Thursday, August 17, 2017

Failure to Provide Examiner With Copy of PTAB Decision Does Not Establish Inequitable Conduct​

The magistrate judge recommended granting plaintiffs' motion for summary judgment that their patents were not unenforceable for inequitable conduct or unclean hands because the failure to submit a copy of a disclosed PGR institution decision was not material. "Defendants’ position practically assumes there is some requirement to submit relevant PTAB decisions to the Examiner during prosecution. But Defendants do not cite any authority for this kind of requirement. Regardless, knowing that the Examiner was indeed aware of the decision, Defendants’ position assumes that Examiner is somehow incapable of finding the PTAB’s PGR Institution Decision on his own (otherwise the patentee’s duty of candor would have been discharged by informing the Examiner). . . . It would be difficult to understand how the USPTO could not obtain the necessary publicly available documents from its own administrative agency when needed."

Tinnus Enterprises, LLC et al v. Telebrands Corporation, 6-16-cv-00033 (TXED August 15, 2017, Order) (Love, MJ)

Wednesday, August 16, 2017

TC Heartland Applies to Unincorporated Associations, Such as LLCs​

The court transferred plaintiff's patent infringement action for improper venue and rejected plaintiff's argument that TC Heartland did not apply to limited liability companies like defendant. "The Supreme Court explicitly limited its analysis in [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017)]: 'we confine our analysis to the proper venue for corporations' and reserved the applicability of its holding to unincorporated entities. . . . Unincorporated associations, such as limited liability companies, are generally treated like corporations for purposes of venue, whereby the 'residence' is the association’s principle place of business. Now that the Supreme Court has reinforced that 'residence' for corporate defendants in a patent infringement case is limited to the state of incorporation, [plaintiff] is hard-pressed to present a reason why unincorporated associations should be treated differently."

Maxchief Investments Limited v. Plastic Development Group, LLC (TWP2), 3-16-cv-00063 (TNED August 14, 2017, Order) (Phillips, USDJ)

Court-Appointed Expert Required to Determine Scope of IPR Estoppel​

The court ordered the parties to choose an expert to help determine whether defendant reasonably could have raised certain prior art in its petition for inter partes review. "In its [prior] opinion, the Court did not resolve whether [defendant] reasonably could have raised three prior art references in its IPR petition. The Court orders the parties to confer and choose an agreed, independent, court-appointed expert to offer an opinion on whether a skilled searcher conducting a diligent search reasonably would have discovered these references. The parties will split the cost of the expert evenly."

Oil-Dri Corporation of America v. Nestle Purina Petcare Company, 1-15-cv-01067 (ILND August 14, 2017, Order) (St. Eve, USDJ)

Tuesday, August 15, 2017

Offering Products for Sale Online Does Not Create a Regular and Established Place of Business​

The court granted defendants' motion to dismiss plaintiff's patent infringement action for improper venue because defendants did not have a regular and established place of business in the forum. "At the time of this action's filing, [one defendant] was a sole proprietorship operated by [another defendant], a Texas resident, and the three individual Defendants are each residents of Texas. There is no evidence that any of the Defendants reside in Virginia. Additionally, the fact that [the sole proprietorship defendant] has made its product available online through [an online marketplace] is not sufficient to create a regular and established place of business for the purposes of the patent venue statute."

Glasser v. Barboza et al, 1-17-cv-00322 (VAED August 11, 2017, Order) (Hilton, SJ)

Monday, August 14, 2017

Single Retail Store Sufficient to Create Regular and Established Place of Business​

The court denied defendant's motion to dismiss plaintiff's patent infringement action for improper venue because defendant failed to establish that it did not have a regular and established place of business in the forum. "[Defendant] does not dispute [plaintiff's] allegation it has a retail store in Delaware, it argues one retail store is not enough to establish a 'permanent and continuous presence.' We disagree; [defendant's] retail store is a permanent and continuous presence where it sells the alleged infringing technology to consumers on a daily basis. [Defendant] does not meet its burden of showing it does not have 'a regular and established place of business' in this District."

Prowire LLC v. Apple Inc., 1-17-cv-00223 (DED August 9, 2017, Order) (Kearney, USDJ)

Friday, August 11, 2017

Attendance at CES​ and Single Product Sale Do Not Create Regular and Established Place of Business in Nevada​

The court granted defendant's alternative motion to transfer plaintiff's patent infringement action to the District of Delaware because defendant did not have a regular and established place of business in the District of Nevada. "Plaintiff argues that based on Defendant’s attendances at the CES conferences, as well as one alleged infringing product sale to a Nevada resident, the Court has specific personal jurisdiction over [defendant], and therefore venue is proper in the District of Nevada. The Court disagrees that, under the patent venue statute, the alleged conduct is sufficient to make venue in Nevada appropriate. Additionally, [defendant] does not have a 'regular and established place of business' in Nevada. [Defendant's] only offices in the U.S. are in California. [Defendant] does not have any offices, employees, or land in Nevada."

Percept Technologies, Inc. v. Fove, Inc., 2-15-cv-02387 (NVD August 8, 2017, Order) (Boulware, II, USDJ)

Thursday, August 10, 2017

$30 Million Judgment Set Aside Due to Federal Circuit's Invalidation of Patent Under 35 U.S.C. § 101 in Separate Case​

The court granted defendant's motion for relief from a $30 million judgment because the Federal Circuit invalidated the patent in another case under 35 U.S.C. § 101. "The patent claims at issue in the [other] case which were invalidated by the Federal Circuit were and are the same claims at issue here. . . . Given that the Federal Circuit has conclusively adjudged the patent claims, which provide the very basis for [plaintiff's] $30 million judgment, to be invalid; the Court finds no just reason why such a judgment ought to stand when the claims 'are predicated on a nullity' and unenforceable to the rest of the world."

Prism Technologies, LLC v. Sprint Spectrum, LP, 8-12-cv-00123 (NED August 8, 2017, Order) (Strom, USDJ)