Justia Patents Opinion SummariesArticles Posted in Civil Procedure
Arendi S.A.R.L. v. LG Electronics Inc.
Arendi sued LG for infringement. The District of Delaware’s rules required Arendi to “specifically identify the accused products and the asserted patent(s)” and to produce "an initial claim chart relating each accused product to the asserted claims each product allegedly infringes.” Arendi filed its Disclosure, listing hundreds of LG products as infringing four claims of the 843 patent but provided claim charts for only one product—LG’s Rebel 4 phone, labeling the Rebel 4 as “exemplary.” LG objected, stating that, “[s]hould Arendi intend to accuse [non-Rebel 4] products, then Arendi must promptly provide claim charts demonstrating how these products infringe or explain why Arendi contends the current claim charts are representative of specific non-charted products.” Arendi did not respond. The parties later agreed on eight representative products to represent all accused products, including seven non-Rebel 4 products. Arendi did not supplement its Disclosure. In response to an interrogatory relating to those eight products, LG reiterated that Arendi only provided infringement contentions for the Rebel 4. Arendi provided its expert report months after the close of fact discovery.The district court granted LG's motion to strike portions of that report because it “disclosed—for the first time—infringement contentions for five of” the non-Rebel 4 representative products. Arendi still did not supplement its Disclosure but filed a second complaint, asserting that LG’s non-Rebel 4 products infringed the 843 patent. The Federal Circuit affirmed the dismissal of the complaint, citing the duplicative-litigation doctrine. View "Arendi S.A.R.L. v. LG Electronics Inc." on Justia Law
ZACHARY SILBERSHER V. ALLERGAN, INC.
Relator alleged that Defendants prevented generic drug competitors from entering the market. Relator alleged that this permitted defendants to charge Medicare inflated prices for the two drugs, in violation of the False Claims Act. The district court denied Defendants’ motion to dismiss based on the False Claims Act’s public disclosure bar, which prevents a relator from merely repackaging publicly disclosed information for personal profit by asserting a claim under the Act.The Ninth Circuit held that an ex parte patent prosecution is an “other 4 UNITED STATES EX REL. SILBERSHER V. ALLERGAN Federal . . . hearing” under 31 U.S.C. Sec. 3730(e)(4)(A)(ii). Thus, the public disclosure bar was triggered. The Ninth Circuit expressed no opinion on whether Relator still could bring his qui tam action because he was an “original source” of the information in his complaint. The court remanded to the district court for further proceedings. View "ZACHARY SILBERSHER V. ALLERGAN, INC." on Justia Law
Realtime Adaptive Streaming LLC v. Netflix, Inc.
Realtime filed patent infringement actions against Netflix in the District of Delaware. While that action was ongoing, Netflix filed petitions for inter partes review (IPR) and moved to dismiss the complaint, arguing patent ineligibility under 35 U.S.C. 101. Following the institution of the IPR proceedings and a recommendation from the Delaware magistrate finding certain claims ineligible, Realtime voluntarily dismissed the Delaware action—before the district court ruled on the magistrate’s findings. The next day, Realtime reasserted the same patents against Netflix in the Central District of California—despite having previously informed the Delaware court that transferring the Delaware action to the Northern District of California would be an unfair burden on Realtime. Netflix then moved for attorneys’ fees and to transfer the actions back to Delaware. Before a decision on either motion, Realtime again voluntarily dismissed its case.Netflix renewed its motion for attorneys’ fees for the California actions, the Delaware action, and IPR proceedings. The district court awarded fees for both California actions under 35 U.S.C. 285, and, alternatively, the court’s inherent equitable powers. The court declined to award fees for the Delaware action or IPR proceedings The Federal Circuit affirmed. The district court did not abuse its discretion in awarding fees under its inherent equitable powers or in denying fees for the related proceedings The court did not address whether the award satisfies section 285's requirements. View "Realtime Adaptive Streaming LLC v. Netflix, Inc." on Justia Law
Centripetal Networks, Inc. v. Cisco Systems, Inc.
Centripetal sued Cisco for the infringement of 10 patents relating to systems that perform computer networking security functions. Centripetal successfully requested that the case be reassigned to Judge Morgan, who had recently presided over a trial involving related technology and five of the same patents. While the case was pending, Judge Morgan sent the parties an email, stating that the previous day, his assistant had discovered that his wife owned 100 shares of Cisco stock valued at $4,687.99. He stated that the “shares did not and could not have influenced [his] opinion.” The disqualification statute, 28 U.S.C. 455, refers to financial interests held by family members. Centripetal had no objection to the judge’s continuing to preside over the case.Cisco sought recusal. Judge Morgan stated that section 455(b)(4) did not apply because he had not discovered his wife’s interest in Cisco until he had decided “virtually” every issue and that placing the Cisco shares in a blind trust “cured” any conflict, then found that Cisco willfully infringed the asserted claims and awarded Centripetal damages of $755,808,545 (enhanced 2.5 times to $1,889,521,362.50), pre-judgment interest ($13,717,925), and “a running royalty."The Federal Circuit reversed the denial of Cisco’s motion for recusal, vacated all orders and opinions of the court entered on or after August 11, 2020, including the final judgment, and remanded for further proceedings before a different district court judge. View "Centripetal Networks, Inc. v. Cisco Systems, Inc." on Justia Law
Mitek Systems, Inc. v. United Services Automobile Association
USAA, a reciprocal inter-insurance exchange organized under Texas law with its principal place of business in San Antonio, owns the four patents, which address the use of a mobile device to capture an image of a bank check and transmit it for deposit. Mitek filed suit in the Northern District of California, seeking a declaratory judgment (28 U.S.C. 2201(a)), that Mitek and its customers have not infringed, either directly or indirectly, any valid and enforceable claim of USAA’s patents. USAA moved for dismissal of the complaint, arguing that there was no case or controversy between USAA and Mitek and that the court should exercise discretion not to hear Mitek’s claim. In the alternative, USAA requested the transfer of the action to the Eastern District of Texas under 28 U.S.C. 1404. The California court, without ruling on the dismissal motion, ordered the case transferred to Texas.The Texas court dismissed for want of a case or controversy, stating that, even if jurisdiction existed, it would exercise its discretion to decline to entertain the action. The Federal Circuit vacated the Texas court’s dismissal and remanded, affirming the California court’s transfer order. To make the “case or controversy” determination, the district court’s primary task will be to ascertain the alleged role of the Mitek technology in the banks’ applications and the alleged role that the Mitek technology plays in infringement claims. View "Mitek Systems, Inc. v. United Services Automobile Association" on Justia Law
CPC PATENT TECHS. PTY LTD. V. APPLE, INC.
Appellant CPC Patent Technologies PTY Ltd. (“CPC”) sought documents to use in a potential lawsuit in Germany against an affiliate of appellee Apple, Inc. CPC filed an application in federal court seeking to compel Apple to turn over these documents pursuant to 28 U.S.C. Section 1782, which allows district courts to provide discovery assistance to foreign or international tribunals. After a magistrate judge denied the petition, a district judge reviewed the magistrate judge’s decision for clear error and declined to overturn it.The Ninth Circuit vacated the district court’s order and remanded for further proceedings because the district judge should have reviewed the magistrate judge’s decision de novo.Applying 28 U.S.C. Section 636(b) and its procedural counterpart, Fed. R. Civ. Pro. 72, the court held that CPC’s Section 1782 application was a dispositive matter because the magistrate judge’s order denied the only relief sought by CPC in this federal case: court-ordered discovery. Because both parties did not consent to the magistrate judge's jurisdiction, the magistrate judge lacked jurisdiction to enter an order denying the application, and the district court should have treated the magistrate judge’s ruling at most as a non-binding recommendation subject to de novo review. The court, therefore, remanded for the district court to apply the correct standard of review and left it to the district court to determine whether the case would benefit from further analysis and review by the magistrate judge. View "CPC PATENT TECHS. PTY LTD. V. APPLE, INC." on Justia Law
Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc
Bennett sued Atlanta Gas, a Georgia distributor of natural gas, for infringement of Bennett's patent, directed to an anti-icing device for a gas pressure regulator. Atlanta Gas was served with the complaint on July 18, 2012. That litigation was dismissed without prejudice for lack of personal jurisdiction. On July 18, 2013, Atlanta Gas filed an inter partes review (IPR) petition concerning the patent.The Patent Trial and Appeal Board rejected Bennett’s argument that Atlanta Gas was time-barred from petitioning for IPR under 35 U.S.C. 315(b) and determined that the challenged claims were unpatentable over the prior art. The Federal Circuit held that Atlanta Gas should have been barred, vacated the unpatentability determination, and remanded with directions to dismiss the IPR and to further consider a sanctions order. Before the Board acted, the Supreme Court held that time-bar determinations were unreviewable, "Thryv," (2020). On remand, the Federal Circuit affirmed the unpatentability determination on the merits and again remanded for the Board to reconsider and finalize its sanctions order. The Board then terminated the proceeding due in part to reconsideration of its decision on the time bar. Atlanta Gas appealed.The Federal Circuit dismissed, holding that it lacked jurisdiction to review the Board’s decision to vacate its institution decision, a decision made based in part on the Board's evaluation of the time bar and changed Patent and Trademark Office policy. View "Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc" on Justia Law
Sleep Number Corporation v. Steven Young
Sleep Number partnered with Defendants and through their partnership, Defendants’ inventions were adapted to create SleepIQ technology. After two years as employees, Defendants informed Sleep Number that they wished to pursue their own venture. The parties entered into a consulting agreement requiring Defendants to disclose and assign to Sleep Number the rights to inventions within a defined Product Development Scope (“PDS”).Sleep Number sued Defendants., asserting ownership of the inventions claimed in certain patent applications filed by UDP with the United States Patent and Trademark Office (“USPTO”). The district court granted Sleep Number’s motion for a preliminary injunction preventing the defendants from further prosecuting or amending the patent applications. The Eighth Circuit affirmed the district court’s grant of Plaintiff’s motion for a preliminary injunction. The court held that the district court did not err in determining that Sleep Number had a fair chance of success on the merits of its claims; nor did the court err in concluding that Sleep Number has demonstrated a threat of irreparable harm in the absence of an injunction; further the remaining factors of the balance of the harms and public interest both weighed in favor of Sleep Number. The court reasoned that the plain meaning of the language in the consulting agreements clearly and unambiguously places the inventions described in the patent applications within the PDS. Finally, absent an injunction, Sleep Number faces a threat of harm if it cannot participate in the patent-prosecution process for the patent applications. View "Sleep Number Corporation v. Steven Young" on Justia Law
Apple, Inc. v. Zipit Wireless, Inc.
Zipit, a Delaware corporation with a principal place of business in South Carolina, and with all of its employees in South Carolina, is the assignee of the patents-in-suit, which are generally directed to wireless instant messaging devices that use Wi-Fi. In 2013, Zipit contacted Apple in California. For three years, the parties exchanged correspondence and met in person at Apple’s Cupertino headquarters. Zipit filed a patent infringement action against Apple in Georgia but later dismissed the case without prejudice.Apple sought a declaratory judgment of noninfringement in the Northern District of California. The district court dismissed, holding that it lacked specific personal jurisdiction over Zipit (general jurisdiction was not asserted). The court concluded that Apple had established the requisite minimum contacts but that “the exercise of personal jurisdiction . . . would be unconstitutional when ‘[a]ll of the contacts were for the purpose of warning against infringement or negotiating license agreements, and [the defendant] lacked a binding obligation in the forum.’” The Federal Circuit reversed, Zipit is subject to specific personal jurisdiction in the Northern District of California for purposes of Apple’s declaratory judgment action. Zipit has not presented a compelling case that the relevant factors in the aggregate would render the exercise of jurisdiction unreasonable. View "Apple, Inc. v. Zipit Wireless, Inc." on Justia Law
In Re: Volkswagen Group of America, Inc.
Stratos filed patent infringement complaints in the Western District of Texas against Volkswagen and Hyundai, car distributors that are incorporated in New Jersey and California, respectively, and hence do not “reside” for venue purposes in the Western District, 28 U.S.C. 1400(b); The defendants moved to dismiss or transfer the cases under 28 U.S.C. 1406(a). The district court denied the motions, concluding that venue in the Western District was proper. The court cited independent car dealerships located in the Western District that sell and service cars after purchasing them from the defendants under franchise agreements that impose transfer restrictions, staffing and reporting requirements, minimum inventory levels, employee training, and equipment requirements. The district court concluded those agreements gave the defendants sufficient control over the dealerships to establish a regular and established place of business for the defendants, although Texas law prohibits auto manufacturers and distributors from directly or indirectly “operat[ing] or control[ling] a franchised dealer or dealership.” The court noted, “the only way that [Volkswagen and Hyundai] can distribute [their] vehicles to consumers in this District is through [their] authorized dealerships.” The Federal Circuit disagreed, noting disagreement on the issue among the district courts. The district court clearly abused its discretion in failing to properly apply established agency law and reaching a patently erroneous result. View "In Re: Volkswagen Group of America, Inc." on Justia Law