On June 19, 2017, Northern District of California Judge William Alsup granted-in-part and denied-in-part plaintiff Comcast Cable Communications, LLC’s (“Comcast”) motion to strike defendants OpenTV, Inc. and Nagravision SA’s (collectively “OpenTV”) infringement contentions. The court, however, did not strike with prejudice but instead treated Comcast’s motion as a motion to compel amendment of OpenTV’s infringement contentions so that OpenTV could cure deficiencies.
Under the first-to-file rule (not to be confused with the provision from the America Invents Act), when two actions involving overlapping issues and parties are pending in two federal venues, the first-filed case is generally favored. This case applies the rule to a fact pattern in which the first case (a declaratory judgment action) was filed one minute after the patent-in-suit issued, and the second case was filed hours thereafter.
On February 28, 2017, Judge George Hazel issued an order and opinion granting Defendants LWRC International, LLC (“LWRCI”) and Sig Sauer, Inc.’s. (“Sig Sauer”) motions to dismiss Plaintiff Paul Andrew Leitner-Wise’s complaint, finding that Plaintiff no longer possessed any rights in the asserted patent and therefore lacked standing to bring a claim of patent infringement.
On December 29, Judge William Alsup declined to impose sanctions in a case he characterized as “an everyday exchange between attorneys over extending a civil action deadline that escalated to a finger-pointing sanctions controversy, then to an evidentiary hearing to determine which lawyer was telling the truth.”
On December 6, 2016, the Federal Circuit remanded, in part, a district court’s grant of a permanent injunction in order to develop additional facts relating to the appropriate reach and scope of the injunction. Asetek Danmark A/S v. CMI USA Inc. (16-1026).
In a November 21, 2016, order, the Honorable Janis L. Sammartino of the Southern District of California dismissed The Scripps Research Institute’s (TSRI) patent infringement claims without prejudice because TSRI failed to satisfy the recently heightened pleading standard for direct infringement. In setting out the relevant standard, the court noted that “Form 18”—a basic patent infringement form complaint that was previously appended to the Federal Rules of Civil Procedure, but eliminated on December 1, 2015—no longer applied. Instead, as the court had previously held, the pleading standard set out in the Supreme Court’s Twombly and Iqbal decisions now governed claims for patent infringement. The court held that, under Twombly, a complaint for patent infringement “must plausibly allege that a defendant directly infringes each limitation in at least one asserted claim.” The court did not elaborate on how much specificity is required to demonstrate that each limitation of an asserted claim is “plausibly met” by the accused products, but it did clarify that its holding “does not require a patentee to plead with the specificity required in its infringement contentions.” Notably, the court also held that a plaintiff need only plausibly allege infringement of a single claim for the complaint to survive, and it is not required to identify all asserted claims and all infringing products in its initial pleading. However, “all of a patentee’s asserted claims for infringement must eventually appear in its complaint, amended or otherwise.”
On October 5, 2016, a Southern District of New York jury ordered Costco Wholesale Corp. (“Costco”) to pay Tiffany & Co. (“Tiffany”) an additional $8.25 million in punitive damages for selling “Tiffany” engagement rings that had no affiliation to the jewelry maker’s well-known rings. The award came days after the jury awarded Tiffany $5.5 million in compensatory damages following a trial on damages that started on September 19, 2016.
On September 30, 2016, the Federal Circuit issued an opinion affirming the District Court for the Southern District of New York’s dismissal of the plaintiff ’s complaint under Fed. R. Civ. P. 12(b)(6) because the complaint did not satisfy the Iqbal/Twombly pleading standard for a claim of joint infringement.