IP Newsflash

The Patent Trial and Appeal Board has rejected a patent owner’s argument that a forum selection clause found in a Non-Disclosure Agreement (NDA) barred the Board from instituting a petition for inter partes review (IPR).

The Southern District of New York has granted a motion in limine precluding evidence of Defendant’s failed inter partes review (IPR) petition.

The parties to the lawsuit are in the business of manufacturing and selling theater rigging equipment and winch systems. Olaf Sööt Design (“Plaintiff”) brought an action against Daktronics (“Defendant”) alleging infringement of U.S. Patent No. 6,520,485 (the “’485 patent”), which covers a winch system that is designed to move large theater scenes on and off the stage quickly. Notably, although the Defendant initially alleged that the ’485 patent was invalid, it withdrew its invalidity defense during the course of litigation.

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 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.

A federal judge in the Southern District of New York granted counterclaim-defendant TNS’s motion for summary judgment ruling that three patents related to targeted-advertising were invalid under Alice. As a preliminary matter, the court rejected Tivo’s (TRA) presumption of validity argument noting that “[t]he presumption of validity—and its concomitant clear and convincing evidence standard—does not apply to section 101 claims.” In analyzing the patents, the court found that all three patents describe the same basic invention in five basic steps: “(1) collecting household-level data from a variety of digital sources, (2) matching this data to individual households through the use of digital double-blind matching, (3) digitally storing this matched data, (4) applying a “cleansing and editing algorithm” to the data to remove extraneous and/or private information, and (5) calculating an advertising metric based on the data.” Accordingly, the court found claim 71 of the ’940 patent to be representative of all asserted claims—essentially a method for correlating the advertisements that consumers view and their purchasing behavior.