Matthew C. Phillips
Matt Phillips applies a multi-faceted perspective - gained through his experiences as a Federal Circuit law clerk, patent examiner, and systems engineer - to help clients with all their patent needs. Based on his experiences as a law clerk and patent examiner, Matt can look at patent prosecution and litigation issues from the perspective of the decision maker. From the vantage of a systems engineer, Matt seeks to fully understand the client's technology, objectives, opportunities, and risks.
Matt's practice includes handling patent disputes; advising clients facing infringement risks; developing, managing, and exploiting patent portfolios; and preparing and prosecuting patent applications for complex electronics and computer inventions. Matt's patent dispute experience includes pre-litigation, district court litigation, Federal Circuit appeals, arbitration, mediation, and reexamination - on behalfof both patent owners and accused infringers.
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.
Marshall, Schmarshall! Bring Your Patent Cases to Portland
Or Eugene, Medford or Pendleton -- the four divisions of the U.S. District Court for the District of Oregon. The Eastern District of Texas has become a tremendously popular venue for patent owners wishing to bring suit, but, surprisingly, it is not the district where patent owners have the greatest percentage of prevailing.
As reported by Patently-O, a draft paper entitled "Where to File Your Patent Case" by Stanford Professor Mark A. Lemley reports that the patentee win rate in the Eastern District of Texas is 40.3%, whereas it is 45.3% in the District of Oregon. That puts the District of Oregon in an approximate tie for the second best patent win rate (a four-way near tie with Nevada, Middle Florida, and Delaware) among districts with a statistically significant number of patent cases. Only the Northern District of Texas had an appreciably higher patentee win rate (55.1%).
So why file your patent infringement case in Marshall, Texas, when you are likely to fare better in Portland, or Eugene, or Medford, or Pendleton?
Continue Reading...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)).
