Judges and Magistrates

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


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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.


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Olivia Garden was founded in Belgium in 1967 by husband and wife team Jean and Micheline Rennette (pictured right).  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]


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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.


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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.


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