Intellectual Property > IP Newsflash
17 Mar '17

This case presents an example of a district court’s use of the “proportionality” requirement of Rule 26 to limit overbroad discovery.

On March 9, 2017, Magistrate Judge Barbara L. Major of the District Court for the Southern District of California denied a motion brought by defendant, Pacific Surf Designs, Inc., to compel plaintiff, FlowRider Surf, Ltd., to produce “all documents and pleadings” from an earlier arbitration.

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07 Sep '16

In a final written decision issued on August 30, 2016, in an inter partes review, the Patent Trial and Appeal Board (PTAB) examined whether a “Request for Comments” (RFC) document qualified as a printed publication under 35 U.S.C. § 102(b) and, as such, whether an obviousness challenge could be based on that document.

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31 Aug '16

On August 22, 2016, a court in the Northern District of California ruled on numerous Daubert motions and motions in limine in Finjan, Inc. v. Sophos, Inc. In doing so, the court granted Sophos’s motion to preclude evidence and argument about post-grant proceedings before the United States Patent and Trademark Office (PTO).

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30 Aug '16

The Federal Circuit recently reversed a district court’s grant of summary judgment of invalidity for lack of written description under 35 U.S.C. § 112. The Federal Circuit held that the district court had incorrectly determined that one of the disclosed embodiments imposed limits on the scope of the invention. The Federal Circuit based its decision on the disclosures about the variety of problems solved by the invention and the originally filed claims.

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26 Aug '16

On Wednesday, the District Court for the Northern District of California granted defendant F5’s renewed motion for JMOL that it did not willfully infringe plaintiff Radware’s patent. The court determined that plaintiff failed to submit sufficient evidence to support the jury’s willfulness finding, even under the new preponderance of the evidence standard set forth in the Supreme Court’s Halo decision.

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24 Aug '16

On August 15, 2016, Judge Orrick of the Northern District of California granted-in-part defendant Sophos’s motion to exclude the testimony of plaintiff Finjan’s damages expert. Sophos urged, among other things, that the expert’s apportionment methodology improperly inflated her royalty base. Specifically, Sophos argued that Finjan’s expert improperly inflated the royalty base by double or triple counting revenue attributable to the “threat engine” and “live protection” features of the accused software products. That is, Finjan’s expert apportioned the royalty base by 28.6 percent (or 2/7) as to both patents-in-suit, even though each patent covered those same two features. “In this way, [the expert] counts the revenue attributable to certain features multiple times in calculating her royalty base such that her total apportionment calculation uses a royalty base that is over 100 percent of the total value of several of the accused products.”

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24 Aug '16

The Texas Court of Appeals, Fifth District held in In Re Andrew Silver that Texas state courts do not recognize any attorney-client privilege for communications between a client and a non-attorney patent agent. The decision conflicts with the Federal Circuit’s decision to adopt a patent agent privilege in In re Queen’s University at Kingston. The underlying Texas state court dispute arose out of a breach of contract claim and did not involve issues of patent validity or infringement.

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10 Aug '16

On June 3, the Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review on the basis that the Petitioner, Securus Technologies, Inc., failed to show that there would be a reasonable likelihood that the Petitioner’s arguments would prevail in establishing the unpatentability of the claims-at-issue. The patent-at-issue, U.S. Patent No. 7,256,816 (the “’816 Patent”), is generally directed to a system for conducting video visits between two participants, wherein the system minimizes latency and the video visits are monitored. The Patent Owner, Global Tel*Link Corporation, filed a preliminary response, arguing that the Petitioner failed to meet its burden for institution of inter partes review.

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