The Liqmax 120 (one of the accused products manufactured by AVC and sold by its customer, Enermax).

There is a split in authority as to whether errata may be used to make substantive changes to deposition testimony.  The Ninth Circuit has ruled against making substantive changes.

Asia Vital Components Co., LTD. (“AVC”) ran afoul of that ruling by including nearly two dozen substantive changes in its errata, including changing “yes” to “no,” changing the names of various corporate entities, and changing some key words.[1]  The Court agreed with the opposing party’s assertion that the changes appeared designed “to limit AVC’s exposure in the United States by, for example, presenting AVC’s offices in Fremont as belonging to a separate entity… altering customer names, shipping location (from U.S. to Hong Kong), and the names of the products sold in the U.S., and changing ‘shipped’ to ‘sold’ so that AVC can attempt to escape liability due to importation of the accused AVC products into the U.S.”[2]  But even without any improper motive, the changes were not permissible.[3]  Regardless of intent, errata that contradict the original deposition testimony are not allowed.[4]


Continue Reading

The Liqmax 120 (one of the accused products manufactured by AVC and sold by its customer, Enermax).

In an omnibus decision issued March 15, 2019, Judge Jon S. Tigar ruled on Plaintiff/Counter-Defendant Asia Vital Component Co., Ltd.’s (“AVC’s”) motion for partial summary judgment of non-infringement and Defendant/Counter-Claimant Asetek Danmark A/S’s (“Asetek’s”) motion for partial summary judgment of invalidity and motions to strike expert reports and declarations.  AVC is a Taiwan-based manufacturer of fan coolers and heat sinks for CPUs, laptops, and personal computers.[1]  Defendant Asetek is a Danish company credited with popularizing widely used liquid cooling systems.

At issue in the case are two patents that describe a liquid cooling system for the central processing unit of a computer: U.S. Patent Nos. 8,240,362 (“’362 Patent”) and 8,245,764 (“’764 Patent”).  Mere weeks after the patents issued in August 2012, Asetek successfully asserted them in a lawsuit against CoolIT Systems Inc.[2]  Asetek also asserted these patents against Cooler Master Co., Ltd., winning a permanent injunction in addition to monetary damages.[3]  Asetek initiated licensing negotiations with AVC in April 2014.  After those failed, AVC filed suit for declaratory judgment of non-infringement and invalidity in September 2014.


Continue Reading

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

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

In one of the first post-Berkheimer decisions to invalidate patent claims on the pleadings, Judge Yvonne Gonzalez Rogers invalidated thirty-seven claims across four patents asserted in fourteen cases filed by Cellspin Soft, Inc. because the claims were patent-ineligible.  Her order makes clear that an invention’s benefits must be disclosed in the patent specification, and not just advocated by the party enforcing the patent.  While some initially saw the February 2018 Berkheimer decision from the Federal Circuit as a death knell for Rule 12(b)(6) motions under Section 101, Judge Gonzalez Rogers’ order demonstrates how courts and infringement defendants may use a broad patent specification’s failure to describe the claimed invention’s purported improvements and benefits to invalidate it at the pleadings stage.[1]

Case Background and Asserted Patents.  On October 16, 2017, Plaintiff Cellspin Soft, Inc., filed thirteen lawsuits against popular consumer electronics manufacturers and distributors, including Canon USA, GoPro, Inc., Fitbit, Inc., and NIKE, Inc.  The complaints allege that digital cameras, smart watches, fitness tracking wearables, and other popular devices infringe various claims in U.S. Patent Nos. 8,734,794, 8,892,752, 9,749,847, and 9,258,698.  On December 1, Cellspin Soft filed a fourteenth case against JK Imaging Ltd., a digital camera manufacturer.


Continue Reading