Friday, February 17, 2017

Discovery Into Commission History of Intellectual Ventures Licensing Executive Allowed​

The court granted defendants' motion to compel the production of documents regarding prior licensing commissions earned by plaintiff's 30(b)(6) witness on licensing because the evidence was relevant and not cumulative. "[The witness] is a licensing executive at [plaintiff] and [plaintiff's] designated corporate representative witness on licensing. . . . Defendants argue that [the witness's] financial stake in the case grows larger as the expert’s damages number increases. Accordingly, Defendants maintain that to effectively assess [the witness's] credibility, a jury needs access to the full details regarding how much [the witness's] compensation will be impacted by the contingent payment. . . .They further assert that [plaintiff's] damages expert relies heavily on [the 30(b)(6)] witness testimony, and thus these opinions hinge on [his] credibility. . . . Defendants have presented a reasonable explanation for why the documents sought are not cumulative: evidence of past commissions received by [the witness] goes to showing the extent of potential bias [he] may exhibit in this current case, based on how much he stands to gain relative to past commissions. In short, Defendants seek information to place [his] potential fee in the current case in context. The information currently in Defendants’ possession speaks to the fact of [the witness's] potential bias; the information they seek relates to the extent of this alleged bias."

Intellectual Ventures II LLC v. AT&T, Inc. et al, 1-13-cv-00116 (TXWD February 14, 2017, Order) (Lane, MJ)

Thursday, February 16, 2017

Success Rates on Requests to Stay Pending IPR, CBM, or PGR through 2016

Survey Based on Rejected Claim Construction Renders Damages Expert’s Opinion Unreliable​

The court granted defendant's motion to exclude the testimony of plaintiff's survey expert regarding one of the patents-in-suit, and all related damages estimates, as unreliable because it was based on a rejected claim construction. "[The expert's] survey for [one] patent measured the value attributed to manual or automatic 'content sharing,' which [he] described as a '[m]ethod of transferring songs, movies, and applications across devices . . . owned by the user.'. . . [I]t appears that [his] questions for [that] patent reflect the claim construction [plaintiff] initially proposed. . . . [which] was rejected in favor of the narrower ‘enabling or modifying communications capabilities.’ In light of that construction, ‘provisioning’ features on a user's device bears no reasonable connection to sharing content across devices. [Plaintiff] suggests that [his] survey was intended to measure the value attributed to automatically provisioning all of one's devices after manually provisioning a single device. But this would still make the survey inaccurate, as the benefit of the invention was tied to remote provisioning, not automatic provisioning. . . . The combined result is a survey question – and survey responses – targeted at an invention other than the one at issue in this litigation. This is a problem of admissibility rather than weight. The . . . survey results must therefore be excluded, along with all damages estimates hinging on those survey results.”

Unwired Planet, LLC v. Apple, Inc., 3-13-cv-04134 (CAND February 14, 2017, Order) (Chhabria, USDJ)

Wednesday, February 15, 2017

Settlement Enforceable Despite Later Finding of Patent Invalidity Under 35 U.S.C. § 101​

Following an order granting summary judgment that the patent-in-suit was invalid for lack of patentable subject matter, the court granted plaintiff's motion to enforce an earlier settlement agreement between plaintiff and a third party supplier who agreed to indemnify a defendant. "Regret is no basis in the law to undo a contract made. . . . Objective indicators demonstrate that a contract was made. First, the August 8th email clearly demonstrates that [the intervenor] believed an agreement had been reached. The August 8th agreement set out the payment terms and a July 21st email set out the boundaries of the license [plaintiff] would offer [the intervenor]. . . . [T]he stipulation filed with this court clearly indicates an agreement had been reached. It represented to this Court that the parties had 'reached an agreement in principle. . . .' That stipulation evidences that [plaintiff] considered the matter settled and that [the indemnified defendant], an interested and close observer of the negotiations, did as well. . . . [The Intervenor] points out there were open contract terms such as assignability, notice, choice of law, and confidentiality. Delaware law, however, explicitly provides that '[a] settlement agreement is enforceable if it contains all essential terms, even though it expressly leaves other matters for future negotiation.'"

CallWave Communication LLC v. Verizon Services Corp. et al, 1-12-cv-01704 (DED February 13, 2017, Order) (Andrews, USDJ)

Tuesday, February 14, 2017

Nonexistent Redesign Warrants Finding of Contempt and Award of Enhanced Damages and Attorney Fees​

Following a bench trial, the court found defendants' purportedly redesigned products infringed plaintiff's radial coupler patent in violation of a permanent injunction because there was insufficient evidence of a redesign. "[Defendants] are certainly vague, or circumspect, about how this purported redesign came about. . . . An actual redesign – as opposed to some after-the-fact, illegitimate claim of redesign used to mask continued infringement – would have been a pointed and considered event that left a distinct trail and explanation from the redesigners and those who ordered it. . . . The evidence here was more than sufficient to demonstrate that there was no 'redesign' in 2008 (in the sense the Federal Circuit uses the term and people acting in good faith purposefully conduct themselves) that included changes to the thread angles. . . . [I]t is quite obvious that there is a global credibility problem with the [defendants’] case. As a result, it is difficult if not impossible to conclude that there was any 'redesign' or 'design-around' because, certainly, modifications done with an eye toward getting around the claims of a patent . . . would have been carefully done, and would have taken place on all the sizes of the accused devices within a brief time and not in dribs and drabs over the course of several months. . . . It must also be noted that [defendants] never mentioned to their customers that they made any changes at all, colorable or otherwise, to their couplers or the angle or number of interior threads. . . . Nothing that seems anything like a design around or changes amounting to a colorable difference happened here. . . . There can be no doubt that [plaintiff] is entitled to a discretionary award of attorneys’ fees under 35 U.S.C. § 285 and Octane Fitness. . . . [A]n appropriate exercise of discretion both warrants and justifies an award to [plaintiff] of treble damages . . . ."

R-Boc Representatives, Inc. v. Minemyer, 1-11-cv-08433 (ILND February 10, 2017, Order) (Cole, MJ)

Monday, February 13, 2017

Number of Patent Litigation Proceedings in 2016

Wireless Device Pairing Patents Not Ineligible Under 35 U.S.C. § 101​

The court denied defendant's motion for judgment on the pleadings on the ground that plaintiff’s wireless device pairing patents encompassed unpatentable subject matter because the ordered combination of claim elements contained inventive concepts. "[Plaintiff's] asserted patents relate to a specific approach to pairing a wireless device, such as a wearable activity tracker, to a 'client' and/or 'server.' . . . All of the asserted claims recite a method or system for pairing that involves three discrete entities: a portable monitoring device, a 'client,' and a 'server.'. . . [N]one of the claim elements, assessed individually, provide an inventive concept. . . . Nevertheless, the Court agrees with [plaintiff] that the ordered combination of claim elements, interpreted in the light most favorable to [plaintiff], contains inventive concepts. . . . [O]ne problem that confronted the process of pairing small, portable devices was that they were 'purposefully designed to eliminate keyboards and multiple buttons in order to satisfy other design criteria.' Tapping overcame this problem in an inventive way because it took advantage of the inherent, technical capabilities of the portable monitoring device -- its ability to detect motion with a motion sensor -- to provide a manner of validating the device that was different from traditional forms of input (i.e., buttons and keyboards). . . . [T]he fact that tapping appears in the prior art does not prevent it from supplying an inventive concept here. Second, the use of a server as a part of the claimed pairing process supplies an inventive concept."

Fitbit, Inc. v. AliphCom d/b/a Jawbone et al, 5-15-cv-04073 (CAND February 9, 2017, Order) (Davila, USDJ)