Motions for summary judgment of infringement – as opposed to noninfringement – are rare, and this opinion illustrates why.
No, not that kind of good cause.
It’s been a good week for researching the standards for amending infringement contentions, with two opinions addressing the always-of-interest issue of when amendment of infringement contentions is proper, including clarification of the proper standard for “good cause”. The cases are useful because they present the usual facts and arguments for why leave to amend should or should not be granted, along with the Court’s impression of each.
This is a breach of contract case arising out of the agreement to settle a patent infringement lawsuit. The motion at issue seeks to strike the plaintiff’s damages expert from allegedly interpreting the contract, i.e. whether certain conduct constituted use, and thus a breach; and (2) because the expert relied on “cherry-picked screen shots and hearsay.” The order provides a useful summary of the relevant standards for motions to strike experts, just in case you wanted to steal some really language for your boilerplate files, and a couple of holdings that might be worth referring to in future cases.
The conditioning of a jury question on an affirmative answer to a prior question is called a “stop instruction” because it explicitly tells the jury to “STOP” if it found “no” to the prior question.
A common example is an instruction to the jury not to answer a question asking if the patent claim is invalid if it just answered that the claim is not infringed. That isn’t the case in all trials – if it were then a no claims infringed / no claims valid verdict wouldn’t be possible, and most years that is either the most or the second most common single verdict locally. And it’s the most common defense verdict, certainly – for example in 2017 of the five noninfringement verdicts where invalidity was also submitted, the jury found the claims invalid in four. (It also found the claims invalid in a fifth case where the claims were infringed).
Last week the Federal Circuit addressed this issue in a case from Judge Gilstrap’s court and affirmed the court’s use of – and later enforcement of – the “stop instruction” under the interesting facts of that case.
The defendant in this case won a summary judgment of no infringement and asked the court to declare the case exceptional under 35 U.S.C. § 285 and award $700,000 in attorneys’ fees. The court’s resolution of the motion is yet another data point showing what conduct by a serial filer/bulk filer/ high volume filer is sufficient to trigger liability under Section 285.
While you’re enjoying Parker’s perfect snow angel from Tuesday, I wanted to note that the segment of patent litigation that was affected the most significantly by TC Heartland was pharmaceutical cases, and as I discussed in my paper presented in November, one of the potential solutions to the additional venue obstacles is multidistrict litigation (MDL) proceedings.
One recent EDTX case indicates that that perennial bridesmaid in search of a wedding may actually be approaching at least one altar.
Thought I wouldn’t be able to tie a patent case post to yet another aircraft from the Naval Aviation Museum, didn’t you? Well, you’d be wrong.
Parker is pictured next to a spectacular restoration of an abysmal combat aircraft from World War II – the SB2U Vindicator dive bomber. The Vindicator was state of the art when it joined the US carrier fleet in 1937, painted up all pretty with chrome yellow wings and white tails (carrier air groups were color coded back then, meaning that these are Saratoga aircraft, although on the Enterprise) here in that 1940 Fred MacMurray classic Dive Bomber, but by 1942 it was hopelessly outclassed and had been replaced by the SBD Dauntless. Its last combat action was as part of a hand-me-down to a Marine unit at the Battle of Midway (filmed by Hollywood director John Ford at left), where ground crews had to use adhesive tape from the infirmary to keep the fabric on the wings from peeling off. The aircraft’s performance was so awful that pilots took to calling them Vibrators or Wind Indicators.
So what does this have to do with infringement contentions?
You know those truly awful contentions you sometimes get where you can’t tell what the plaintiff is contending, and the court grants the motion to strike and they replead and it still isn’t clear, and it’s hundreds of pages of completely unintelligible text? These Vindicator-type contentions are what this case is about, and thankfully, it comes with an explanation of what the purpose of infringement contentions is, what not to do when an issue is raised whether they are compliant, and what relief you might be able to get when confronted with them.
It’s often helpful to cut something open to see how it works. During World War II, the Navy cut open a damaged PBY Catalina flying boat and mounted it on a wall in a training facility in Pensacola to help train sailors who would be crewing its sister craft. The cutaway PBY was a local fixture from 1944 to 1997, and was eventually moved to the nearby National Museum of Naval Aviation to sit under a fully restored version, where my youngest son Parker (who’s a certified WW II plane nut) got to study it up close. (That I have a PBY on my work bench at the moment had nothing to do with the trip. Honest)
Readers will recall that I posted last month that a Marshall jury in Judge Roy Payne’s court returned a verdict last month in favor of Ericsson in a case brought against TCL Communications and set damages at $75 million. Two of the numerous pretrial rulings in that case were on the defendant’s motions for summary judgment under Section 101, and on the plaintiff’s claims of willful infringement, both of which Judge Payne denied.
Since the 101 ruling runs against the recent trend of more than half of 101 rulings going the defendant’s way, it is worth a review. But the one I really want to focus on is the willfulness ruling because, as the Court wrote, “it is helpful to explain the standard as it stands today [post-Halo]” which began a metaphorical popping off of the fuselage panels on the standard in order to spend several pages poking around on what the wilfulness standard requires, and what factors need to be considered when deciding whether to bifurcate a willfulness claim. When you’re done reading it, you might find yourself with the same thought I had after studying the interior of a full-size PBY – I have really not understood how this thing fits together, and I have really screwed up ….
Obtaining a transfer requires a showing that the relevant factors show that the proposed transferee forum is “clearly more convenient”, and most motions focus on this test. There is a threshold requirement that the proposed transferee district would have had personal jurisdiction over the defendant(s), but in most cases this requirement is not disputed and thus presents no barrier to a defendant seeking a transfer of venue.
Or at least that was the case prior to the Supreme Court’s decision in Daimler AG v. Bauman, 134 S. Ct. 746, 760 (2014) which essentially restricted general personal jurisdiction to a corporation’s place of incorporation and principal places of business. As a result, as this case shows, a motion to transfer can be defeated by the presence of a defendant who is not subject to this new shriveled and truncated form of personal jurisdiction in the transferee court.
Following In re Micron, district courts are addressing the issue of what level of delay in raising a Fourco venue defense following TC Heartland constitues a waiver. This recent opinion sets forth the relevant standards, and finds that defendants that waited four and five months, respectively, waived the defense of improper venue.