Justia Patents Opinion SummariesArticles Posted in Civil Procedure
Whirlpool v. Shenzhen Sanlida
Whirlpool filed a complaint against Shenzhen Sanlida Electrical Technology Co., Ltd. and Shenzhen Avoga Technology Co., Ltd. (collectively, “Shenzhen”) asserting federal and state law claims for trademark and trade dress infringement along with a motion for a preliminary injunction to stop the sale of the allegedly infringing mixers. The district court granted the injunction. In addition to its appeal, Shenzhen sought an emergency stay pending appeal. After granting an initial administrative stay, the Fifth Circuit denied that motion. Then, after the Federal Circuit heard the merits of the case, it affirmed the district court.The Fifth Circuit found the district court did not abuse its discretion in finding that the harms weighed in favor of Whirlpool. View "Whirlpool v. Shenzhen Sanlida" on Justia Law
Metabyte v. Technicolor S.A.
This action represents Metabyte’s fourth attempt to hold Technicolor liable for Technicolor’s allegedly improper auction of a patent portfolio in 2009. After the French courts ruled they lacked jurisdiction in the criminal action, Metabyte brought an action in district court alleging a federal RICO claim and several state law causes of action. After the district court ruled that equitable tolling did not apply to its RICO claim as a matter of federal law, Metabyte dismissed the federal action and brought its state law claims in Los Angeles County Superior Court. The trial court granted Technicolor’s demurrer without leave to amend. Metabyte contends the trial court erred in finding equitable estoppel applies only where a plaintiff invokes remedies designed to lessen the extent of a plaintiff’s injuries or damages, with the result that Article 145 proceeding in France could not support equitable tolling because it did not provide such a remedy. Technicolor defends the trial court’s ruling but devotes more of its energies to its contentions that even if equitable tolling did apply, the order should be affirmed by applying the doctrines of issue preclusion and judicial estoppel. The Second Appellate District affirmed the trial court’s ruling sustaining the demurrer on the alternate ground that Metabyte failed to adequately plead facts showing that its decision to proceed in France was objectively reasonable and subjectively in good faith. However, the court granted Metabyte leave to amend. Accordingly, the court reversed the judgment and remanded for further proceedings. View "Metabyte v. Technicolor S.A." on Justia Law
ZACHARY SILBERSHER, ET AL V. VALEANT PHARMACEUTICALS INT’L, ET AL
Plaintiff alleged that Valeant fraudulently obtained two sets of patents related to a drug and asserted these patents to stifle competition from generic drugmakers. Plaintiff further alleged that Defendants defrauded the federal government by charging an artificially inflated price for the drug while falsely certifying that its price was fair and reasonable. Dismissing Plaintiff’s action under the False Claims Act’s public disclosure bar, the district court concluded that his allegations had already been publicly disclosed, including in inter partes patent review (“IPR”) before the Patent and Trademark Office. The Ninth Circuit reversed the district court’s dismissal. The panel held that an IPR proceeding in which the Patent and Trademark Office invalidated Valeant’s “‘688” patent was not a channel (i) disclosure because the government was not a party to that proceeding, and it was not a channel (ii) disclosure because its primary function was not investigative. The panel held that, under United States ex rel. Silbersher v. Allergan, 46 F.4th 991 (9th Cir. 2022), the patent prosecution histories of Valeant’s patents were qualifying public disclosures under channel (ii). The panel assumed without deciding that a Law360 article and two published medical studies were channel (iii) disclosures. The panel held that the “substantially the same” prong of the public disclosure bar applies when the publicly disclosed facts are substantially similar to the relator’s allegations or transactions. None of the qualifying public disclosures made a direct claim that Valeant committed fraud, nor did they disclose a combination of facts sufficient to permit a reasonable inference of fraud. View "ZACHARY SILBERSHER, ET AL V. VALEANT PHARMACEUTICALS INT'L, ET AL" on Justia Law
Apple Inc. v. Vidal
Plaintiffs, Apple and four other companies, have repeatedly been sued for patent infringement and thereafter petitioned the Patent and Trademark Office (PTO) to institute inter partes reviews (IPRs), under 35 U.S.C. 311–319, with unpatentability challenges to patent claims that were asserted against them in court. They sued the PTO under the Administrative Procedure Act (APA), 5 U.S.C. 701– 706, challenging instructions issued to the Patent Trial and Appeal Board concerning how to exercise, under delegation by the Director, the Director’s discretion whether to institute a requested IPR. Plaintiffs assert that the instructions are likely to produce too many denials.The district court dismissed the APA action, finding that the Director’s instructions were made unreviewable by 35 U.S.C. 314(d): “The determination by the Director whether to institute an inter partes review under [section 314] shall be final and nonappealable.” The Federal Circuit affirmed the unreviewability dismissal of plaintiffs’ challenges to the instructions as being contrary to the statute and arbitrary and capricious. No constitutional challenges are presented. The court reversed the unreviewability dismissal of the challenge to the instructions as having been improperly issued because they had to be, but were not, promulgated through notice-and-comment rulemaking under 5 U.S.C. 553. Apple had standing to present that challenge. View "Apple Inc. v. Vidal" on Justia Law
In Re Google LLC
Jawbone sued Google for patent infringement in the Western District of Texas after being assigned ownership of the nine asserted patents and seven months after being incorporated in Texas. Jawbone rents space in Waco to store documents relating to the patents, from which it conducts some distribution and sales activities. No Jawbone personnel work at any location in the Western District. Google moved under 28 U.S.C. 1404(a) to transfer the action to the Northern District of California, arguing that: the relevant technical aspects of the accused earbuds, smartphones, speakers, displays, and software products were researched, designed, and developed at Google’s headquarters within Northern California; the technology underlying the asserted patents assigned to Jawbone was likewise developed and prosecuted in Northern California; witnesses and sources of proof (prototypes, Google’s key personnel, and four of the six named inventors) were primarily located in Northern California; no witnesses or sources of proof were located in Western Texas.The Federal Circuit ordered the district court to grant the motion. The center of gravity of this action, focusing on the “Volkswagen factors” and the overriding convenience inquiry, is clearly in the Northern District of California, not in the Western District of Texas. Four factors favor transfer and four factors are neutral. No factor weighs against transfer. View "In Re Google LLC" on Justia Law
In Re Stingray IP Solutions, LLC
Stingray filed patent infringement suits in the Eastern District of Texas against TP-Link (organized and headquartered in China). TP-Link moved to dismiss for lack of personal jurisdiction or, alternatively, to transfer to the Central District of California (CDCA) under 28 U.S.C. 1406. TP-Link argued it was not subject to personal jurisdiction i Texas and that Federal Rule of Civil Procedure 4(k)(2) “does not cure this jurisdictional defect because Defendants would be amenable to suit in the Central District of California.” TP-Link also moved for transfer under 28 U.S.C. 1404(a). The court transferred the cases to the CDCA under section 1406, stating that its exercise of personal jurisdiction "would be unreasonable” and, “Defendants are amenable to suit in the CDCA” and have made affirmative representations that CDCA has proper jurisdiction and venue.The Federal Circuit granted a mandamus petition. TPLink’s unilateral, post-suit consent to personal jurisdiction in another state did not defeat the application of Rule 4(k)(2), which closed a pre-1993 loophole by which a nonresident defendant who did not have minimum contacts with any individual state sufficient to support the exercise of jurisdiction but did have sufficient contacts with the United States as a whole, could escape jurisdiction every state. The district court may assess whether TP-Link can satisfy Rule 4(k)(2)’s negation requirement on the grounds that Stingray “could have brought suit” in the CDCA, independent of TP-Link’s post-suit consent or may consider transfer under section 1404(a). View "In Re Stingray IP Solutions, LLC" on Justia Law
Modern Font Applications LLC v. Alaska Airlines Inc.
The District of Utah uses a “Standard Protective Order.” Pursuant to that order, Alaska designated certain source code files as “CONFIDENTIAL INFORMATION – ATTORNEYS’ EYES ONLY,” which precluded MFA’s in-house counsel from accessing those materials. MFA challenged Alaska’s designations and moved to amend the Standard Protective Order, seeking to permit its in-house counsel to access “all disclosed information,” including documents designated Attorneys’ Eyes Only, and to add additional designations to the Standard Protective Order specific to source code.The magistrate granted Alaska’s motions to maintain its protective order designations and denied MFA’s motion to amend, finding that Alaska had established that its source code contained trade secrets and merited “heightened protection.” The magistrate concluded that MFA’s in-house counsel was a “competitive decisionmaker” because of his licensing activities and because MFA’s “entire business model revolves around the licensing of patents through litigation with the assistance of its in-house counsel.” The district court affirmed, explaining that MFA had failed to support its argument that it should not bear the burden of proof to modify the Order and that the magistrate had appropriately cited cases “for their relevance to in-house counsel’s involvement in licensing making it a competitive decisionmaker.” The Federal Circuit rejected an interlocutory appeal for lack of jurisdiction under the collateral order doctrine. It is reviewable after a final judgment. View "Modern Font Applications LLC v. Alaska Airlines Inc." on Justia Law
In Re: Apple Inc.
Aire sued Apple for patent infringement in the Western District of Texas in October 2021. In April 2022, Apple moved for transfer to the Northern District of California. Apple submitted a declaration from an Apple finance manager, “to establish certain facts, such as the relevance, role, and locations of witnesses and their teams, as well as the relevance and locations of various categories of documents.” Shortly before the close of venue discovery, Apple sought leave to supplement its motion with additional declarations, offering to make the declarants available for deposition and stating non-opposition to a “reasonable continuance” of the transfer proceedings.The district court granted Apple’s motion, but sua sponte ordered the parties to complete fact discovery on the merits (which it extended for an additional 30 weeks) and go through another six weeks of re-briefing of the motion before it would rule on Apple’s request to transfer. Apple then sought a writ of mandamus. Citing judicial economy, the Federal Circuit vacated the district court’s amended scheduling order and directed the court to postpone fact discovery and other substantive proceedings until after consideration of Apple’s motion for transfer. View "In Re: Apple Inc." on Justia Law
Uniloc USA, INC. v. Motorola Mobility, LLC
Uniloc sued Motorola for infringement of a patent that concerns pairing a telephone with another device and using the other device to make a telephone call using the telephone’s cellular capabilities. Motorola alleged that Uniloc lacked standing, having granted Fortress a license and an unfettered right to sublicense the asserted patent. The district court dismissed, agreeing that Uniloc had granted a license and that the existence of a license deprived it of standing. Related cases, in which Uniloc had alleged infringement, had been dismissed for lack of subject matter jurisdiction. On appeal, Motorola asserted collateral estoppel.The Federal Circuit affirmed. The court acknowledged that patent owners arguably do not lack standing simply because they granted a license that gave another party the right to sublicense the patent to an alleged infringer but declined to address that issue. , Uniloc was collaterally estopped from arguing that it did not grant a license, including a right to sublicense, to Fortress, and that the existence of that license deprived Uniloc of standing. View "Uniloc USA, INC. v. Motorola Mobility, LLC" on Justia Law
In Re Monolithic Power Systems, Inc.
Bel Power sued, alleging that Monolithic infringes Bel’s patents by selling certain power modules to original equipment manufacturers and other distributors and customers that use the products in their own electronic devices. Monolithic moved to dismiss or transfer for lack of venue under 28 U.S.C. 1406(a), arguing that, as a Delaware corporation, it does not “reside” in the Western District of Texas, that it does not own or lease any property in that district, and that the homes of four full-time remote employees in the Western District identified in the complaint to support venue do not constitute a “regular and established place of business.” Monolithic alternatively moved to transfer to the Northern District of California.The Federal Circuit upheld the denial of both requests. Monolithic viewed maintaining a business presence in the Western District as important, as evidenced by a history of soliciting employment in Austin to support local customers, even if none of its Western District employees were required to reside there. Monolithic provided certain Western District employees with lab equipment or products to be used in or distributed from their homes as part of their responsibilities. The convenience of parties and witnesses and the interests of justice did not weigh in favor of transfer under the multi-factor approach; Monolithic failed to demonstrate that California was clearly more convenient than the Western District. View "In Re Monolithic Power Systems, Inc." on Justia Law