Defendant Novartis Pharmaceuticals Corporation (“Novartis”) alleged that Plaintiff Plexxikon Inc.’s (“Plexxikon’s”) asserted patent claims are invalid for lack of enablement.  When one skilled in the art can practice the claimed invention only after undue experimentation, the claimed invention is invalid for lack of enablement.  One indication of undue experimentation is failed attempts to practice the invention.[1]

Plexxikon’s own expert, in a bid to argue that the claimed invention was enabled, directed that two compounds be synthesized:

(Figures from Plexxikon expert’s rebuttal report.[2])

However, Plexxikon’s expert then testified in deposition that he had considered “at least half a dozen” different synthetic routes for making one of the compounds, but had not disclosed them or the 33 reactions (some unsuccessful) in his rebuttal expert report.[3]  Stating that “[i]t is not in any way professional practice to write up experimentals on reactions which did not work,” Plexxikon’s expert confirmed that he did not disclose the failed synthetic routes or unsuccessful reactions in his report[4] but that he had considered the rejected synthetic routes in making the second compound[5].


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A party that stayed silent when served deficient infringement contentions has its silence held against it when later accusing the opposition of not making its case.

MLC Intellectual Property, LLC (“MLC”) sued Micron Technology, Inc. (“Micron”) in August 2014 for infringement of U.S. Patent No. 5,764,571 (“’571 Patent”), which claims a non-volatile memory device.  MLC is accusing Micron’s flash memory devices.  The case is pending before Judge Susan Illston.

In an Order issued on April 25, 2019, Judge Illston granted in part and denied in part Micron’s motion to strike MLC’s technical expert report on infringement.[1]


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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.


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