the challenged claims. . . . Patent Owner argues that there is a nexus between the evidence of a long-felt but unmet need and the challenged claims. In particular, Patent Owner contends that 'the ’471 patent solved this long-felt need . . . by employing both centralized and decentralized features in which a server maintains a tree with paths (centralized) and clients selected paths to the server independently (decentralized).' . . . [Patent Owner's expert] states generally in his Declaration that he performed a simulation on his 'wireless network invention.' But Patent Owner, [the expert] and [another declarant] do not compare the system on which [the expert] performed the simulation with the system or method recited in the challenged claims. . . . Further, [the expert's] Declaration indicates that the simulated system increased efficiency and reduced overhead burden because of a feature that is not recited in the challenged claims. . . . Based on the evidence of record, we determine that the nexus between Patent Owner’s evidence of a long-felt but unmet need and the challenged claims is weak. . . . Patent Owner relies on the same arguments and evidence . . . to show that there is a nexus between the evidence of unexpected results and the challenged claims. For the same reasons . . . we determine that the nexus between Patent Owner’s evidence of unexpected results and the challenged claims is weak. . . . Patent Owner’s weak evidence of long-felt but unmet need and unexpected results is substantially outweighed by Petitioner’s strong evidence of obviousness." (page 35)
 
 
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International Trade Commission - New Cases (1)
 
Certain Portable Gaming Console Systems with Attachable Handheld Controllers and Components Thereof; Inv. No. 3305  
337-3305 (ITC) March 30, 2018
Claim
ITC Infringement
 
Defendant
Nintendo Co., Ltd.
Nintendo of America Inc.
 
Plaintiff
Gamevice, Inc.
 
Quinn Emanuel Urquhart & Sullivan
Christopher A Mathews
Jeffrey S Gerchick
John B Quinn
Justin C Griffin
Tigran Guledjian
 
 
Patents
 
9808713 November 7, 2017
Game controller with structural bridge
9855498 January 2, 2018
Game controller with structural bridge
 
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International Trade Commission - Significant Decisions
 
Electrochemical Glucose Monitoring Systems and Components Thereof  
337-TA-1075 (ITC) March 29, 2018
Administrative Law Judge Charles E. Bullock
 
ITC Motion to Strike Discovery Response Granted
  ITC Discovery Response Incomplete
  ITC Discovery Response Untimely
  ITC Evidentiary/Issue Sanctions
The ALJ granted complainant's motion to strike respondent's amended contentions, interrogatory responses, and invalidity defenses for respondent's failure to comply with the procedural schedule. "⁠[Two and a half months ago], [respondent] served a response to Interrogatory No. 6, which listed 53 prior art references, but did not provide any analysis of the references. [Respondent] supplemented its response to include the requested analysis [two months later]. . . . The undersigned finds that [respondent] was obligated to provide the requested element-by-element analysis by the [initial] date. [Respondent's] position that it could wait [another two months] to do so is puzzling. . . . If parties were permitted to wait to provide any analysis until the later date, the initial date would be unnecessary. . . . [Complainant's] requested relief . . . is not one that should be considered lightly. . . . In this Investigation, however, [respondent] was on notice that more is required to comply with contention interrogatory deadlines." (page 1)
 
 
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