Two orders recently issued regarding whether district court litigation should be stayed pending inter partes review.  In both cases, the IPR petition had been filed recently, and the institution decision had not yet issued—but the results could not have been more different.  Judge Tigar granted a stay in Uniloc USA, Inc. v. LG Electronics U.S.A. Inc. (Case No. 3:18-cv-06739, “Uniloc”).  Two floors down, Judge Orrick went the other way in J & K IP Assets, LLC v. Armaspec, Inc. (Case No. 3:17-cv-07308, “J & K”).

Continue Reading Stays Pending IPR: The State of Discovery is Paramount

Defendant Shine Bathrooms had already been hit with an order for default judgment and double damages in a patent case brought by Robern, Inc.  And the hits keep coming for Shine, as it was recently ordered to pay over $250,000 in attorneys’ fees under the “exceptional case” standard of 35 U.S.C. § 285.

Notably, Judge Seeborg awarded attorneys’ fees even though there had been no explicit finding of willfulness.  The opinion explains the relationship between willfulness and exceptional case fees: a finding of willfulness is “a sufficient basis” for awarding exceptional case attorneys’ fees, and “when a trial court denies attorney fees in spite of a finding of willful infringement, the court must explain why the case is not ‘exceptional.’”[1]  An express finding of willfulness is not an absolute prerequisite, however.  In Shine’s case, even though there had not been an explicit finding of willfulness in the order for default judgement, “most of the factors relevant to awarding enhanced damages—including those related to willfulness—weighed heavily against defendant.”[2]

Continue Reading Half-Hearted Defense Resulted in High Attorneys’ Fees Award Following Default Judgment

The BRAF gene helps human cells produce enzymes for cellular metabolism and growth.  Mutated BRAF genes contribute to the proliferation of cancer cells.  In 2005, Plaintiff Plexxicon Inc. began making compounds that reduce the growth of cancer cells that have the mutated BRAF gene.[1]  The core compound, vemurafenib, was tested in patients with metastatic melanoma with results such as those illustrated in the before-and-after picture shown at right.[2]  Vemurafenib, sold under the brand name Zelboraf®, was approved in 99 countries and enjoyed worldwide sales of over $1.5 billion by 2017.[3]  Plexxicon received U.S. Patent No. 9,469,640 for the compound’s core molecular structure.

Continue Reading HIGH CONFIDENTIAL-AEO Designation Ruled Adequate Protection for Non-Parties

In early 2018, Simpson Strong-Tie Company, Inc. (“Simpson”) filed a declaratory judgement action against Defendant-Patentee OZ-Post International, LLC (“OZCO”).  Simpson had received a “demand letter” from OZCO that identified Simpson’s Outdoor Accents structural wood screw and hex-head washer ([1], [2]):

Continue Reading Patentee Allowed to Amend Infringement Contentions, but Must Pay for “Honest Mistake”

It is a “well-established rule that suits against alien defendants are outside the operation of the federal venue laws.”[1] Judge Gilliam stopped a declaratory judgment plaintiff’s attempt to initiate a parallel lawsuit in California when only the plaintiff’s foreign parent was sued in Texas.

AU Optronics Corporation (“AUO”) was formed in 2001 in Taiwan when Acer Display Technology, Inc. merged with Unipac Optoelectronics Corporation.  In 2002, AUO was listed at the New York Stock Exchange, becoming the first manufacturer of pure TFT-LCDs to do so.

Plaintiff AU Optronics Corporation America (“AUO USA”) has a principal place of business in California. Before AUO USA filed its declaratory judgment action in the Northern District of California, Defendant Vista Peak Ventures, LLC (“Vista Peak”) had filed three lawsuits against AUO USA’s foreign parent corporation in the Eastern District of Texas alleging patent infringement. None of the Texas lawsuits named AUO USA as a defendant. Continue Reading One Thing That <i>TC Heartland</i> Didn’t Change: The Alien-Venue Rule

After a jury verdict of willful infringement, almost $6,000,000 in patent-related damages, and a Chapter 7 bankruptcy, Judge Freeman increased WOSS’s legal troubles by granting TRX’s motions for enhanced damages and attorneys’ fees.[1]

Enhanced Damages.  Judge Freeman first granted TRX’s request for enhanced damages under 35 U.S.C. § 284 given its egregious behavior.  In making her determination, Judge Freeman considered the Read factors[2] and WOSS’s subjective intent.

At trial, the jury found that WOSS willfully infringed US Patent No. 7,044,896 (“the ’896 patent”).  Central to Judge Freeman’s decision to enhance damages was WOSS’ intent at the time of infringement.  At trial, WOSS’s founder, Mr. Ott, testified that he did not think WOSS’s band (left) infringed the ’896 patent (right):

Figure showing WOSS’s band               Figure displaying ’896 patent

Continue Reading WOSS Fitness Bands Suffer Post-Trial Pain

In an unusual sequence of events, Judge Freeman reconsidered and withdrew her previous ruling that plaintiff Fitness Anywhere LLC’s (“TRX”) Patent No. 7,806,814 (“’814 Patent”) was invalid.

TRX accused defendant Woss Enterprises LLC’s (“Woss”) of infringing the ’814 Patent via sales of Woss’s resistant exercise bands.  In August 2016, Judge Freeman granted Woss’s motion for summary judgment that the ’814 Patent was invalid as obvious in light of U.S. Patent No. 7,044,896 (“’896 Patent”) and U.S. Patent No. 7,090,622 (“’622 Patent”).  All three patents have the same named inventor. Continue Reading Invalidity Ruling Withdrawn After Second Look, Two Years Later

Olivia Garden was founded in Belgium in 1967 by husband and wife team Jean and Micheline Rennette (pictured left).  According to its website, Olivia Garden was and continues to be a pioneer in hairstyling, including introducing the first truly silent blowdryer in 1979 and the first ceramic-ionic combination brush in 2002.

But Judge Gilliam brushed off Olivia Garden’s bid for patent and trade dress infringement damages when he granted Defendant Stance Beauty’s motion to dismiss for improper venue.  In doing so, Judge Gilliam rejected Olivia Garden’s request to exercise “pendent venue.”  Judge Gilliam enumerated various reasons why Olivia Garden failed to show that Stance Beauty had a “regular and established place of business” in the Northern District of California, including that Stance Beauty was incorporated in Connecticut, never maintained a place of business in California, and had no offices, retail locations, officers, employees, books, or records in California.  Stance Beauty also had never attempted to become qualified or licensed to do business in California.  Thus, Olivia Garden’s request failed to satisfy either prong of 35 U.S.C. § 1400(b) in view of TC Heartland.[1] Continue Reading <i>TC Heartland</i> Trumps Pendent Venue

Image from Google’s Project Loon webpage.

Judicial estoppel made a surprise appearance before Judge Freeman on May 18, 2018 when she heard (and denied) Space Data Corporation’s (“Space Data”) motion for partial summary judgment that Alphabet Inc. and Google LLC (collectively, “Google”) are judicially estopped from claiming that Space Data’s asserted claims are invalid.

Space Data accuses Google’s “Project Loon”—a project that uses balloons to provide wireless Internet access to remote locations[1]—of infringing U.S. Patent No. 9,678,193 (“the ’193 patent”).  Google had a patent of its own that covered balloon communication systems, U.S. Patent No. 8,820,678 (“the ’678 patent”), against which Space Data initiated an interference proceeding to establish that its patent had priority over Google’s.  Google did not oppose Space Data’s priority claim and, consequently, the PTAB issued a ruling in Space Data’s favor.

Continue Reading No Inconsistent Positions Means No Judicial Estoppel

In the Northern District of California, most civil cases are assigned at filing to the “ADR Multi-Option Program,” which generally requires the parties to participate in one non-binding ADR process offered by the Court within 90 days of entry of an order referring the case to a specific ADR process.  The available ADR options are (1) early neutral evaluation, (2) mediation, (3) settlement conference with a magistrate judge, or (4) some other court-approved private ADR process. Continue Reading ADR Phone Conference No Longer Required