Plaintiff Ordered to Produce More Specific Infringement Contentions

The Plaintiff in the case Gebr. Tigges Gmbh & Co. KG v. EYS Metal Sanayi Ltd. (C07-1673) (Lasnik, J.) was ordered to produce more specific infringement contentions in response to the Court's scheduling order calling for "preliminary infringement contentions."

The order states as follows:

The Local Rules for the Western District of Washington do not currently [NOTE: I think the key word from our Chief Judge here is "currently"] define requirements for preliminary infringement contentions. As a guideline, however, many courts, including this Court, look to the Patent Local Rules for the Northern District of California and case law interpreting the rules. See, e.g., McKesson Info. Solutions LLC v. Epic Sys. Corp., 242 F.R.D. 689, 695 n.1 (N.D. Ga. 2007) (stating that decisions of the U.S. District Court for the Northern District of California provide persuasive authority). These rules require PICs to identify “specifically where each element of each asserted claim is found within each Accused Instrumentality” and to declare whether the element “is claimed to be literally present or present under the doctrine of equivalents.” U.S. Dist. Ct. N.D. Cal. Patent LR 3-1(c-d). The courts in the Northern District of California have interpreted this rule as requiring that PICs: reflect “all facts known to [the plaintiff] including those discovered in their Fed. R. Civ. P. 11 pre-filing inquiry,” and contain sufficient detail regarding the plaintiff’s theory of infringement “‘to provide defendants with notice of infringement’ beyond the claim language itself.”

*** (citations omitted)

This Court follows this reasoning because specificity in disclosure responds to the objectives underlying preliminary infringement and invalidity contentions: to streamline discovery and to require both parties “to crystallize their theories of the case early in litigation.” O2 Micro Int’l, Ltd. v. Monolithic Power Sys. Inc., 467 F.3d 1355, 1364-1366 (Fed. Cir. 2006) (upholding under the Federal Rules of Civil Procedure the validity of the Northern District of California’s local patent rules’ requirement that “both the plaintiff and the defendant in patent cases . . . provide early notice of their infringement and invalidity contentions”).

So the take away point from this post is that the WDWA tends to follow practices from the ND of Cal. in terms of local patent practice and in particular, the disclosures and contentions required by the local rules from the ND of Cal., as incorporated into specific cases by judges in this district.
EYSPICorder.pdf
LasnikScheduleOrderPatentCase.pdf

Preliminary Injunction in Tacoma Lantern Case Reversed by the CAFC

Note: This post was modified on 3/27/2008 to reflect the fact that the opinion is nonprecedential.

In this case for infringement of US 7,118,245, the USDC, WDWA in Tacoma granted the plaintiff's motion for preliminary injunction on July 3, 2007. In ordering the preliminary injunction, the district court (Judge Burgess) noted that expert testimony provided that the accused device was "identical in all respects (within + or - .005) to the Patented Device, except that the Accused Device lacked the ‘plurality of ports’ in the reflector that would allow the central light to augment the lateral light." Additionally, the district court briefly discussed a covenant not to compete between the parties, concluding that "because a serious question has been raised on the issue of the Covenant Not To Compete . . . another basis for preserving the status quo pending final resolution of the issue has been shown."

Today in a nonprecedential opinion authored by Judge Prost and joined by Judges Rader and Schall, the CAFC reversed finding that substantial questions existed as to whether the accused devices infringed under a doctrine of equivalents analysis, and that even if the covenant not to compete were enforceable, it had expired.

Bamboo Flooring Defendant Gets a Second Chance to State Fraud and Antitrust Defenses

Defendant Smith & Fong Company, a California provider of bamboo furniture and building products, including bamboo flooring under the name PLYBOO, was sued last December by Teragren, LLC for infringement of U.S. Patent No. 5,543,197, "Parallel Randomly Stranded Laminated Bamboo Boards and Beams." Smith & Fong denied infringement and counterclaimed for invalidity, inequitable conduct, and antitrust violations, among several other counterclaims and affirmative defenses. In total, Smith & Fong alleged six counterclaims and 20 affirmative defenses. At the core of their defense is an allegation that the '197 patent is invalid and that it was procured by a fraudulent misrepresentation as to inventorship. The counterclaims allege as follows:

[(The ‘197 patent)], allegedly exclusively licensed to Teragren, was obtained on inventions that not only had been widely known and publicized in the public domain well prior to the patent application date, but had been offered for sale in the public domain well prior to the patent application date. Most importantly, despite Teragren’s allegations, the bamboo stranded products offered in the US market do no infringe any of the claims of the ‘197 Patent.

***
The ‘197 Patent is, on information and belief, unenforceable because it was obtained through
misrepresentations and/or fraud on the United States Patent and Trademark Office. On information and belief, the putative inventor of the ‘197 Patent represented that he was the inventor with knowledge that subject matter of the claims of the ‘197 Patent was invented by another, and had previously been offered for sale by another in the United States.

In an order denying Teragren's motion to dismiss these allegations for failing to meet the minimum pleading requirements for inequitable conduct (fraud) in Rule 9(b), Judge Leighton (Tacoma) gave Smith & Fong a chance to amend their counterclaims to add specific facts supporting inequitable conduct, and to allege the requisite facts for an antitrust violation under the "sham litigation" exception to the Noerr-Pennington doctrine. With respect to the "sham litigation" claims, Judge Leighton states that Smith & Fong is required to allege that "1) the lawsuit [is] objectively meritless and 2) the baseless lawsuit conceals an attempt to interfere directly with the business relationship of [Smith &Fong]." With respect to claims for inequitable conduct, Smith & Fong is require to allege "precisely what conduct constituted fraud or how such conduct was a deliberate scheme to defraud the U.S. Patent Office."

Whether Smith & Fong can adequately make these allegations in an amended pleading consistent with its obligations under Rule 11 remains to be seen.
TaragrenOrderMDismiss.pdf

Microsoft's Data Base Patent Invalidated in Suit with Veritas

As predicted in my earlier post on this case, Judge Coughenhour accepted findings by the special master and invalidated Microsoft's U.S Patent No. 5,558,147. The case is not over by any means. Microsoft is positioned quite well for the upcoming May 2008 trial with total damages on the contract claims capped at $4,000,000. Microsoft finds that kind of money in the cushions of its executive lounge couch. More coverage on this order is available from IP360 if you have a subscription.
VeritasMSJ147.pdf

Claims Construction Order on Alliance Packaging v. Smurfit-Stone Container Corp.

In this case, Plaintiff Alliance Packaging asserts infringement of U.S. Patent No. 7,156,287 against Altivity Packaging LLC. The patent-in-suit is for a container with a spout. Judge Zilly recently held a Markman hearing and construed the following terms of the '287 patent claims: "lower side" "acute angle" and "cover the concavity." The order is attached below.


Alliance%20Packaging%20Claims%20Constrution%20Zilly.pdf

Cisco and Rick Frenkle (a.k.a. Patent Trolltracker) Sued for Defamation

Michael Smith is reporting that the recently unmasked "patent TrollTracker," Rick Frenkle, has been sued along with his company Cisco by attorney John ("Johnny") Ward, Jr. of Ward and Smith in Longview, Texas. The allegations originate with a post by trolltracker regarding the filing date of a complaint Ward filed against Cisco for patent infringement in October last year. Download the complaint here.
Ward_v_Cisco_Gregg_complaint%5B1%5D.pdf

UPDATE

An update on this case from Peter Zura's 271 Patent Litigation Blog:

Joe Mullen, reporter at IP Law & Business magazine and author of the Prior Art Blog has some additional information on the Ward/Albritton lawsuit against Frenkel and Cisco (see 271 Blog post below). As many have noticed already, the Ward complaint "making the rounds" is an amended complaint. According to the the case docket in Gregg County District Court (link), the case was originally filed as John Ward, Jr. v. John Doe et al. on Nov. 7, 2007, and it is presumed that the complaint was filed with the notion of deposing someone at Google, who oversees the Blogger.com sevice used by Frenkel.Since filing the complaint, the timelines are as follows:Jan. 24: Petition to depose granted.Feb. 23: Troll Tracker is revealed to be Rick Frenkel, an IP director at Cisco Systems.Feb. 27: Ward Jr. filed an amended complaint claiming defamation against Cisco and Frenkel.March 3: Eric Albritton files a separate complaint against Cisco and Frenkel.This is going to be an interesting case to watch. According to Joe, there appear to be some discrepancies in the Troll Tracker posts that are alleged to contain the defamatory statements. The original post-in-question was changed by Frenkel after receiving additional information from a reader. Frenkel acknowledged those changes when they were made. However, only the original post was submitted to the court. Read Joe's post in its entirety here.Also, as noted by Dennis at Patently-O, the PACER filing information still reflected that the case had been originally filed on the 15th, but the PACER complaint filing date now indicated October 16 (see here and here).

Summary Judgment Granted For Microsoft on Patent Claims brought by Veritas

Judge Coughenhour adopted findings by the special master and granted Microsoft's motion for partial summary judgment on Veritas' claim for infringement of US Patent No. 5,469,573. Here is a summary of the decision from Jurisnotes and a link to the order's text:

Veritas sued Microsoft for patent infringement and related claims; the court adopted the report of the special master recommending that the court grant Microsoft's motion for summary judgment on Veritas's claim of infringement of the '573 patent. The '573 patent claims a data backup procedure and apparatus for backing up and restoring a fully configured operating system to the high capacity storage device of a computer workstation from standard system backup media without the need to reload and reconfigure the operating system from its original distribution media. Veritas alleges that certain operating system software sold by Microsoft have built-in backup and restore capabilities that can be used to infringe the '573 patent. Microsoft asserts that Veritas has not shown that any specific customer has used the accused software in a way that practices each step of any claim. Because the accused products had undisputed substantial non-infringing uses, Veritas could not show that use of the accused products necessarily infringed. As a result, Veritas had to point to a specific instance of direct infringement in order to avoid summary judgment on its charge of indirect infringement. Veritas had to show that deployment or restoration by a customer was accomplished using a method recited in the claims. The court noted that some of the claimed method steps were inherently ordered and indicated that Veritas had to prove that Microsoft's customers performed those steps in the order set forth in the claims. Veritas's evidence of direct infringement fell into three categories: 1) user manuals and other documents that instructed Microsoft customers on how to use the accused products; 2) testimony by Microsoft witnesses concerning use of the accused products; and 3) emails and other documents concerning use of the accused products.
It was clear that Veritas's reliance on various user manuals and related documents to show that a user actually performed the claimed method was too speculative to raise a genuine issue of material fact in that regard. The court noted that certain of these documents disclosed deployment scenarios that a customer could utilize without infringing the asserted claims. Moreover, Veritas's expert had to cobble together various parts of each document to show that they taught the claimed methods. But these parts were not disclosed together or in the claimed order. Nothing in the evidence indicated that Microsoft's customers had actually used the accused products in the manner suggested by Veritas. In addition, some of the documents did not even point to a sufficiently specific method such that a reasonable jury could identify an infringing method, much less conclude that a Microsoft customer had actually used the accused products to perform a claimed method.

Veritas still has claims for breach of contract and alleged misuse of confidential information. Those claims are set for trial in may 2008, but Vertas' damages are capped at $4,000,000.

Western District Patent Case Filings Remain Strong through February

Patent case filings in Seattle and Tacoma remained strong through February following a red-hot January. While there weren't half as many filings as in January, February 2008 saw four patent cases filed in Seattle and Tacoma, that is more than February 2007 which saw only three and more than February 2006, which also had only three. Total patent cases this year so far in Washington state number 14, with almost all of those in the Western District.

Laughing Rabbit Inc. V. Nashbar and Associates Inc., (08-cv-00339) (Judge Martinez) US Pat. No. D375,372 "Pocket Flashlight"

JE Hynds LLC v. Hopscotch Technology Inc., (08-cv-5083) (Judge Arnold in Tacoma) U.S. Patent No. 7,162,378 "Point of Play Terminal"

BE Meyers and Co. v. Advanced Armament Corp., (o8-cv-00228) (Judge Theiler) U.S. Patent No. 6,837,139 "Flash Suppressor"

Implicit Networks Inc. v. Advanced Micro Devices, Inc., (08-00184) (Judge Robart) U.S. Patent No. 6,629,163 "Methods and System for Demultuplexing a First Sequence of Packet Components to Identify Specific Components Wherein Subsequent Components are Processed Without ReIdentifying Components."

For more statistics about Seattle Patent Litigation, Follow this link.