Mentor Graphics Files Suit Against EVE-USA, Inc.
According to Mentor Graphics Corporation's complaint (PDF), this lawsuit follows EVE-USA, Inc.'s declining a March 2005 offer to license U.S. Patent No. 6,876,962 (PDF). EVE is the U.S. subsidiary of Emulation and Verification Engineering, SA (France).
The '962 patent claims a tool for designing and debugging complex integrated circuits that emulates multiple circuits concurrently. An advantage to such a tool is that emulating multiple circuits simultaneously is more efficient, from a computer resource viewpoint, than emulating integrated circuit designs one at a time. Mentor Graphics alleges EVE's ZeBu Server directly infringes the '962 patent and also induces and contributes to infringement of the '962 patent. Mentor Graphics seeks injunctive relief and treble damages for EVE's alleged use of the patented integrated circuit emulation and verification technology.
Videx, Inc. Locks on to Medeco Security's Alleged Infringement
Videx, Inc., a Corvalis-based manufacturer of electronic access control products, has sued lock manufacturer Medeco Security Locks, Inc., for infringement of Videx’s U.S. Patent No. D457,051, entitled “Key for Electronic Lock.” However, Videx’s Complaint is short on details and does not specifically identify the allegedly infringing Medeco product(s). Rather, Videx alleges only that Medeco has made, used, imported, offered to sell, or sold “keys" embodying the patented invention.
Continue Reading...Benchmade Knife Co., Inc. v. Benson d/b/a RoadsideImports, LLC
When things go wrong for Mr. Benson, they all go wrong.
After denying Mr. Benson’s motion to dismiss, Judge Haggerty denied Mr. Benson’s motion to transfer to Colorado. A scheduling order issued requiring each party to submit a letter indicating whether mediation should be undertaken. The June 11, 2010 deadline for such letters came and passed with only Benchmade Knife Co. and Mentor Group, LLC responding. Even though Plaintiffs conferred with Mr. Benson about a protective order and entering settlement discussions, Mr. Benson apparently did not feel obliged to submit a letter to the Court by June 11, 2010.
Judge Haggerty’s next order was for Mr. Benson to show cause in writing by June 30, 2010 why he should not be sanctioned for not complying with court orders. Mr. Benson was also ordered to explicitly state to what extent he would keep settlement discussions confidential. Mr. Benson responded on June 21, 2010 with a mediation request stating this lawsuit is driving him into bankruptcy, that he unknowingly sold knives covered by Benchmade’s patents, and offering to testify on Benchmade’s behalf in other lawsuits. Even though timely, such a response was not what the Court wanted.
Continue Reading...
Dino-Lite Put Under the Microscope
Computer Stores Northwest, Inc. (CSNW), based in Oregon, and Scalar Corporation (Scalar), a Japanese corporation, have sued Dunwell Tech, Inc. (Dunwell) for infringing U.S. Patent No. 5,442,489 [PDF] (the ’489 patent). The amended complaint [PDF] identifies Scalar as the owner of the ’489 patent and CSNW as the exclusive licensee.
The ’489 patent is directed to a magnifying observation device that captures an image of an object and displays the image on a monitor. CSNW and Scalar claim that the “Dino-Lite” series microscopes sold by Dunwell infringe the ’489 patent.
Reexamination
As noted in CSNW and Scalar’s amended complaint, eight claims the ’489 patent underwent reexamination at the request of Scalar in view of prior art references that surfaced during examination of Korean and Japanese counterpart patent applications. In the reexamination proceeding, the U.S. Patent and Trademark Office confirmed the patentability of one independent claim, and Scalar amended the remaining seven claims and added 18 new claims. The reexamination certificate issued on March 30, 2010, 14 days after the original complaint [PDF] was filed. In its answer to the amended complaint [PDF], Dunwell alleges that it has preclusive rights, intervening rights, or both under 35 U.S.C. §§ 252 and 307.
Digimarc and Shazam Settle
Today Digimarc filed a notice of voluntary dismissal [PDF], ending its brief lawsuit against Shazam. Digimarc had alleged that Shazam's cell-phone-based song identification service infringes six Digimarc patents. Because Shazam had not yet filed an answer, the dismissal was filed under FRCP 41(a)(1)(A)(i). No details of the settlement are known.
It's a lawsuit!
Aaron Sternberg and Borer's Nest, Inc. announced the arrival of a new lawsuit against Griffin International Companies, Inc. The suit weighed one asserted patent, U.S. Patent No. 7,582,017 (PDF), and was five counts long at filing. The lawsuit brings demands for damages and preliminary and permanent injunctions to stop Griffin from selling foam rubber video game controllers. The new suit is also demanding attorney's fees and is expected to keep everyone quite busy.
Gambaro Posts Video of his Infringement Contentions
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Recently filed documents in this case reveal that Thomas L. Gambaro, one of the defendants and the inventor of the patent at issue, has posted a YouTube video setting forth the details of his infringement contentions against FLIR. In the video, Mr. Gambaro speaks to viewers as "Internet jury members" and invites them to cast a vote whether they agree with his infringement analysis.
FLIR Moves to Strike Answer
This case began when FLIR brought a declaratory judgment action against Thomas L. Gambaro and Motionless Keyboard Co. (MKC), who had demanded payment from FLIR, alleging that certain FLIR handheld thermal imagers infringed U.S. Patent No. 5,332,322 (reported here).
Acting pro se, Gambaro filed an answer [PDF] on behalf of himself, MKC and a third company called Patent Enforcement Co., which was not named in the complaint. Because Gambaro is not an attorney, FLIR filed a short motion to strike the answer [PDF], arguing that Gambaro, as a non-attorney, cannot answer on behalf of either MKC or Patent Enforcement Co. FLIR's motion seems like a no-brainer. It is well settled hornbook law that corporations must be represented in court by counsel.
FLIR's motion is set for oral argument before Judge Anna J. Brown at the same time as the Rule 16 Conference on June 24, 2010 at 1:30 PM ,
Digimarc Adds Three More Patents to Case Against Shazam
Digimarc has filed a Second Amended and First Supplemental Complaint [PDF] in its case against Shazam. Compared to the original complaint, this latest complaint adds three new patents to the case: U.S. Patent Nos. 6,829,368 [PDF]; 7,562,392 [PDF]; and 7,693,965 [PDF].
Why is it an amended and supplemental complaint? The answer traces back to the Federal Rules of Civil Procedure (FRCP). FRCP 15(a) governs amendments to the pleadings and does not restrict the nature of the amendment. FRCP 15(d) governs supplemental pleadings, which are for "transactions or occurences or events which have happened since the date of the pleading to be supplemented." In this case, U.S. Pat. No. 7,693,965 issued April 6, 2010 -- after the original complaint (but one day before the First Amended Complaint was filed). Thus, the addition of the '965 patent in the most recent complaint is a "supplement" to the original complaint.
Another common situation in patent litigation that calls for a supplemental, rather than an amended, pleading is reexamination. When a patent in suit is subject to reexamination, and a reexamination certificate issues during the pendency of the lawsuit, then the proper way to allege causes of actions or defenses based on the reexamination is by supplemental amendment under FRCP 15(d), as I teach in my reexamination course for Patent Resources Group.
Google v. Traffic Information Will Remain in Oregon
Judge King affirmed Magistrate Judge Hubel's recommendation denying Traffic's motion to dismiss or alternatively transfer the case to the Eastern District of Texas. Order [PDF]
Google Responds to Traffic's Objections
Google has filed a 41-page response [PDF] to Traffic's objections to Magistrate Judge Hubel's recommendation to deny Traffic's motion to dismiss or transfer this case to the Eastern District of Texas. Google argues that this district, its chosen forum, is more convenient to the parties and witnesses than Eastern Texas, notwithstanding Traffic's other cases (against Google's customers) there. The objections will be decided by Judge Garr M. King.
Traffic Gets a Settlement in Texas
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Traffic Information has settled with Garmin and Best Buy, defendants in its parallel Texas case. Traffic is both the defendant in a declaratory judgment case here in Oregon and the plaintiff in cases in the Eastern District of Texas. All cases involve the same pair of patents. Terms of the settlement were not divulged. Here is the Texas court's order of dismissal [PDF] of Garmin.
Meanwhile, Traffic tried to transfer the Oregon case to Texas, but Magistrate Judge Hubel recommended against transfer. Traffic has filed an objection to the recommendation.
FLIR Brings DJ Action Against Motionless Keyboard
Motionless Keyboard Co. (MKC) owns U.S. Patent No. 5,332,322 [PDF], entitled "Ergonomic Thumb-Actuable Keyboard for a Hand-Grippable Device." MKC's principal and the inventor of the '322 Patent is Portland resident Thomas L. Gambaro.
Several years ago MKC tried to enforce the '322 patent against Microsoft, but the Oregon district court granted summary judgment of noninfringement (case No. Civ. 04-180-AA), and the Federal Circuit affirmed. Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007).
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More recently, MKC tried to convince Wilsonville-based FLIR Systems, Inc. to take a license to the '322 Patent, but FLIR refused, arguing noninfringement based on the claim construction from the prior litigation. In his last letter to FLIR, Gambaro said he was "An Army Of One," and asked "Does FLIR and the Board of Directors want to be at war with 'An Army of One'?" FLIR answered in the affirmative by filing a complaint [PDF] asserting the following DJ claims:
- Noninfringement
- Invalidity
- Patent Misuse
The case is No. 3:10-cv-00231-BR, assigned to Judge Anna J. Brown.
Traffic Files Objection to Magistrate's Recommendation
Traffic has filed an objection [PDF] to Magistrate Judge Hubel's findings and reco
mmendation [PDF] that the court deny Traffic's motion to dismiss and transfer [PDF]. Traffic argues again that this case belongs in deep in the heart of Texas (eastern Texas, that is -- Marshall), where Traffic has other pending lawsuits asserting its same patents that are the subject of this declaratory judgment action in Oregon. Traffic's principal argument in its objection is that a transfer would be in the best interest of judicial economy. Traffic argues that "the existence of multiple lawsuits involving the same issues is a paramount consideration when determining whether a transfer is in the interest of justice." (quoting In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) (emphasis added by Traffic)).
Expired Patents and False Marking
Oregon-based Lightspeed Aviation sued Bose Corp. in the District of Oregon for false patent marking (see complaint [PDF]). According to the complaint, Bose marks a number of its headphones as "patented" even though the corresponding patents are expired, and, according to Lightspeed, this constitutes false patent marking. Lighspeed and Bose are also involved in another patent lawsuit in the District of Massachusetts.
This is not the first false patent marking case that involves expired patents. Recently, Matthew Pequignot, a Washington D.C. patent attorney, sued Solo Cup and Gillette under the false marking statute (35 U.S.C. § 292) for marking their products with expired patent numbers. The court in the Solo Cup case dismissed Pequignot's claim finding that Pequignot did not prove that Solo Cup marked its products "for the purpose of deceiving the public" as required in § 292. The Solo Cup case is pending before the U.S. Court of Appeals for Federal Circuit. The Gillette case is stayed pending the outcome of the Solo Cup case.
Construing Claims in the Epson vs Inkjet Cartridge Sellers Cases
The parties have filed a joint claim construction statement in advance of the upcoming Markman hearings.
Previously Epson had reduced the number of asserted patents from eighteen to four: U.S. Patent Nos. 5,622,439 ("the '439 patent"), 5,158,377 ("the '377 patent"), 6,502,917 ("the '917 patent"), 
and 7,008, 053 ("the '053 patent") and now they assert definitions of certain terms as summarized in the joint claim construction chart (pdf). There are also some interesting assertions. For example, several of the claims refer to a dot matrix printer. Wikipedia defines a dot matrix printer or impact matrix printer as "a type of computer printer with a print head that runs back and forth, or in an up and down motion, on the page and prints by impact, striking an ink-soaked cloth ribbon against the paper, much like the print mechanism on a typewriter . . . Although nearly all inkjet, thermal, and laser printers print closely-spaced dots rather than continuous lines or characters, it is not customary to call them dot matrix printers." Nonetheless, the parties appear to concur that the claim language dot matrix printer includes ink jet printers.
Google v. Traffic Is Stuck in Oregon
Magistrate Judge Hubel recommended that Traffic's motion to dismiss or alternatively transfer to the Eastern District of Texas be denied. See his Findings and Recommendations [PDF].
Traffic argued that this declaratory judgment action should be dismissed because Google did not have a reasonable apprehension of a being sued because Traffic only sued Google's customers, such as T-Mobile, and that Traffic never communicated to Google directly any accusations of infringement. Traffic sent a confidential settlement communication (an e-mail) to T-Mobile stating Traffic's belief that Google's Mobile Maps application infringed when run on a T-Mobile phone. Google argued that the e-mail, even though not directed at Google, along with Traffic's extensive litigation against Google's customers, was sufficient to support DJ jurisdiction, and Judge Hubel agreed.
Traffic alternatively argued that the case should be transferred to Texas, where other cases are pending involving the same asserted patents. Google countered that its operations concerning the accused product were centered around Oregon (specifically, northern California and Washington) and that Traffic and its inventors were based in Oregon, and Judge Hubel again agreed with Google.
Traffic can ask the Article III judge, in this case Judge Garr M. King, to review the magistrate's recommendation. Should this case indeed stay in Oregon, it will be quite interesting to see how the Texas cases and the Oregon case proceed in parallel.
Rule 56(f) Redux: Strategic Considerations Raised by Kount, Inc. v. iovation, Inc.
Recent developments in Kount, Inc. v. iovation, Inc. highlight important strategic considerations that should go into the decision of whether to bring an early motion for summary judgment as a means to reduce litigation and discovery costs by focusing the case on a narrow and potentially dispositive issue.
As discussed last year, in the post Patentee Kount Inc. Prevails in Rule 56(f) Motion for Discovery on Infringement, iovation, Inc. adopted an aggressive defense strategy in an infringement lawsuit brought by Kount, Inc. for infringement of U.S. Patent No. 7,730,871 B2. iovation moved for a protective order and brought a very early motion for summary judgment of noninfringement on a very limited issue relating to a single feature of the claims of the '871 patent. The court granted iovation's Fed. R. Civ. P. 56(f) motion to stay summary judgment proceeding pending discovery, and a motion to compel iovation to participate in limited discovery on the dispositive issues raised in its summary judgment motion.
Since that time, the parties have engaged in the limited discovery as ordered by the court. Kount recently moved for leave to supplement its opposition [pdf] to iovation's motion for summary judgment. Kount argued that iovation changed its argument on claim construction and introduced new evidence in its reply in support of summary judgment (filed after discovery) compared with its original positions and evidence prior to discovery. Kount's motion was unopposed and was granted.
These events raise important strategic considerations when considering whether to bring, and how to respond to, an early summary judgment motion such as the one brought by iovation. Aside from the chance of a quick and (relatively) inexpensive victory, the major advantages of such a motion lie in focusing discovery on a single, narrowly defined issue that is presumably favorable to the defendant, which can help to constrain discovery and overall litigation costs, at least in the initial phase of a case, compared to the cost of conducting broad discovery.
As is evident in the Kount, Inc. v. iovation, Inc. case, however, there is also a strategic pitfall, or at least disadvantage, to a party that makes an early motion for summary judgment, in that the moving party may effectively lock itself into particular arguments and theories even though those theories may no longer appear to be the best or only theories of the case upon further factual discovery (either in response to a Rule 56(f) motion or while such a motion is pending). Here, iovation suffered little or no harm from this pitfall, but one can imagine a situation where a party might later want to make an inconsistent, rather than simply additional argument, and might be faced with a motion to strike rather than merely a motion to file a surreply.
The Patent Hawk Eyes Autodesk
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Gary Odom (aka the Patent Hawk) sued Autodesk, Inc., the makers of the AutoCAD® software, in the U.S. District Court for the District of Oregon alleging that Autodesk infringes claims 8, 10, and 14 of U.S. Patent No. 7,363,592 (the ’592 patent) by making and selling Autodesk 2009, which utilizes Microsoft’s Ribbon menu system. Complaint [PDF].
The ’592 patent relates to tool group manipulations, or so-called active tool groups.
Continue Reading...The Patent Hawk Sinks its Talons into Microsoft
Gary Odom (aka the Patent Hawk) sued Microsoft Corporation in the U.S. District Court for the Eastern District of Texas alleging that Microsoft infringes various claims of U.S. Patent No. 7,363,592 (the ’592 patent) by making and selling Microsoft Office 2007. Complaint [PDF].
The ’592 patent relates tool group manipulations, or so-called active tool groups.
Odom alleges that Microsoft popularized active tool groups with its Office 2007 Ribbon. According to Odom, the most common use of active tool groups is a button to show more tools for a tool group.
Continue Reading...Crimson Trace Seeks to Amend Complaint to Add One Patent, Drop Another
Crimson Trace has filed a motion seeking to amend its complaint against LaserMax to assert infringement of "newly issued" U.S. Patent No. 7,472,830, which claims a "Compact Laser Aiming Assembly for a Firearm." In the motion, filed September 9, 2009, Crimson Trace contends that because the '830 Patent issued only eight days before Crimson Trace filed its original complaint, there was "insufficient time for the pre-filing investigation needed to include this patent in the complaint."
Crimson Trace also moves to voluntarily dismiss its claims for infringement of U.S. Patent No. 5,179,235 with prejudice and, for good measure, to dismiss LaserMax's related counterclaim, which seeks a declaratory judgement that the '235 Patent invalid and/or not infringed. In essence, Crimson Trace argues that by dismissing its claims under the '236 Patent with prejudice, and offering LaserMax a covenant not to sue under the patent, there remains no case or controversy concerning the '235 Patent sufficient to support federal subject matter jurisdiction over LaserMax's counterclaim.
Google Brings DJ Action Against Traffic Information
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Google filed a compliant [PDF] for declaratory relief regarding U.S. patent nos. 6.466,862 [PDF] and 6,785,606 [PDF], allegedly owned by Portland-based Traffic Information LLC. The complaint seeks judgments that the patents are invalid and that the traffic feature of Google's Google Maps product does not infringe.
The patents have been asserted against a number of companies in cases in the Eastern District of Texas before Judge T. John Ward. A list of the cases is available at justia.com.
Interestingly, one of the inventors on both patents is Kevin L. Russell, a partner at Portland patent boutique firm Chernoff, Vilhauer, McClung & Stenzel, LLP. Another one of the inventors is Bruce W. DeKock, a patent attorney in Bend, Oregon.
The case number is 3:09-cv-00642, assigned to Magistrate Judge Dennis J. Hubel. Google is represented by Baker & Hostetler and Perkins Coie. Traffic Information is represented by Texas firm Polasek, Quisenberry & Errington and Stoll Berne.
For the relevant history of this issue, read after the jump.
Continue Reading...QSIndustries Attempts to Derail Broadway's Decoders
QSIndustries, Inc., Frederick Severson, and Patrick Quinn (collectively “QSI”) sued Broadway Limited Imports, LLC, Precision Craft Models, Inc., and Robert Grubba (collectively “Broadway”) in the U.S. District Court for the District of Oregon alleging that Broadway contributorily infringes and induces infringement of various claims of U.S. Patent Nos. 5,448,142 (the ’142 patent) and 5,896,017 (the ’017 patent) by importing, offering for sale, and selling model trains that contain sound and control systems and controllers specially designed to operate those systems.
The ’142 and ’017 patents relate to control systems for model railroads that use polarity reversals (“PR”) and polarity reverse pulses (“PRP”) of a DC power signal to trigger and control special effects in a model train locomotive, such as sound effects.
Continue Reading...Nike Sprints from the E.D. of Texas
On October 20, 2008 Levert Lyons (a Michigan resident) sued Beaverton-based Nike, Inc. in the Eastern District of Texas claiming infringement of U.S. Patent No. 5,513,448 titled "athletic shoe with compression indicators and replaceable spring cassette."
Although Nike admitted venue was proper in the E.D. of Texas, Nike filed a motion to transfer venue [PDF] under 28 U.S.C. § 1404(a) to a more convenient venue -- the District of Oregon.
In its motion, Nike argued that private and public interest factors strongly supported transfer to the District of Oregon. Specifically, Nike claimed that Oregon was home to a vast majority of the witnesses, including those who helped designed the accused products -- the Air Jordan XXI and Air Jordan XXII -- and these witnesses would be substantially inconvenienced in traveling to Texas. Nike also argued that apparently it would not be inconvenient for Mr. Lyons to travel to Oregon given that he filed the suit in the E.D. of Texas, which is nearly 1,000 miles from his residence.
Mr. Lyons responded to Nike's motion [PDF] arguing that the court should give little weight to the potential inconvenience of Nike's witnesses because these witnesses were not non-party witnesses; rather they were employees of Nike.
In its order [PDF], the E.D. of Texas granted Nike's motion to transfer venue. In particular, the E.D. of Texas cited a string of recent cases of the U.S. Court of Appeals for the Federal Circuit that considered whether to transfer venue out of the E.D. of Texas. See In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) (ordering transfer); In re Volkswagen of Am., Inc., 566 F.3d 1349 (Fed. Cir. 2009) (denying transfer); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) (ordering transfer).
In these cases, the Federal Circuit applied the law of the U.S. Court of Appeals of the Fifth Circuit, which involves consideration of private and public interest factors to determine whether to transfer venue.
The private interest factors include:
- "The relative ease of access to sources of proof
- The availability of compulsory process to secure the attendance of witnesses
- The cost of attendance for willing witnesses
- All other practical problems that make a trial easy, expeditious and inexpensive." In re TS Tech USA, 551 F.3d at 1319.
The public interest factors include:
- "The administrative difficulties flowing from court congestion
- The local interest in having localized interests decided at home
- The familiarity of the forum with the law that will govern the case
- The avoidance of unnecessary problems of conflicts of laws." Id.
In his patent blog PatentlyO, Dennis Crouch summarizes how the Federal Circuit applied these factors in re Genetech and Volkswagen.
In this case, the E.D. of Texas found that the private interests weighed in Nike's favor. First, many of the potential witnesses lived in Oregon while none lived in the E.D. of Texas. Second, the alleged infringing shoes where primarily designed in Oregon. Moreover, aside from Nike selling shoes and having one store in the E.D. of Texas, Nike and Mr. Lyons had no other connections with the E.D. of Texas. Finally, Mr. Lyons failed to show that Oregon would be a less convenient forum than Texas.
Continue Reading...New Case in the District by Removal from State Court
Carson Smith and Smithonly Corp. filed a complaint [PDF] in the Circuit Court of the State of Oregon for the County of Multnomah, alleging causes of action for breach of contract, trade secret misappropriation and breach of fiduciary duty against defendants Dennis M. Healy et al.
On Decmeber 18, 2009, Smith filed an amended complaint [PDF] in the same court. The dispute concerns Smith's lock light, a small LED-based lighting unit that attaches to a padlock or a door near a doorknob. Smith's lock light is the subject of his pending patent application, which was published on July 30, 2009, as Pat. Appl. Pub. No. 2009/0190331 [PDF].
On January 22, 2010, Healy filed a notice of removal [PDF] in the federal district court. The notice of removal argues that Smith's claims are preempted by federal patent law. Healy filed an answer [PDF] on January 29, 2010.
The case number is 3:10-cv-00072, and it is assigned to Judge Anna J. Brown. Smith et al. are represented by Brindle McCaslin & Lee, P.C., and Healy et al. are represented by Bullivant Houser Bailey PC.
Arthrex Sued Again for Infringement
Smith & Nephew, Inc.and John O. Hayhurst, M.D. sued Arthrex, Inc. for a second time in the U.S. District Court for the District of Oregon alleging that Arthrex infringed the claims of U.S. Patent No. 5,601,557 (the ’557 patent) by marketing and selling various suture anchors used to attach soft tissue to bone (e.g., during arthroscopic shoulder reconstruction).
This lawsuit, assigned case no. 3:08-cv-00714-MO (“second lawsuit”), is closely related to a lawsuit plaintiffs filed in 2004, assigned case no. 3:04-cv-00029-MO (“first lawsuit”), for which a $20 million judgment was entered on January 21, 2009 in favor of plaintiffs on a jury verdict of infringement.
However, as we described in a previous post, Anthrex Springs Back from Infringement Ruling, the Federal Circuit recently reversed the judgment of infringement against Arthrex and remanded for a new trial. See Smith & Nephew, Inc. v. Arthrex, Inc., 2009 U.S. App. LEXIS 26268 (Fed. Cir. Dec. 2, 2009).
Continue Reading...Arthrex Springs Back from Infringement Ruling
In a nonprecedential opinion [PDF], the Federal Circuit reversed a judgment of infringement against Arthrex and remanded for a new trial. See Smith & Nephew, Inc. v. Arthrex, Inc., 2009 U.S. App. LEXIS 26268 (Fed. Cir. Dec. 2, 2009). 
On January 12, 2004, Smith & Nephew, Inc. and John O. Hayhurst, M.D. sued Arthrex, Inc. in the U.S. District Court for the District of Oregon alleging that Arthrex infringed the claims of U.S. Patent No. 5,601,557 (the ’557 patent) by marketing and selling various suture anchors used to attach soft tissue to bone (e.g., during arthroscopic shoulder reconstruction).
Five years later, a $20 million judgment [PDF] was entered on January 21, 2009 in favor of plaintiffs on a jury verdict of infringement. According to the judgment, Arthrex indirectly infringed claims 1-7 of the ’557 patent by selling / marketing its Bio-SutureTak anchors, PEEK SutureTak anchors, PEEK PushLock anchors, and Bio-PushLock anchors. The indirect infringement was found to be willful. Arthrex appealed.
For details on what happened next, see the after the jump.
Continue Reading...
Bringing Patents to a Knife Fight
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Oregon-based Benchmade Knife Co. Inc. and Mentor Group, LLC sued Jonathan Benson, alleging infringement of U.S. Patent Nos. 6,550,832, 6,675,484, and 5,822,866; trademark infringement; unfair competition; and false advertising. The August 18, 2008 complaint touched off not only a lawsuit, but a no-holds-barred knife fight. Benchmade and Mentor sent a September 24, 2008 settlement offer requesting Mr. Benson to concede to a laundry list of items and pay $15,000. Mr. Benson’s animosity reared when he posted the letter on assistedknives.com/Benchmade/BenchmadeExtortion, then introduced new materials on his website directed to Benchmade. Benchmade filed amended complaints to add defamation allegations and a request for trade libel relief in response to Mr. Benson’s modified website. Mr. Benson formed Roadside Imports, L.L.C. in time for the company to be included as a defendant on the second amended complaint, a maneuver he may come to regret.
Continue Reading...
Ninestar Strikes Back with Counterclaims in the Epson Inkjet Case
Epson continues to aggressively assert its patents against manufacturers and resellers of inkjet cartridges, but some of the defendants are fighting back.
In its Second Amended Answer (pdf), Ninestar - or more precisely Defendants Ninestar Image Co. Ltd. (now known as Ninestar Technology Co., Ltd.), Technology Company, Ltd., Town Sky, Inc., and Dataproducts USA LLC - in addition to its antitrust claims, also asserted the usual defenses of non-infringement, invalidity and inequitable conduct. As a further defense, Ninestar asserts that the replacement of ink cartridges, even with new compatible cartridges, constitutes permissible repair essentially extinguishing any patent infringement claim under a first sale (patent exhaustion) doctrine.
Epson sought to dismiss the Ninestar counterclaims, but the Court denied Epson's motion to dismiss Ninestar's Walker Process antitrust counterclaim (§ 2 Sherman Act) but granted Epson's motion to bifurcate the antitrust claims pending outcome of the infringement case. See the Opinion and Order (pdf) from January 19, 2010.
The parties continue to spar over the scope of the court's order, so stay tuned.
Epson Inkjet Case Not Transferred: Green Project Fails To Persuade Court to Transfer Case to California
In Seiko Epson v. Abacus 24-7 , et al., (No. 3:08-cv-00452-BR), defendants Green Project, Inc. and Joseph Wu moved to sever Epson’s patent infringement claim and its own counterclaims from the remainder of this case and transfer to the United States District Court for the Central District of California, Western Division, where Green Project’s principal place of business is located. Green Project contended (1) that severance was appropriate because it is the only party in the case that exclusively sells recycled (as opposed to new compatible) inkjet cartridges, and (2) accordingly, it has a defense to Epson’s patent-infringement claims based on patent exhaustion that none of the other defendants share and that may cause confusion and thus prejudice in the minds of the jury. Green Project also asserted that transfer of the severed claim to California was appropriate because Green Project has few advertising contacts with the District of Oregon and its witnesses are all located in California, which makes it inconvenient to defend this action in Oregon.
In its Order (pdf), the Court made short work of Green Project's motion, concluding that Defendants, Green Project and Joseph Wu failed to establish good reason for the Court to exercise its discretion to sever the claims against them in order to facilitate the transfer to another district. The Court reasoned that the Green Project matter involves closely related and complex patent claims and defenses that have been and continue to be litigated in multiple cases in the Oregon court for nine years. Judge Anna Brown explained that the Oregon Court’s "long-standing familiarity with each of the related cases militates against a transfer, particularly in light of the commonality of many of the issues including the issues relating to the alleged sale of Seiko Epson’s recycled ink cartridges." The Court further did not foresee any likelihood of confusion or prejudice to Defendants Green Project or Wu.
Digimarc Sues Shazam Asserting Three Patents
Beaverton-based Digimarc Corp. filed a complaint [PDF] on November 16, 2009, against Shazam Entertainment, Ltd., an English company, alleging that Shazam's cell-phone-based song identification service infringes three Digimarc patents. Shazam's service enables someone hearing a song to send a segment of the song on a cell phone to Shazam, which returns the identity of the song and related content, such as a discography and opportunities to buy the artist's work. The asserted Digimarc patents are U.S. Patent Nos.
The case number is 3:09-cv-1355 and the assigned judge is Garr M. King. Digimarc is represented by Portland patent boutique firm Klarquist Sparkman. As of today, Shazam has not filed an answer or otherwise appeared in the case.
Continue Reading...Seiko Epson Goes After Inkjet Cartridge Manufacturers and Resellers Via Five Cases in The District
Seiko Epson is the owner of some 18 patents for inkjet cartridges, including U.S. Patent Nos. 5,158,377; 5,622,439; 6,502,917; 6,550,902; 6,955,422; 7,008,053. Currently, Seiko Epson has five patent infringement suits pending in the district:
-- In 2006, Seiko Epson sued 24 companies in Seiko Epson v. Glory South, et al. (No. 3:06-cv-00236-BR) (pdf) , alleging infringement of 13 patents, for the manufacture, import, or distribution of aftermarket ink cartridges for resale in the U.S. and a second case
Seiko Epson v. Glory South, et al. (No. 3:06-cv-00477-BR) (pdf) against the same defendants alleging two more patents US 7,008,053 (pdf) and US 7,011,397 (pdf) .
-- In 2007, Seiko Epson sued four internet resellers of inkjet cartridges, Seiko Epson v. E-Babylon, Inc. et al. (No. 3:07-cv-00896-BR (pdf) alleging infringement of 18 patents (Stoel Rives LLP represents defendant Linkyo Corp.)
-- In 2008, Seiko Epson sued four more internet resellers of inkjet cartridges, Seiko Epson v. Inkjetmadness.com, Inc. et al. (No. 3:08-cv-00452-BR) (pdf) alleging infringement of the full barrage of eighteen patents (Stoel Rives LLP represented Comptree Inc. in this matter, and for a time represented Inkjetmadness.com).
-- In 2009, Seiko Epson sued six more companies alleging infringement of those eighteen patents, Seiko Epson v. Abacus 24-7 LLC, et al. (No. 3:08-cv-00452-BR) (pdf) .
The cases have been assigned to Judge Anna J. Brown.
Inkjet cartridge manufacturer Ninestar Technology Co. was one of the defendants in the first lawsuit. In conjunction with that lawsuit, Epson also sued foreign inkjet cartridge manufacturers, including Ninestar, in the International Trade Commission (ITC). At the ITC, Epson obtained a favorable verdict, which was affirmed on appeal to the Federal Circuit.
Action on these cases had been stayed pending the appeal of the ITC proceeding but the cases are now proceeding with discovery which for most of the cases is scheduled to close July 22, 2010.
A few of the defendants in these cases, including E-Babylon Corp., Comptree Inc., and Media Street, Inc. have settled, but most of the defendants are still in the cases, many of them being defended by counsel for manufacturer Ninestar Technology Co., Ltd.
QSI and ESU Call It Quits
QSIndustries, Inc., Frederick Severson, and Patrick Quinn (collectively “QSI”) and ESU, LLC have settled the patent infringement action filed by QSI on May 11, 2006. Terms of the settlement were not disclosed.
Broadband Graphics v. TechSmith Voluntarily Dismissed
On October 22, 2009, Broadband Graphics, LLC and TechSmith Corp. stipulated to a voluntary dismissal [PDF] of their patent infringement case.
Columbia Sportswear and Simms Fishing Products Settle Their Patent Dispute
Columbia Sportswear Co. and Simms Fishing Products, LLC have settled the declaratory judgment action filed by Columbia seeking to invalidate Simm’s U.S. Patent Nos. 4,405,376 [PDF] and RE 38,497 [PDF]. By an order [PDF] dated September 1, 2009, the court dismissed the case without prejudice. Terms of the settlement were not disclosed.
Columbia Sportswear Brings DJ Suit Against Simms Fishing Products
Columbia Sportswear Co. has filed suit in the district seeking to invalidate U.S. Patent Nos. 4,405,376 [PDF] and RE 38,497 [PDF]. The complaint [PDF] alleges that both patents are invalid under 35 U.S.C. §§ 102, 103 and 112. The complaint does not identify particular prior art or otherwise detail its allegations of invalidity.
Columbia also seeks a declaration that it does not infringe the two patents, which are owned by Simms Fishing Products, LLC in Bozeman, Montana. According to the complaint, Simms believes that Columbia’s Queets River Wading Jacket infringes claims 1-5 and 10-14 of the ’376 patent and claims 11-13, 18-21, 25-29 and 31 of the ’497 patent. Simms has not yet answered. The court has twice granted Columbia’s motions to extend the time in which the answer is due. The court’s latest order set a July 15 deadline, but no answer has been filed.
The case is no. 3:09-cv-00227-KI, assigned to Judge Garr M. King.
Inequitable Conduct: To Plead or Not to Plead?
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Broadband Graphics, LLC, sued TechSmith Corp. in the District of Oregon, alleging infringement of U.S. Patent Nos. 7,013,432 and 7,313,765, both directed to end user interfaces (EUIs) (complaint [PDF]). Specifically, Broadband alleged that TechSmith’s Camtasia Studio® screen recorder software and Morae® testing and market research software infringed the ’432 and ’765 patents.
TechSmith filed its original answer [PDF] on June 17, 2009, followed by an amended answer [PDF] on July 9, 2009. One noticeable difference between the original answer and the amended answer is that TechSmith removed patent misuse defenses and counterclaims from the amended answer. The original answer alleged that the ’432 and ’765 patents were unenforceable due to inequitable conduct because the applicant “willfully or with gross negligence withheld information material to . . . patentability” with intent to deceive the PTO.
The U.S. Court of Appeals for the Federal Circuit recently opined on the heightened pleading requirements under Fed. R. Civ. P. 9(b) as applied to allegations of patent unenforceability. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009). In Exergen, the court held that “in pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” Id. at 1327.
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Patentee Kount, Inc. Prevails in Rule 56(f) Motion for Discovery on Infringement
The court rejected an unusual and aggressive defense strategy in a patent infringement case brought by Kount, Inc. against iovation, Inc. on March 3, 2009 alleging infringement of U.S. Patent No. 7,330,871 B2, entitled “Online Machine Data Collection and Archiving Process.” The ’871 patent relates to a process for collecting and archiving information, including identifying information for the customer’s computer, during the course of an online payment transaction.
In defending the infringement claim, iovation adopted a very aggressive strategy, moving for summary judgment of noninfringement [pdf] on June 25, 2009, only two months after answering. It based its noninfringement argument on a very narrow point, asserting that each claim of the ’871 patent is a method claim that requires two separate actors, including the online merchant, to perform certain steps and that because iovation does not control its merchant customers' activities, it cannot possibly be responsible for infringement of the ’871 patent. In conjunction with its motion for summary judgment, iovation also quickly moved for a protective order [pdf] barring nearly all discovery except for very limited discovery on the issue of whether iovation controlled its merchant customers.
In response, Kount moved to compel discovery [pdf] and moved, pursuant to Fed. R. Civ. P. 56(f), to delay proceedings on iovation’s motion for summary judgment pending discovery (Rule 56(f) motion [pdf]). After a flurry of briefing on each of the pending motions, Chief Judge Haggerty ultimately sided mostly with Kount.
Ruling from the bench at a Fed. R. Civ. P. 16 scheduling conference, Chief Judge Haggerty denied iovation’s motion for a protective order and granted Kount’s Rule 56(f) motion, determining that Kount was entitled at least to limited discovery on the issues raised by iovation’s motion (including depositions of technical personnel with knowledge of how iovation’s accused system operates), and directed counsel to develop a mutually acceptable limited discovery plan.
The takeaway lesson from this dispute is that it is often very difficult for a defendant to avoid discovery costs through an early motion for summary judgment in patent litigation, even when a very specifically circumscribed and outcome-determinative issue is raised. However, the court’s ruling appears to be consistent with the Federal Circuit’s rejection of a similarly aggressive defense strategy of an early motion for summary judgment of noninfringement in Metropolitan Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330 (Fed. Cir. 2008) (holding that patentee was entitled to discovery upon Rule 56(f) motion, including depositions of affiants in support of motion for summary judgment of noninfringement in action where no significant discovery had yet occurred).
Telefonix, Inc. and Vanguard Products Group, Inc. Appear to Prevail in Last Minute Settlement
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Telefonix, Inc. and Vanguard Products Group, Inc. filed an infringement action in the U.S. District Court for the Northern District of Illinois against Hillsboro-based Merchandising Technologies, Inc., alleging infringement of U.S. Patent No. 6,799,994, owned by Telefonix and exclusively licensed to Vanguard. The ’994 patent, entitled “Cord Management Apparatus and Method” concerns a retail display stand for powered-up consumer electronic devices that includes a “cord management apparatus” for storage and retraction of power supply cables.
The infringement action was transferred from the Northern District of Illinois to the District of Oregon on September 21, 2007. After over 18 months of very active litigation (final docket [pdf]) that resulted in entry of a Markman claim construction order [pdf] and partial summary judgment of, among other things, infringement, the parties announced their agreement to a consent decree and permanent injunction at a pretrial conference just one week before a scheduled bench trial on validity. Not unexpectedly, the patent owners, after prevailing on summary judgment of infringement and after withstanding the defendant’s motion for summary judgment on invalidity and other defenses, obtained what appears to be a favorable consent decree, including an admission of validity and a permanent injunction against infringement of the '994 patent.
Interlocutory Rulings Had Favored Telefonix and Vanguard Products
Earlier in the case, Judge Brown had dismissed [pdf] Merchandising Technologies’ Lanham Act counterclaim based on an allegation that Vanguard had intentionally overstated the scope of its patent rights in a letter to Wal-Mart. Telefonix and Vanguard Products won a greater victory on December 31, 2008, when the court granted them partial summary judgment on infringement, one counterclaim, and one affirmative defense. The court also denied Merchandising Technologies’ motion for summary judgment of noninfringement and invalidity.
The public version of the court’s lengthy opinion [pdf] indicates that the court rejected Merchandising Technologies' affirmative defense that an equitable estoppel against assertion of the ’994 patent had arisen from an earlier patent infringement action in which Telefonix, Vanguard Products, and Merchandising Technologies were all co-defendants. The court also rejected Merchandising Technologies’ counterclaim for false marking. On the issues of infringement and validity, the court granted partial summary judgment that each of Merchandising Technologies’ accused products directly infringed every claim of the ’994 patent except dependent claim 3. The court considered defendants' assertions of invalidity based on obviousness and indefiniteness and a defense of judicial estoppel, but declined to grant summary judgment, holding that each of these issues raised material questions of fact requiring a trial.
A Last Minute Settlement
At a pretrial conference on May 11, 2009, just one week before a scheduled May 18, 2009 bench trial, the parties announced that they had reached a settlement. In the Final Judgment By Consent and Permanent Injunction [pdf] entered by the court the same day, Merchandising Technologies admitted that the ’994 patent was valid and enforceable and agreed to be enjoined from making, using, selling, offering for sale, or importing its four accused product models, the “Freedom Universal,” “Freedom A,” “Freedom A+,” and “Freedom C” product displays, for the life of the ’994 patent after an initial “transition and service period” (the length and terms of which are not described in the court’s publicly filed order). Merchandising Technologies also agreed that its prior stipulated dismissal without prejudice of separate action against Vanguard and Telefonix would be treated as a dismissal with prejudice. However, Vanguard and Telefonix acknowledged that other Merchandising Technologies products, including its “Freedom LP3” product, did not infringe the ’994 patent.
This outcome demonstrates how the narrowing of issues through pretrial procedures, and the uncertainty and expense of an impending trial, can create strong pressure to settle at the last minute.
LaserMax Answers Crimson Trace Complaint; Parties Agree to Use W.D. Washington Local Patent Rules but Disagree on Schedule
Today LaserMax answered the allegations of patent infringement raised by Crimson Trace. No surprises here: LaserMax denies infringement; raises affirmative defenses of failure to state a claim, waiver, estoppel, laches, acquiescence, non-patentability, and prosecution estoppel; and asserts counterclaims for a declaration of non-infringement and invalidity.
Appearing for LaserMax are Dunn Carney Allen Higgins & Tongue LLP and Rochester, NY-based Nixon Peabody LLP.
In other case news, Magistrate Judge Stewart accepted the parties' agreement to follow the Local Patent Rules for the Western District of Washington (the "Rules"), which are "designed to streamline the pre-trial and claim construction process, and generally to reduce the cost of patent litigation." W.D. Wash. Pat. L.R. 101. Generally, these rule set forth a schedule for claim construction, including contentions, disclosures and briefing.
Using the Rules, however, may be the last thing the parties agree upon.
Continue Reading...Crimson Trace Puts LaserMax in Its (Laser) Sights.
Crimson Trace Corporation, Inc. of Wilsonville, OR has sued LaserMax, Inc., its Rochetser, NY based competitor in the market for firearm-mounted laser sights, for infringement of three patents for handgun-mounted laser sighting devices, U.S. Patent Nos. 5,179,235, 5,435,091, and 7,260,910, and a fourth patent for a long gun-mounted device, U.S. Patent No. 6,671,991. The complaint, filed on January 14, 2009, targets LaserMax’s J-Max, Uni-Max and Sabre products and seeks injunctive relief, an award of damages, trebling of damages for willful infringement, costs and attorney’s fees.
Will this suit turn out to be, in the words of Crimson Trace’s tagline, “Good for you, bad for your target”? We’ll see. LaserMax has voluntarily accepted service, but has not yet answered. The court has granted LaserMax’s stipulated motion for an extension of time until April 17, 2009 to answer or otherwise move.
The case is no. 3:09-cv-00057-ST, assigned to Magistrate Judge Janice M. Stewart. Crimson Trace is repersented by Davis Wright Tremaine LLP. LaxerMax is represented by Dunn Carney Allen Higgins & Tongue LLP.
