IP Newsflash

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 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).

A recent in limine order issued by Judge James C. Mahan of the District of Nevada shows the pitfalls of offering an expert opinion on infringement that does not carefully track the court’s claim construction—for each and every claim. In 2­Way Computing, Inc. v. Sprint Solutions, Inc., the patentee 2­Way accused Sprint Solutions and other defendants (collectively, “Sprint”) of infringing a patent purportedly directed to “an audio communication system that allows the user to talk with other users over a shared network.” 2­Way’s literal infringement claims survived summary judgment, and Judge Mahan set the case for trial.