Justia Patents Opinion SummariesArticles Posted in Civil Procedure
Continental Automotive Systems v. Avanci, LLC
Continental, an auto-parts supplier, brought suit in the Northern District of California against several standard-essential patent holders and their licensing agent, claiming violations of federal antitrust law and attendant state law. The case was then transferred to federal district court where it was dismissed at the pleadings stage.The Fifth Circuit vacated the district court's judgment and remanded with instructions to dismiss for lack of standing. The court concluded that the two theories Continental alleges, based on indemnity obligations and a refusal to license, are inadequate to prove the supplier has Article III standing, let alone that it has antitrust standing or has suffered harm flowing from an antitrust violation. In this case, defendants' harm to Continental on account of Continental's indemnity obligations to original equipment manufacturers remains speculative. Furthermore, the court disagreed with the district court's conclusion that Continental's alleged unsuccessful attempts to obtain licenses on fair, reasonable, and nondiscriminatory terms from defendants comprise an injury in fact conferring Article III standing. View "Continental Automotive Systems v. Avanci, LLC" on Justia Law
Uniloc USA, Inc. v. Apple Inc.
In litigation between Uniloc and Apple, Uniloc unsuccessfully sought to seal matters of public record, such as quotations of Federal Circuit opinions and a list of patent cases Uniloc had filed. The Federal Circuit affirmed but held that the district court must conduct a detailed analysis on whether confidential licensing information of third-party licensees of Uniloc’s patents should be sealed and remanded for “particularized determinations.”On remand, Uniloc moved to seal or redact third-party documents that revealed licensing terms, licensees’ names, amounts paid, including a Fortress (Uniloc’s financier) investment memorandum, containing Fortress’s investment criteria and other third-party licensing information. The district court ordered that the licensing information, including the licensees' identities, be unsealed in full. explaining that “patent licenses carry unique considerations” that bolster the public’s right of access, including the valuation of patent rights, and that disclosure of patent licensing terms would facilitate “up-front cost evaluations of potentially infringing conduct,” “driv[e] license values to a more accurate representation of the technological value,” and help “inform reasonable royalties.” The Federal Circuit vacated. The district court failed to follow the previous remand instructions to make particularized determinations. Any procedural failings of Uniloc and Fortress cannot justify unsealing the information of third parties in the investment memo. The court should have considered whether the interests of the third parties outweigh the public’s interest in seeing licensing details that are not necessary for resolving this case. View "Uniloc USA, Inc. v. Apple Inc." on Justia Law
Celgene Corp. v. Mylan Pharmaceuticals Inc.
Celgene markets pomalidomide as a multiple-myeloma drug under the brand name Pomalyst. Many drug companies questioned the validity or applicability of Celgene's patents and sought to bring generic pomalidomide to market. The defendants submitted an abbreviated new drug application (ANDA) to the FDA. Celgene filed suit in New Jersey. Celgene is headquartered there, but no defendant is. MPI is based in West Virginia, Mylan Inc. in Pennsylvania, and Mylan N.V. in Pennsylvania and the Netherlands. The district court dismissed the case for improper venue (MPI; Mylan Inc.) and for failure to state a claim (as to Mylan N.V.).The Federal Circuit affirmed. Under the Hatch-Waxman Act, 21 U.S.C. 355(j)(5)(B)(iii), venue was improper in New Jersey for the domestic corporation defendants, MPI and Mylan Inc. Celgene did not show that those defendants committed acts of infringement in New Jersey and have a regular and established place of business there. The court rejected Celgene’s argument that receipt of the ANDA notice letter is an infringing act in New Jersey. Under section 271(e)(2), submitting an ANDA is the act of infringement; although the ANDA applicant must later send a notice letter that happens after the infringing submission. As to the foreign-corporation defendant, Mylan N.V., Celgene’s pleadings failed to state a claim upon which relief could be granted. View "Celgene Corp. v. Mylan Pharmaceuticals Inc." on Justia Law
In Re Quest Diagnostics, Inc.
Ravgen filed suit in the federal district court in Waco, Texas, accusing Quest’s QNatal Advanced test of infringing patents relating to non-invasive tests for prenatal genetic disorders. Quest moved to transfer the case (28 U.S.C. 1404(a)), arguing that the Central District of California was a more convenient forum; its knowledgeable employees work in that district and third-party witnesses reside in the district. Although Quest maintains patient service centers across the country—including in the Western District of Texas—Quest designed, developed, and continues to perform QNatal Advanced testing only in the Central District of California. Quest argued that Ravgen, headquartered in Maryland, has no meaningful connections to the Western District of Texas. Ravgen noted that it had filed three related complaints in the Western District of Texas, alleging infringement of the same patents. After analyzing the public and private interest factors that govern transfer determinations, the district court denied Quest’s motion.The Federal Circuit directed the district court to transfer the case. When there are numerous witnesses in the transferee venue and the only other witnesses are far outside the plaintiff’s chosen forum, the witness-convenience factor favors transfer. The court erroneously discounted documents located in California that relate to the development, validation, testing, and performance of the accused product and in weighing court congestion as strongly against transfer. View "In Re Quest Diagnostics, Inc." on Justia Law
ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc.
In 2007, ROHM Japan and MaxPower entered into a technology license agreement (TLA). ROHM Japan was permitted “to use certain power [metal oxide semiconductor field-effect transistors (MOSFET)]-related technologies of” MaxPower (Licensor) developed under a Development and Stock Purchase Agreement in exchange for royalties paid to MaxPower. The TLA, as amended in 2011, includes an agreement to arbitrate “[a]ny dispute, controversy, or claim arising out of or in relation to this Agreement or at law, or the breach, termination, or validity thereof.” Arbitration is to be conducted “in accordance with the provisions of the California Code of Civil Procedure.”In 2019, a dispute arose between ROHM Japan and MaxPower concerning whether the TLA covers ROHM’s silicon carbide MOSFET products. MaxPower notified ROHM Japan of its intent to initiate arbitration. Shortly thereafter, ROHM's subsidiary, ROHM USA, sought a declaratory judgment of noninfringement of four MaxPower patents in the Northern District of California and four inter partes review petitions. The district court granted MaxPower’s motion to compel arbitration and dismissed the case without prejudice, reasoning that the TLA “unmistakably delegate[s] the question of arbitrability to the arbitrator.” The Federal Circuit affirmed. In contracts between sophisticated parties, incorporation of rules with a provision on the subject is normally sufficient “clear and unmistakable” evidence of the parties’ intent to delegate arbitrability to an arbitrator. View "ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc." on Justia Law
In Re Juniper Networks, Inc.
Brazos filed lawsuits in the Western District of Texas charging Juniper, a Delaware corporation headquartered in California, with infringing patents that had been assigned to Brazos. Juniper moved to transfer the case to the Northern District of California, 28 U.S.C. 1404(a). Juniper argued that Brazos “describes itself as a patent assertion entity” that “does not seem to conduct any business” from its recently-opened office in Waco other than filing patent lawsuits. The assignment agreement by which Brazos received much of its patent portfolio lists a California address for Brazos; only one of the officers listed on its website resides in Texas. Brazos’s CEO and its president reside in California. The accused products were primarily designed, developed, marketed, and sold from Juniper’s headquarters within the Northern District of California; potential witnesses who would be expected to testify as to the structure, function, marketing, and sales of the accused products are located in California. Juniper had a small office in Austin, Texas.The Federal Circuit vacated the denial of the motion to transfer and granted the petition. The “center of gravity of the action” was clearly in California: several of the most important factors strongly favor the transferee court. No factor favors retaining the case in Texas. View "In Re Juniper Networks, Inc." on Justia Law
Mondis Technology Ltd. v. LG Electronics Inc.
Limited is the assignee of the 180 patent, which is directed generally to a display unit configured to receive video signals from an external video source. Limited sued LG for patent infringement. After the district court granted Limited leave to join Hitachi as plaintiffs to address a standing challenge brought by LG, the case proceeded to trial. The jury found that the accused LG televisions infringed two claims of the patent, that the claims were not invalid, and that LG’s infringement was willful, and awarded Plaintiffs $45 million in damages.In September 2019, the district court denied LG’s post-trial motions regarding infringement, invalidity, and willfulness but ordered further briefing on damages. On April 22, 2020, the district court granted LG’s motion for a new trial on damages. On May 8, 2020, LG filed a notice of interlocutory appeal, seeking to challenge the denials of LG’s post-trial motions regarding infringement, invalidity, and willfulness, all of which were decided in the September Order. LG also challenged the pretrial joinder decision, arguing that, without such joinder, Limited lacked statutory authority to bring suit. The Federal Circuit dismissed for lack of jurisdiction. LG’s notice of appeal was not filed within 30 days of the date at which the liability issues became final except for an accounting. View "Mondis Technology Ltd. v. LG Electronics Inc." on Justia Law
Andra Group, LP v. Victoria’s Secret Stores, LLC
LBI is the corporate parent of retailers in the apparel and home product field, including Victoria’s Secret entities. LBI’s subsidiaries each maintain their own corporate, partnership, or limited liability company status, identity, and structure. Each Defendant is incorporated in Delaware. The LBI Non-Store Defendants do not have any employees, stores, or other physical presence in the Eastern District of Texas. The Store Defendants each operate at least one retail location in the District. Andra sued Defendants for infringement of the 498 patent, which claims inventions directed to displaying articles on a webpage, including applying distinctive characteristics to thumbnails and displaying those thumbnails in a “master display field.” Andra’s infringement claims are directed to the victoriassecret.com website, related sites, and smartphone applications that contain similar functionality.Defendants moved to dismiss the suit for improper venue under 28 U.S.C. 1406(a), or in the alternative, to transfer the lawsuit to the Southern District of Ohio, arguing that venue was improper because Stores did not commit acts of infringement in the District and the Non-Store Defendants did not have regular and established places of business in the District. The Federal Circuit affirmed the dismissal of the Non-Store Defendants for improper venue. Testimony by one Stores employee supported a finding of the alleged infringing acts in the District. View "Andra Group, LP v. Victoria's Secret Stores, LLC" on Justia Law
In re Samsung Electronics Co., Ltd.
Ikorongo Texas was formed as a Texas LLC and, a month later, filed patent infringement complaints in the Western District of Texas. Although "Texas" claims to be unrelated to Ikorongo Tech, a North Carolina LLC, both are run out of the same North Carolina office; as of March 2020, the same five individuals “own[ed] all of the issued and outstanding membership interests” in both. "Tech" owns the patents at issue. Days before the complaints were filed, Tech assigned to Texas exclusive rights to sue for infringement and collect damages for those patents within specified parts of Texas while retaining those rights in the rest of the country. First amended complaints named both entities as co-plaintiffs and do not distinguish between infringement in the Western District of Texas and infringement elsewhere.The defendants moved under 28 U.S.C. 1404(a) to transfer the suits to the Northern District of California, arguing that three of the five accused third-party applications were developed in and potential witnesses and sources of proof were located in Northern California while no application was developed or researched in and no sources of proof were in Western Texas. The court denied the motions, reasoning that Ikorongo Texas’s rights could not have been infringed in California.The Federal Circuit directed the lower court to grant the transfer motions. The case “might have been brought” in California; the presence of Ikorongo Texas is recent, ephemeral, and artificial—a maneuver in anticipation of litigation. The district court here assigned too little weight to the relative convenience of California and overstated concerns about judicial resources and inconsistent results; other public interest factors favor transfer. View "In re Samsung Electronics Co., Ltd." on Justia Law
Chandler v. Phoenix Services LLC
In 2006 Heat On-The-Fly began using a new fracking technology on certain jobs. Heat’s owner later filed a patent application regarding the process but failed to disclose 61 public uses of the process that occurred over a year before the application was filed. This application led to the 993 patent. Heat asserted that patent against several parties. In 2014, Phoenix acquired Heat and the patent. Chandler alleges that enforcement of the 993 patent continued in various forms. In an unrelated 2018 suit, the Federal Circuit affirmed a holding that the knowing failure to disclose prior uses of the fracking process rendered the 993 patent unenforceable due to inequitable conduct.Chandler filed a “Walker Process” monopolization action under the Sherman Act, which required that the antitrust-defendant obtained the patent by knowing and willful fraud on the patent office and maintained and enforced that patent with knowledge of the fraudulent procurement, and proof of “all other elements necessary to establish a Sherman Act monopolization claim.” The Federal Circuit transferred the case to the Fifth Circuit, which has appellate jurisdiction over cases from the Northern District of Texas. The court concluded that it lacked jurisdiction because this case does not arise under the patent laws of the United States. View "Chandler v. Phoenix Services LLC" on Justia Law