Tuesday, April 24, 2018

Claims of Dietary Supplement Patent Not Directed to Unpatentable Natural Phenomena

The court granted plaintiff's motion for summary judgment that the asserted claims of its dietary supplement patent did not encompass unpatentable subject matter and found that the claims were not directed toward a natural phenomena. "Notwithstanding that the plain claim language refers to producing oxidized CoQ[10] on an industrial scale, Defendants contend that the asserted claims are 'directed to' the natural phenomenon that certain microorganisms have the natural ability to produce at least 70 mole % reduced CoQ[10] under standardized culturing conditions. . . . [T]he claims are 'directed to' a superior method of producing a certain end product -- in this case, efficiently creating oxidized CoQ[10] on an industrial scale -- rather than to the inherent properties of certain biological materials. That the asserted claims rely on the ability of certain microorganisms to produce reduced CoQ[10] at a ratio greater than 70 mole % among the entire coenzymes Q[10] under standard culturing conditions does not indicate the claims are 'directed to' this phenomenon."

Kaneka Corporation v. Zhejiang Medicine Co., Ltd. et al, 2-11-cv-02389 (CACD April 5, 2018, Order) (Otero, USDJ)

Monday, April 23, 2018

Ordinary Observer Test for Design Patent Infringement Requires More than "Quick Glance" to Determine "Same Basic Shape"

The court granted defendants' motion for summary judgment of noninfringement of plaintiffs' vacuum cleaner design patents and rejected plaintiffs' argument that the ordinary observer test may be satisfied with a "quick glance" to determine "the same basic shape." "⁠[Plaintiffs' infringement expert] opined that when an ordinary observer is cognitively processing visual design, the process 'proceeds to a point where recognition takes place,' and '⁠[o]nce this happens, the ordinary observer does not (de facto) continue to view the product at greater levels of detail but simply confirms that the product matches the knowledge they have about a product and then moves on to the next visual or physical task.' According to this approach, 'when any design shape is perceived by the ordinary observer as a member of the [plaintiff's] patented category as determined by overall shape, the act of categorization may constitute baseline infringement. . . . The 'ordinary observer' assumed in [the expert's] analysis does not give the kind of attention to the designs that the Federal Circuit requires under the ordinary observer test. The ordinary observer must consider 'all of the ornamental features illustrated in the figures.' She cannot be assumed to simply take a quick glance at the two vacuums, conclude that they are the same basic shape, and stop looking. The ordinary observer is presumed to use more care in her evaluation."

Dyson, Inc. et al v. SharkNinja Operating LLC et al, 1-14-cv-00779 (ILND March 29, 2018, Order) (Dow, USDJ)

Friday, April 20, 2018

Disgorgement of Profits For Design Patent Infringement Does Not Preclude Award of Pre-Judgment Interest

The court granted plaintiff's motion for pre-judgment interest and rejected defendant's argument that plaintiff was not entitled to any interest because the jury awarded design patent profits under 35 U.S.C. § 289. "Under 35 U.S.C. § 284, a patent owner may recover 'damages adequate to compensate for the infringement . . . together with interest and costs as fixed by the court.' Under 35 U.S.C. § 289, a patent owner may recover an infringer’s 'total profit' made from the infringement. In this case, the jury awarded [plaintiff] $3,018,174 under § 289, the 'total profit' from [defendant's] infringement of the Design Patent. According to [defendant], prejudgment interest is unavailable to [plaintiff] because it can only be recovered under § 284. [Defendant's] position is without legal support and at odds with cases that have applied prejudgment interest to patent infringement awards for total profit under 35 U.S.C. § 289."

Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, 3-17-cv-01781 (CASD April 17, 2018, Order) (Hernandez, USDJ)

Thursday, April 19, 2018

Last Minute Trademark Infringement Claims Do Not "Ferryboat" Pendent Venue for Patent Infringement Claims

The court granted one defendant's alternative motion to transfer plaintiff's claims against it for improper venue and rejected plaintiff's attempt to establish pendent venue by asserting trademark claims in its amended complaint. "After the court requested supplemental briefing on where venue might be proper for the remaining defendants, [plaintiff] amended its complaint to add claims for federal and common-law trademark infringement. Based on those claims, [plaintiff] argues, the court should exercise pendent venue over all of [its] claims against [movant]. . . . Pendent venue is improper in this case. . . . The trademark infringement claims are to 'ferryboat in' venue for the underlying patent claim. [Plaintiff] waited six months to amend its complaint, and it did so only after the court requested additional briefing on where venue might be proper for all defendants. . . . Because the primary claim is for patent infringement and the patent venue statute contains the more specific provisions, pendent venue is not justified in this case."

Wet Sounds, Inc. v. Powerbass USA, Inc. et al, 4-17-cv-03258 (TXSD April 17, 2018, Order) (Rosenthal, USDJ)

Wednesday, April 18, 2018

Failure to Apportion Damages on Claim-by-Claim Basis Does Not Render Expert’s Opinion Unreliable

The court denied defendant's motion to exclude the testimony of plaintiffs' damages expert regarding a reasonable royalty for failing to apportion damages on a claim-by-claim basis. "Plaintiffs [argue] that [the expert's] opinion is economically justified because he opines that infringing any of the asserted patents would 'have the same economic effect as infringing all of them.' In other words, Plaintiffs lose the same profit whether one patent claim in one patent is infringed, or whether multiple claims in multiple patents are infringed. . . . [T]o the extent that Defendant quarrels with certain factual assumptions made by [the expert] in failing to apportion damages on a claim-by-claim basis, those disputes go to the weight that his testimony should be given. . . . [His] reasonable royalty opinion need not be excluded simply because he did not apportion damages on a claim-by-claim basis."

Integra LifeSciences Corporation et al v. HyperBranch Medical Technology, Inc., 1-15-cv-00819 (DED April 16, 2018, Order) (Burke, MJ)

Tuesday, April 17, 2018

Huawei Prohibited From Enforcing Chinese Injunctions Against Standard Essential Patents

The court granted defendant Samsung's motion for an antisuit injunction prohibiting plaintiff Huawei from enforcing injunction orders issued by a Chinese court and found that the Chinese injunction orders would frustrate domestic policies. "⁠[Defendant] argues that allowing [plaintiffs] to enforce the Shenzhen Court’s injunction would frustrate specific domestic policies against injunctive relief on [standard essential patents] and general public policies against anticompetitive conduct and breaches of contract. The bulk of precedent supports its position. . . . There is a risk of inconsistent judgments if I were to find that [plaintiff] is not entitled to seek injunctive relief for its SEPs. In addition, in the absence of an antisuit injunction, [defendant] faces the risk of significant harm, not just in China, but with impacts percolating around the world. The Chinese injunctions would likely force it to accept [plaintiffs'] licensing terms, before any court has an opportunity to adjudicate the parties' breach of contract claims. Under these circumstances, the Shenzhen Order 'interfere[s] with 'equitable considerations' by compromising the court’s ability to reach a just result in the case before it free of external pressure on [Samsung] to enter into a 'holdup' settlement before the litigation is complete.'"

Huawei Technologies Co., Ltd. et al v. Samsung Electronics Co., Ltd. et al, 3-16-cv-02787 (CAND April 13, 2018, Order) (Orrick, USDJ)

Monday, April 16, 2018

Change in Primary Reference Does Not Alter Scope of IPR Estoppel as to Non-Instituted Prior Art Combinations

The court denied in part plaintiff's motion in limine to exclude certain obviousness theories due to IPR estoppel. "⁠[F]or the combinations that Defendant tried to raise in the IPR, but which the PTAB did not institute, Defendant may pursue the combinations at trial. For those combinations 'A in view of B' on which the PTAB did not institute, I would regard that as reasonably raising 'B in view of A' also, and thus I reject Plaintiff's assertions to the contrary. On this point, Plaintiff's motion is denied."

Nox Medical ehf v. Natus Neurology Inc., 1-15-cv-00709 (DED April 12, 2018, Order) (Andrews, USDJ)