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Patent Lawyer Blog — Published By Patent Lawyer — Jeffer Mangels Butler & Mitchell Contact Us Now: 310.201.3548 Tap Here To Call Us Patent Lawyer Blog Published By Jeffer Mangels Butler & Mitchell LLP Navigation Home Our Team What We Do JMBM LLP Subscribe Contact Us Published on: May 14, 2024 District Court Denies Motion to Compel Production of Inventor Emails in Patent Infringement Case by Stan Gibson In a recent discovery dispute in a patent infringement case, the district court denied the defendant’s motion to compel the plaintiff to produce certain inventor emails that were withheld on the basis of the work product doctrine. The key issue was whether the plaintiff demonstrated that the emails, exchanged between the two inventors of the asserted patents from 2016-2018, were prepared in anticipation of litigation. The litigation ultimately commenced in February 2022. The district court acknowledged that evidence pointed to by both sides benefitted their respective positions–the defendant highlighted facts suggesting the inventors’ work was not in anticipation of litigation, while the plaintiff provided contrary evidence. Ultimately, the district court found the plaintiff’s showing sufficient to meet its burden and justify the work product protection. Key evidence cited by the district court included: An inventor’s testimony that he began investigating potential infringement in November 2015 with the assistance of outside counsel. The inventor provided information to outside counsel from 2016-2020 to assess possible infringement. Starting November 2015, the inventor implemented measures to preserve documents related to the patents and defendant. Testimony from the outside attorney that he had previously advised the plaintiff about potential litigation involving the patents at issue. Continue reading by Stan Gibson Posted in: D. Delaware and District Courts Published on: May 14, 2024 Updated: May 14, 2024 12:33 pm Published on: May 8, 2024 Key Evidentiary Rulings in Acceleration Bay v. Activision by Stan Gibson In the ongoing patent infringement case between Acceleration Bay LLC and Activision Blizzard Inc., the district court recently issued an order resolving several important evidentiary disputes between the parties. This order provides guidance on the admissibility of various categories of evidence that will impact the damages case at the upcoming trial. Here are the key takeaways: Survey Evidence Allowed for Limited Purpose The court permitted Acceleration Bay to use Activision’s own customer surveys for the limited purpose of showing that the allegedly infringing large multiplayer game modes in Call of Duty are of equal or greater importance to customers compared to the non-infringing small game modes. Nonetheless, the district court reiterated its exclusion of the plaintiff’s damages expert’s opinions apportioning royalties based primarily on this survey evidence, finding that while the surveys can demonstrate the significance of the accused modes, they cannot directly calculate the royalty damage amount. Evidence of Foreign World of Warcraft Sales Permitted The district court allowed Acceleration Bay to present evidence of Activision’s foreign sales revenues for the World of Warcraft game. The plaintiff’s theory is that the infringing U.S.-based server system supports foreign players in North and South America. The district court found that as long as Acceleration Bay provides evidence linking the foreign sales to the accused domestic server system, the foreign revenue numbers can be admitted, even if conditionally at first. Continue reading by Stan Gibson Posted in: D. Delaware and Damages Published on: May 8, 2024 Updated: May 8, 2024 9:45 am Published on: April 30, 2024 District Court Sanctions Plaintiff for Failing to Meet and Confer on Defendants’ Motion to Dismiss Counterclaims by Stan Gibson In a recent development in patent litigation, the district court has granted a motion to dismiss counterclaims in a case involving U.S. Patent No. 10,519,668 (the ‘668 Patent”). The decision sheds light on the importance of adhering to meet and confer obligations, as well as the consequences of non-compliance. Background: The defendants in this case had asserted counterclaims, including declaratory judgments of invalidity and non-infringement of the ‘668 Patent, breach of contract, fraud, unjust enrichment, and constructive trust. On October 31, 2023, the district court granted the defendants’ Motion for Summary Judgment of non-infringement of the ‘668 Patent, marking a significant milestone change in the proceedings. Subsequent Events: Following the district court’s decision, the defendants’ counsel sought to engage in a meet and confer with the plaintiff, Upstream, regarding the possible dismissal of the counterclaims without prejudice. Despite making multiple attempts to contact Upstream’s counsel between March 19 and 27th, no response was received. Consequently, the defendants proceeded to file a motion to dismiss their counterclaims on March 29, 2024. Continue reading by Stan Gibson Posted in: C.D. California and Sanctions Published on: April 30, 2024 Updated: April 30, 2024 1:38 pm Published on: April 23, 2024 Inmar Brand Solutions, Inc. v. Quotient Technology Inc.: District Court Denies Quotient’s Motion to Dismiss Under Step One of Alice by Stan Gibson In the ongoing case of Inmar Brand Solutions, Inc. v. Quotient Technology Inc., the district court was tasked with conducting an analysis under the Supreme Court’s two-step test in Alice Corp. v. CLS Bank International to determine whether Inmar’s patented coupon-processing system, exclusively licensed from Intelligent Clearing Network, Inc. (ICN), was entitled to patent protection. Under the Alice framework, the district court must first ascertain whether claims are directed towards patent-ineligible subject matter, such as abstract ideas. If so, the district court proceeds to the second step, wherein it evaluates whether the claims contain an inventive concept that transforms the abstract idea into a patent-eligible application. Quotient contends that the patents asserted by Inmar are invalid and directed towards a patent-ineligible abstract idea: namely the processing of coupons on a remote server. According to Quotient, the claims lack an inventive concept and merely recite generic computer components. Inmar opposes this characterization, and contends that the claims represent an improved coupon processing architecture that significantly reduces fraud and cannot be accomplished by humans. As explained by the district court, the primary concern underlying this argument is the concept of preemption, which aims to prevent the granting of a monopoly over an abstract idea that could impede innovation. While the Supreme Court in Alice did not provide precise contours for what constitutes an abstract idea, subsequent Federal Circuit decisions have shed light on this issue. Continue reading by Stan Gibson Posted in: D. Delaware and District Courts Published on: April 23, 2024 Updated: April 26, 2024 3:56 pm Published on: August 15, 2023 District Court Grants Motion to Compel Documents That Were Clawed Back Finding that Defendant Waived Work Product Protection by Voluntarily Producing the Documents by Stan Gibson The crux of this case revolves around a dispute over patent infringement, trade secret misappropriation, and unfair competition filed by Nielsen (or Plaintiff) against Hyphametrics (or Defendant). At the heart of the issue in this motion were specific documents – experimental reports. These reports were initially produced by Hyphametrics to Nielsen but were later retracted under the assertion of work product protection. The Memorandum Order issued by the court dissected the arguments presented by both parties and presented the court’s rationale for its ruling on Nielsen’s motion to compel Hyphametrics to produce the disputed documents. The court began by addressing Hyphametrics’...