Vestcom has filed a declaratory judgment of no patent infringement in Vestcom International, Inc. v. Information Planning and Management Service, Inc., No. 08-276 (E.D. Ark., filed 4/2/08). Vestcom provides shelf strips to Sears. According to the complaint, IPMS told Sears it holds a patent on the strips. Vestcom alleges that IPMS's patent is invalid and that its strips do not infringe the patent.
The Eastern District of Arkansas declined to stay proceedings pending a reexamination by the USPTO in Monsanto v. Kyle, 2007 WL 2904143 (E.D. Ark. 10/3/07).
Monsanto's patent is being reexamined, and Kyle requested a stay of the court proceedings. The court easily declined this request. The case has been ongoing since November 2004, discovery (which was extensive) has concluded, dispositive motions have been filed and decided, and trial is scheduled for mid-November 2007. A stay would not simplify the issues at trial and would cause prejudice to Monsanto.
The Southern District of Iowa denied a preliminary injunction for patent infringement in Titan Tire Corp. v. Case New Holland, Inc., 2007 WL 2914513 (S.D. Iowa 10/3/07).
Titan Tire is the licensee of a patent held by Goodyear and brought suit against Case New Holland. The motion for preliminary injunction was denied, but what makes this case interesting is that Titan Tire satisfied all the elements of a preliminary injunction except likelihood of success. CNH established a substantial question of validity by showing the patent is likely obvious when compared to the prior art. That alone was enough to defeat the preliminary injunction.
The District Court of Minnesota granted partial summary judgment in Wildlife Research Center, Inc. v. HME Products, LCC, 2007 WL 2746840 (D.Minn. 9/18/07).
Wildlife Research Center holds a patent for a hanging device that attracts game. The device uses a scented wick that is protected from moisture. HME sold a similar device but left its wick completely exposed to moisture. HME argued that WRC's patent only covered devices that completely protected the wick from moisture. Both parties moved for summary judgment.
The court found that WRC's patent covers devices that substantially protect the wick and that HME's device infringed the patent. The case will proceed to determine damages and any defenses HME may have.
The District Court of Minnesota dismissed trade secret claims and refused to permit amended pleading to add a computer fraud claim in Boston Scientific, Inc. v. Ev3, Inc., 2007 WL 2493117 (D. Minn. 8/29/07).
Boston Scientific originally filed a patent infringement claim against Ev3. Discovery revealed that Ev3 obtained trade secret documents related to the patent at issue, and Boston Scientific was permitted to amend the complaint to add a claim for trade secret misappropriation. The trade secret claim later expanded to include numerous documents unrelated to the patent claim. Ev3 moved to dismiss the trade secret claim for lack of supplemental jurisdiction.
The court held that when the trade secret claim added issues beyond the patent claim, it ceased to have a common nucleus of operative facts with the patent claim. The court dismissed the trade secret claim for lack of supplemental jurisdiction.
Boston Scientific also asked the court for leave to amend the trade secret claim as a violation of the Computer Fraud and Abuse Act. The court declined this request because the request did not meet the formal procedure required by the court, and the deadline for amending pleadings had already passed.
The Eastern District of Missouri denied a motion to transfer in Meridian Enterprises Corp. v. Bank of America Corp., JNR, Inc., 2007 WL 2363518 (E.D. Mo. 8/16/07).
Meridian Enterprises owns a patent for an incentive program through use of credit. Meridian filed suit against Bank of America (BOA) for patent infringement. While BOA is a Nevada corporation with primary offices in California, Meridian claims BOA offered infringing incentive programs to Missouri residents. BOA filed a motion to dismiss for lack of jurisdiction and motion to transfer.
The court denied the motion, mainly because BOA operates a highly interactive website promoting its services. This website is marketed to and accessed by Missouri residents. The court concluded that both jurisdiction and venue are proper in Missouri.
In a bizarre history of events, the Eastern District of Missouri denied a motion for leave to file an answer and counterclaim in Maritz Inc. v. C/Base, Inc., 2007 WL 2302511 (E.D. Mo. 8/7/07).
Maritz originally filed the patent infringement lawsuit on May 10, 2006. Swift failed to timely answer and then received an extension until July 10, 2006. Swift missed this deadline but filed a motion to dismiss on August 7, 2006. The motion was denied, and Swift's answer was due February 20, 2007. Swift missed this deadline and filed a motion for leave to file an answer on May 25, 2007.
The only excuse Swift offered for missing the deadlines was that it was engaged in settlement negotiations. The court was not pleased, stating: "based on counsel's representations, Swift's failure to timely file was based on a willful violation of the Court's rules." The motion was denied, and a default judgment will soon be entered.
The District Court of Minnesota granted a preliminary injunction based on patent infringement in Quantronix, Inc. v. Data Trak Technologies, Inc., 2007 WL 2249133 (D. Minn. 8/1/07).
Quantronix holds 3 patents for technologies to measure and weigh packages. In the industry, this is referred to as "dimensioning." These technologies help companies quickly and accurately measure the size and weight of packages. Data Trak is a competing firm that sells a dimensioning device which Quantronix claims incorporates its patented technologies. The district court agreed and granted the preliminary injunction but did require a bond.
The District Court of Minnesota denied a motion to dismiss in MTS Systems Corp. v. Hysitron Inc., 2007 WL 2159490 (D. Minn. 7/25/07).
MTS filed a patent infringement lawsuit against Hysitron. The court issued a pretrial order requiring claim charts Hysitron argued that MTS's claim charts were deficient and moved for dismissal. The motion was based on Rule 11 and the lesser-used Rule 37(b)(2)(C), which provides for dismissal if a party intentionally disobeys a court order to provide or permit discovery. The basis under both rules was that MTS violated the court order by providing deficient claim charts.
The court observed that Rule 37(b)(2)(C) dismissal is only appropriate for serious discovery abuses such as lying and destroying evidence. The court also noted that Hysitron failed to provide its own claim chart, which was also a violation of the order. The motion to dismiss was denied.
The District Court of Minnesota denied a motion to transfer or dismiss in Travel Tags, Inc. v. Performance Printing Corp., 2007 WL 2122662 (D. Minn. 7/19/07).
Travel Tags owns a patent for a process for making lenticular cards. On July 11, 2006, Travel Tags filed a patent infringement lawsuit against Performance Printing, a Texas company. Travel Tags did not serve the lawsuit, and the parties entered into licensing negotiations with. On November 1, 2006, Travel Tags served the lawsuit, but Performance Printing also filed a declaratory action in Texas.
Performance Printing moved to dismiss for lack of jurisdiction or to transfer the case to Texas. The court denied the motion but Performance Printing can raise the jurisdiction issue again after completing discovery.
British multinational Codian filed a patent infringement lawsuit in the Western District of Arkansas. Codian Ltd. v. Polycom, Inc., No. 07-4063 (filed 7/6/07)(See Complaint here). Codian owns two patents for videoconferencing technology (here and here). The complaint alleges that Polycom is selling products that infringe these patents.
Both companies are large multinationals with headquarters outside Arkansas. However, the sales complained of were made to the University of Arkansas and the "Government of the State of Arkansas."
The Northern District of Iowa imposed Rule 11 sanctions in Ideal Instruments, Inc. v. Rivard Instruments, Inc., 2007 WL 1953147 (N.D. Iowa 7/3/07). The denial of Rivard's motion for preliminary injunction was previously posted 4/12/07.
Ideal moved for Rule 11 sanctions, and, in a thorough opinion, the court reluctantly imposed sanctions. Rivard based its motion for preliminary injunction on the expert testimony of Dr. Hoff. Ideal conducted several depositions of Dr. Hoff, and it became obvious that Dr. Hoff's test results were incredible. The court found that any reasonable inquiry would have revealed the inaccuracies in his tests.
Ideal also relied on a metallurgical expert whose testimony was provided to supplement Dr. Hoff's testimony. The court was troubled by this testimony but did not find it so utterly lacking any merit as that of Dr. Hoff. Therefore, the court awarded sanctions in the amount of: (1) all Ideal's reasonable fees and costs through February 2, 2007; and (2) half Ideal's reasonable fees and costs after February 2, 2007.
The sanctions were awarded against Ideal, its primary counsel and its local counsel. The court expressed its regret in the ruling: "The court cannot adequately express its disappointment that it has been necessary to impose sanctions upon any party or attorney appearing before it."
A new patent infringement lawsuit was filed in the Eastern District of Arkansas. MidSouth Metal Products, Inc. v. O.D. Funk Manufacturing, Inc., No. 07-602 (filed 6/29/07). See full complaint here.
MidSouth owns a patent for a metal framing system. The complaint alleges a single claim of patent infringement against O.D. Funk Manufacturing, a North Little Rock company. The complaint was not accompanied with a motion for preliminary injunction.
The District Court of Nebraska quashed a subpoena to depose an expert witness in Intervet, Inc. v. Merial Limited, 2007 WL 1797643 (D. Neb. 6/20/07).
This case features a long-running patent infringement dispute between Merial Limited and Intervet. The initial case was filed in Georgia but later dismissed on procedural grounds. The current action is in the District of Columbia.
In the Georgia case, Intervet retained Dr. Fernando Osorio as an expert witness. Dr. Osorio never testified, but Intervet did present his declaration at the preliminary injunction stage. In the D.C. action, Intervet has retained another expert whose opinion differs from that offered in Dr. Osorio's declaration.
Because Intervet has not retained Dr. Osorio for the present case, the court concluded it would be unnecessarily time consuming and costly for him to comply with the subpoena. However, the court noted his declaration was a public record that Merial is welcome to use to examine or cross-examine witnesses in the D.C. action.
The Eastern District of Missouri compelled production of the parent company's financial documents in Orthoarm, Inc. v. Forestadent USA, Inc., 2007 WL 1796214 (E.D. Mo. 6/19/07).
Orthoarm filed this patent infringement action against Forestadent USA. Orthoarm submitted discovery requests seeking financial documents of Forestadent Germany, Forestadent USA's parent company. Forestadent USA refused to produce the documents, claiming it did not have control of its parent company's financial documents.
The district court disagreed and issued an order compelling production of these documents. Guiding the court's analysis was the fact that the owners of Forestadent Germany are the officers and directors of Forestadent USA.
The District Court of Minnesota denied a motion for preliminary injunction based on patent infringement in Torspo Hockey Int'l, Inc. v. Kor Hockey Ltd., 2007 WL 1752725 (D. Minn. 6/18/07).
Kor Hockey owns a patent for its hockey skate design. Torspo Hockey initiated the lawsuit by seeking a declaration that its competing skate design does not infringe Kor's patent. Kor then counterclaimed and moved for a preliminary injunction. The court denied the motion largely in part because Kor only identified an arch shape in the skate as a point of novelty. The court observed that Torspo will likely prove that the arch shape is not novel.
This case also featured a new ripple resulting from eBay, Inc. v. MercExchange, LLC, 126 S.Ct. 1837 (2006), which held that irreparable harm cannot be presumed when evaluating permanent injunctions (detailed coverage at PatentlyO). The court held that eBay applies with equal force to preliminary injunctions and determined that Kor failed to establish irreparable harm.
The District Court of Minnesota declined to stay a patent infringement case pending re-examination by the USPTO in Ecolab, Inc. v. FMC Corp., 2007 WL 1582677 (D. Minn. 5/30/07).
Ecolab filed this action against FMC in April 2005. In late 2006, Ecolab discovered prior art that it claims the USPTO failed to consider. Ecolab told FMC, but the parties filed cross motions for summary judgment rather than report the finding to the USPTO. The motions were denied, and a trial scheduled beginning July 2, 2007. In April 2007, Ecolab requested re-examination from the USPTO and moved the court to stay the proceedings pending the re-examination.
The court denied the request on two grounds. First, Ecolab requested the stay solely for a tactical advantage, as evidenced by its decision to continue litigating for 5 months after learning of the prior art. Second, a stay would only delay the proceedings and cause prejudice to FMC.
The Eastern District of Missouri granted summary judgment on patent infringement and breach of contract in Monsanto Co. v. Vanderhoof, 2007 WL 1240258 (E.D. Mo. 4/27/07).
Monsanto holds a patent on soybean seed technology that makes the seeds resistant to Roundup. The seeds are aptly named Roundup Ready. Monsanto licenses the patent to soybean farmers for a term of one year. The farmer cannot plant Roundup Ready seeds in subsequent years or plant seeds from soybeans produced from Roundup Ready seeds.
Vanderhoof entered into a license for the 2003 season, but he planted Roundup Ready seeds in 2004 and 2005. The court had no trouble finding these acts amounted to patent infringement and breach of the license agreement. Monsanto has additional claims against Vanderhoof that were not subject to the summary judgment motion.
The Eastern District of Missouri partially granted a Rule 56(f) request for additional discovery in Synergetics, Inc. v. Peregrine Surgical, Ltd., 2007 WL 1231685 (E.D. Mo. 4/25/07).
Synergetics filed suit against Peregrine claiming patent infringement of one of Synergetics' patents for eye surgery. Peregrine pled noninfringement and filed a motion for summary judgment. In its reply on the motion for summary judgment, Peregrine added defenses of inequitable conduct. Synergetics filed a Rule 56(f) request for additional discovery on all arguments.
The court denied the request as to the noninfringement argument originally raised in the motion because Synergetics had ample notice of this argument. The court did grant the motion as to the newly-raised inequitable conduct argument.
Cellularvision Technology filed a patent infringement lawsuit against Alltel in Florida, but the case has now been transferred to Arkansas. The Complaint accuses Alltel of infringing six patents. Cellularvision is a frequent patent plaintiff in the federal court system and partners with a division of Speedus, which maintains a large portfolio of patent infringement cases.
The District Court of Minnesota denied cross motions for summary judgment in the ongoing patent infringement suit between Biopolymer and Immudyne (previously posted 3/22//07). See Biopolymer Engineering, Inc. v. Immudyne, Inc., 2007 WL 1178541 (D. Minn. 4/20/07).
In October 2005, Immudyne filed a declaratory action in Texas to define rights in the patents at issue. About two months later, Biopolymer filed the present action claiming patent infringement. Immudyne filed a motion for summary judgment claiming it had a license in the disputed patents. Alternatively, Immudyne moved the court to stay this action in favor of the Texas action under Colorado River abstention. Biopolymer countered with its own summary judgment motion.
The court quickly rejected both motions for summary judgment and focused its analysis on the motion to stay. The court found exceptional circumstances did not exist to merit a stay. Immudyne contributed to this conclusion by actively participating in discovery and moving the Minnesota case forward. More importantly, the Texas case deals with state law of contract interpretation while the Minnesota case deals with federal patent law.
The Eastern District of Missouri denied a motion for protective order in Monsanto Co. v. Genetic Technology Limited, 2007 WL 1174851 (E.D. Mo. 4/20/07).
Monsanto filed a declaratory action against the Australian company GTG claiming it did not infringe GT G's patents. GT moved to dismiss for lack of jurisdiction, and the parties engaged in limited discovery. Monsanto sent a request seeking all documents where GT asserted a party needed a license to use the patented technology. GT refused to answer, and the court granted Monsanto's motion to compel.
After GT produced documents, Monsanto realized they had only produced documents that specifically used the phrase "needs a license." When Monsanto confronted GT with this issue, GT moved for a protective order. The court denied the request, holding that GT was giving too literal an interpretation to the document request.
The Eastern District of Missouri granted a 30-day discovery period in Golden Trade, S.R.L. v. EV. R, Inc., 2007 WL 1125699 (E.D. Mo. 4/16/07).
Golden Trade filed a patent infringement action against EV. R, who promptly moved to dismiss for lack of personal jurisdiction. The court agreed with EV. R, finding that the Complaint failed to establish jurisdiction. Golden Trade could not establish that EV. R distribute any infringing items to Missouri, and EV.R only has minimal contacts with Missouri.
Rather than grant the motion to dismiss, the court granted Golden Trade a thirty-day discovery period on the issue of jurisdiction. The court denied the motion to dismiss without prejudice for refiling after the jurisdictional discovery period.
The attorney-client privilege was asserted in a peculiar way in a patent infringement lawsuit. Isensee v. Ho Sports Co., Inc., 2007 WL 1118274 (D. Minn. 4/13/07).
Isensee sued HO Sports for patent infringement and moved to compel production of various documents. The products complained of were sold by H.O. Sports. In a clever transaction, HO Sports acquired the assets off H.O. Sports, but did not purchase the business. However, HO still claimed attorney-client privilege for various documents created by H.O. Sports.
HO has taken inconsistent positions in this action, which the court expressly noted. To avoid liability, HO claims it was not the successor of H.O. but just purchased assets. To claim attorney-client privilege, HO claims it is the successor of H.O.
The magistrate judge granted the motion to compel without addressing the merits of the privilege arguments. His decision was that the sale of assets cannot convey the privilege. The district court showed disapproval with HO Sports but reassigned the matter to the magistrate judge to consider the merits of the privilege arguments.
The Eastern District of Missouri awarded attorney's fees and costs of $8.5 million in a patent infringement suit. Monsanto Co. v. Bayer Cropscience, N.V., 2007 WL 1098504 (E.D. Mo. 4/12/07).
Monsanto filed a declaratory action against Bayer, claiming its products did not infringe Bayer's patents. As the litigation progressed, it was revealed that Bayer had concealed information from the USPTO in procuring the patents. The court held a 3-day inequitable conduct hearing, describing Bayer's conduct as:
[t]he orchestration of deceit, of purposeful misrepresentation of material fact, of intentional nondisclosure of material information, and submission of false material information, with intent to deceive and mislead the United Sates Patent Office Examiner.
The found this was an exceptional case where attorney's fees could be awarded under the Patent Act. See 35 U.S.C. § 285. The court awarded $8.5 million in attorney's fees and costs, which was just below the $9 million that Monsanto requested.
enVision Marketing Group, an Arkansas corporation, filed a preemptive patent infringement lawsuit against the Swiss power giant Habasit AG in the Eastern District of Arkansas (Case No. 07-0048, filed 1/22/07).
According to the Complaint, Habasit accused enVision of infringing Habasit's patent for a conveyor belt. The Complaints seeks a declaration that enVision is not infringing the patent and that various claims within the patent are invalid. enVision has requested a jury trial.
The Northern District of Iowa denied a preliminary injunction in Ideal Instruments, Inc. v. Rivard Instruments, Inc. 2007 WL 915174 (N.D. Iowa 3/28/07).
The case began as a patent infringement suit when Ideal sued Rivard, claiming infringement of its patent for a detectable heavy duty needle. In the livestock industry, a "detectable" needles prevent broken needles that are occasionally left in livestock from making their way through the food processing system.
In an interesting defense, Rivard filed a counterclaim for false advertising, claiming that Ideal's needles are not detectable as advertised, and sought a preliminary injunction. This claim was based on an admission by Ideal that some of its needles were made with a non-detectable alloy. Ideal had corrected the problem, and there was no evidence that a needle had found its way into a consumer's food. The court found Rivard failed to establish likelihood of success or irreparable harm and denied the preliminary injunction.
The District Court of Minnesota settle a patent insurance coverage dispute in Carlson Marketing Group, Inc. v. Royal Indemnity Co., 2007 WL 951683 (D. Minn. 3/28/07).
From 1997 - 2003, Carlson purchased several layers of insurance coverage from Royal Indemnity (now purchased by Arrowhead) and National Union. Each policy had its own limitations and exclusions. In 2002, Carlson was sued by Maritz and Meridian Enterprises for patent infringement. Both insurers denied coverage, and Carlton ultimately settled both suits. Carlton then filed the present suit against both insurers.
All three parties filed motions for partial summary judgment, which were all granted in part and denied in part. Carlson was largely successful from this result, although National Union successfully argued that $5 million of the $16 million Meridian settlement was covered by its policy.
This case presents a new trend in intellectual property litigation. As more companies procure insurance for patents, trademarks, and copyrights, more insurance coverage disputes will arise. Cases like this one could become the norm rather than the exception. It is also important to note that no less than 16 lawyers are listed in the case syllabus.
Some additional summary judgment issues were decided in Green Edge Enterprises, LLC v. Rubber Mulch Etc., LLC (previously posted 2/18/07) in a pair of orders. See 2007 WL 957343 (E.D. Mo. 3/28/07) and 2007 WL 957349 (E.D. Mo. 3/28/07).
Green Edge claimed it was entitled to summary judgment on Rubber Mulch's breach of contract counterclaim because Rubber Mulch had not disclosed damages. The court denied this motion because both parties have caused delays in the litigation, which has now been ongoing for 5 years.
Meanwhile, Rubber Mulch had asserted counterclaims against International Mulch (IM). Rubber Mulch sought a declaration that it was not infringing IM's Rubberific Mulch trademark, or alternatively, that the mark was invalid. IM successfully argued that Rubber Mulch failed to establish a course of conduct that brought it into conflict with IM, which is one of the factors to establish a case or controversy to make a declaratory action available. The court granted summary judgment to IM.
The Eastern District of Missouri granted summary judgment on claims for copyright infringement and patent infringement in Clark v. Crues, 2007 WL 906702 (3/23/07).
Clark was a ninth grade teacher in St. Louis. He created a program called the Out of Area Program, which provided disciplinary procedures for students who were found outside of designated areas. He gave the program to some teachers who made use of the program. Clark was terminated. He promptly filed suit against the school, school district and various teachers claiming they infringed his patent and copyright in the program.
The court easily granted summary judgment. While Clark had filed for a patent, he never received one. Moreover, his program was just an idea, which precluded copyright protection. The court granted summary judgment on all counts.
The Eastern District of Missouri found a patent defendant in contempt in Litecubes, LLC v. Northern Light Products, Inc., 2007 WL 892459 (E.D. Mo. 3/21/07).
On October 7, 2005, the jury returned a verdict for Litecubes on its patent infringement claim against Northern Light (d/b/a GlowProducts). The court accordingly entered a permanent injunction, but Northern Light started selling a similar product.
Litecubes moved for sanctions, providing an expert report that the new product infringed the patent and violated the permanent injunction. The court held that the proper proceeding was a contempt proceeding. Northern Light did not contest the expert report. The court held Northern Light in contempt of the injunction and imposed a fine of $5,000 per day while the infringing product is being sold.
The District Court of South Dakota held a joint Markman hearing to discern the scope of patent claims in Larson Manf. Co. of South Dakota, Inc. v. Aluminart Products Ltd., 2007 WL 858421 (D.S.D. 3/20/07) and Larson Manf. Co. of South Dakota, Inc. v. Andersen Corp., 2007 WL 858617 (D.S.D. 3/20/07).
Larson brought suit against Andersen and Aluminart for patent infringement of Larson's patent for ventilated doors. The cases were set for hearing in 2004 to determine the scope of the patent claims, but the cases were stayed pending a reexamination at the USPTO.
The key dispute here were the terms "weather stripping" and "slidably engages." The court rejected the defendants' construction of these phrases, finding that "weather stripping" means a sealing material added to a fabric and that "slidably engages" means to engage by sliding. These favorable interpretations will significantly help Larson in these long-standing patent disputes.
The patent infringement case involving Iridex v. Synergetics ( previously posted 2/24/07) is gearing up for trial, scheduled to begin April 16, 2007. The Eastern District of Missouri decided a number of pretrial motions in a pair of orders, 2007 WL 776120 and 2007 WL 781254.
The court granted Iridex's motion for summary judgment on the non-patent counterclaims and all validity defenses, except as to obviousness. Finding issues of fact on this defense, Synergetics will be allowed to present the obviousness defense to the jury. The court also declined Synergetics' motions for discovery because it submitted discovery after the deadline established by the Court.
Most importantly, the court ordered production of expert draft reports. Synergetics' expert witnesses testified that Synergetics' attorneys prepared the first drafts of their reports. Then the witnesses and attorneys exchanged revisions. The court held these drafts and correspondences are discoverable and ordered Synergetics to produce them. The court also required the attorneys to provide a declaration explaining the chronology of the drafts, which Iridex can use during cross examination.
The District Court of Minnesota agreed with the patent owner's interpretation of claims in Donaldson Co., Inc. v. Baldwin Filters, Inc., 2007 WL 748399 (D. Minn. 3/8/07).
Donaldson alleged patent infringement of three patents (here, here and here) by Baldwin. At the claim construction stage of the litigation, Baldwin sought to limit the scope of all three patents with restrictive interpretations of the claims.
The parties agreed that extrinsic evidence would not be needed to evaluate the claims. After evaluating the intrinsic evidence, the court found that Baldwin's interpretations had no support. The case will proceed with Donaldson's interpretation of the claims.
The Northern District of Iowa had some sharp criticism of the attorneys involved a patent infringement case. See Highway Equipment Co., Inc. v. Cives Corp., 2007 WL 689766 (N.D. Iowa 3/7/07.
Highway Equipment had filed a declaratory action against Cives for a declaration of noninfringement. The court's lengthy opinion defined the scope of the patent claims at issue. Frustrated with the attorneys, the court provided a stern warning:
It is the opinion of the court that in their written and oral submissions, the parties wasted time posturing to one another about ultimate issues of infringement and invalidity. As a consequence, the parties left the court to sort out difficult issues of claim construction without adequate argument or briefing.
It is important to note that many of the attorneys in this case are from large firms in Chicago and Pittsburgh. This case serves as a helpful reminder that litigation tactics that are common in other locales are often ineffective in the court that has jurisdiction over the case.
The District Court of Minnesota granted a motion to strike an expert witness report in Cardiac Science, Inc. v. Koninklijke Philips Electronics N.V., 2007 WL 685137 (D. Minn. 3/2/07).
This is the latest round of the 4-year old patent infringement case involving Cardiac Science and Koninklijke Philips. Cardiac Science wanted to change experts. In late 2006 the court entered an order that permitted the change but imposed some limitations. The biggest limitation was that the new expert could not offer opinions that were contradictory or inconsistent with the first expert' s opinions.
The new expert's report provided opinions that were new and contradictory to the original expert's opinions. The court struck these opinions as violating the 2006 order.
Determining the patent owner was the central dispute in Biopolymer Engineering, Inc. v. Immunocorp, 2007 WL 627859 (D. Minn. 2/27/07).
Biopolymer sued Immunocorp for patent infringement regarding two patents (here and here). Immunocorp moved to dismiss claiming Immudyne owned the patent. Biopolymer moved for summary judgment that it was the patent owner.
The patents have a long history. Byron Donzis originally obtained the patents in 1996 and 1997. Donzis originally licensed the patents to Immudyne in 1997. Donzis then licensed the patents to Biopolymer in 1999. Biopolymer asserts this agreement was a complete assignment of the patents. Immudyne sued Donzis in Texas in 1999 and won summary judgment. Donzis then assigned the patents to PSA Inc. The Texas court then ordered Donzis to assign his legal ownership in the patents to Immudyne as satisfaction of judgment.
The court found that Donzis did not have any legal title when the Texas court ordered assignment. The court held that Biopolymer is the proper patentee and denied the motion to dismiss. However, the court also denied Biopolymer's motion for summary judgment because it just sought to establish ownership of the patents--the motion did not go to any of Biopolymer's claims.
The District Court of South Dakota went through some procedural gymnastics to grant a plaintiff's motion to dismiss in Hurco Technologies, Inc. v. E.H. Wachs Co., 2007 WL 614054 (D.S.D. 2/22/07).
Wachs sued Hurco in Illinois in 2005 claiming patent infringement. Hurco moved to dismiss and filed a declaratory action in South Dakota. Wachs then entered into a covenant not to sue Hurco, but the covenant only covered some of Hurco's products. Then the case gets weird:
The court agreed with Hurco that the covenant not to sue did not eliminate the controversy between the parties. The court dismissed Wachs's motion to dismiss but granted Hurco's motion to dismiss. In the rare situation of cross motions to dismiss, the defendant's was denied, but the plaintiff's was granted.
The District Court of Minnesota stayed most of a case based on patent infringement in Card Technology Corp. v. DataCard Corp., 2007 WL 551615 (D. Minn. 2/21/07).
Card Technology ("CTC") and DataCard hold various patents for smart card technology (credit cards that include personal information). CTC filed suit in November 2005 for infringement of 3 of its patents; DataCard counterclaimed for infringement of 2 of its patents as well as a claim for tortious interference with prospective business advantage. In October 2006, the USPTO granted CTC's request to reexamine DataCard's patents, and CTC moved the court to stay the case.
The court noted the majority rule that patent litigation is typically stayed during a reexamination by the USPTO. With trial not scheduled until April 2008, the court stayed the case as to DataCard's patent counterclaims. However, the court did not stay the case as to the tortious interference counterclaim.
The Eastern District of Missouri granted summary judgment to the parent company for the subsidiary's alleged patent infringement in Iridex Corp. v. Synergetics USA, Inc., 2007 WL 326441 (E.D. Mo. 1/31/07).
Iridex holds a patent for a fiber optic connector system used in medical lasers. Iridex claimed Synergetics infringed its patent by selling Synergetics' connector system. The court held issues of fact were present on these claims and denied summary judgment.
Iridex also sued Synergetics USA, the parent company of Synergetics. In granting summary judgment for Synergetics USA, the court held there was no evidence of inducement of infringement. See 35 U.S.C. § 271(b). The court also held the companies were treated separately so as to preclude piercing the corporate veil.
The Eastern District of Missouri denied the defendants' motion for summary judgment on the patent infringement claim in Green Edge Enterprises, LLC v. Rubber Mulch Etc., LLC, 2007 WL 118919 (E.D. Mo. 1/10/07).
Green Edge holds a patent for making synthetic wood chips out of rubber particles. Green Edge licenses the patent to International Mulch, who sells the chips using the trademark "Rubberific Mulch." The defendants sell rubber chips and moved for summary judgment claiming the patent is invalid. The court denied the motion, and the patent infringement claim will proceed to trial.
Green Edge has also asserted claims for trademark infringement and unfair competition that were not addressed in the summary judgment motion. The defendants have counterclaimed for unfair competition and breach of contract. All these issues will be presented at trial.
The District Court of Minnesota granted a preliminary injunction on false advertising claims in Medtox Scientific, Inc. v. Tamarac Medical, Inc., 2007 WL 37793 (D. Minn. 1/4/07).
Esca Tech has a current patent application pending for towel and soap products for removing led from the skin. Esca Tech granted Defendant Tamarac the exclusive license to use and sell these products. Medtox is a laboratory testing company that sometimes uses the products covered in the patent application.
Even though no patent has issued, Tamarac made representations to customers that it was the only company that had the rights to use the products because of the patent application. The court found these statements were false because the application itself did not grant any rights to Tamarac, and the court granted a preliminary injunction for Medtox.
After granting partial summary judgment on some patent infringement claims, the District Court of Minnesota denied summary judgment on the remaining claims in Fargo Electronics, Inc. v. Iris, Ltd., Inc., 2006 WL 3839931 (D. Minn. 12/29/06).
Fargo makes printers and ink ribbons. Fargo holds 2 patents for sensor technology that allow its printers to identify the ink ribbon being used (the 519 patent and the 625 patent). In earlier proceedings, the court granted partial summary judgment to Iris because it found the claims of the 519 patent were invalid.
Iris also moved for summary judgment on the 625 patent on the same arguments. The court disagreed and held the claims of the 625 patent are valid. The case will proceed to trial later this year.
The Eastern District of Missouri declared a patent invalid in Leggett & Platt, Inc. v. Vutek, Inc., 2006 WL 3813677 (E.D. Mo. 12/26/06).
Vutek holds 2 patents regarding printing technology: one for a radiation source and one for maintaining the gap between the printer and the surface. Leggett & Platt obtained a patent for using cold UV lamps. Leggett & Platt brought suit against Vutek for patent infringement, claiming that Vutek infringed 7 claims of its patent.
The court found the claims were invalid for anticipation and obviousness under the prior Vutek patents. The court also found the claims were invalid for indefiniteness. This case is a good example of the risks involved in patent litigation.
Patent infringement involves a two-step process. First, the the meaning and scope of the asserted patent claims must be determined. Second, the properly construed claims are compared to the accused product or process. See Aquatex Industries, Inc. v. Techniche Solutions, 419 F.3d 1374 (Fed. Cir. 2005).
The doctrine of equivalents extends patent infringement to insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. An element in the accused product is equivalent to a claim limitation if the differences between the two are insubstantial. Id.
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