Seattle Patent Litigation Update: December 2009

As we enter the last month of 2009, there is much to report on the state of local patent litigation.

Here are some interesting orders that were issued over the past few months.

On October 23, 2009, Judge Pechman stayed a patent case filed by National Products, Inc. against Gamber-Johnson LLC. The case involves allegations that Gamber-Johnson has willfully infringement NPI's U.S. Patent Number US 7,573,706.  No reasons were given for the stay other than the fact that a request for reexamination of the patent-in-suit was filed.  (See Dkt. No. 20: "The Court has considered the submissions of the parties and determined that a stay is proper.")

On November 19, 2009, Judge Jones granted a motion for partial summary judgment in favor of Defendant Toyota Motor Corporation in a patent suit brought by independent inventor (and former Boeing in-house Patent lawyer), Conrad Gardner.  Mr. Gardner is the named inventor on U.S. Patent number 7,290,627, "Extended Range Motor Vehicle Having Ambient Pollutant Processing," with claims drawn to "[a] hybrid motor vehicle."  The priority date on the '627 patent is June 23, 1997, which is well before any of Toyota's patents in the hybrid vehicle space.  This all sounds good for the plaintiff, but unfortunately, the case is not going very well at all for Mr. Gardner.  Recently, Claim 6 (ostensibly the broadest claim) was invalidated as indefinite.  The grounds: lack of antecedent basis.  Claim 6 of the '627 patent had a glaring error in that the element "said speed demands," a remnant of a former dependent claim, lacked any antecedent basis at all.  This is true despite the fact that Claim 6 was the product of two CIPs, one Continuation application, and a successful Appeal to the Board of Patent Appeals and Interferences, which in 2005 reversed the Examiner's prior art-based rejections. 

Reading Judge Jones' order (and that's all I've read in connection with Toyota's motion), it is not immediately clear whether Gardner addressed this error head on, or whether attempts to file a reissue to correct this drafting mistake were initiated.  For example, Judge Jones' order states "Mr. Gardner does not respond directly to Toyota’s claim of the lack of express antecedent basis. Instead, Mr. Gardner’s response offers multiple constructions of the term 'said speed demands.'"

On September 24, 2009, local software company specializing in wireless data and communications, Airbiquity Inc., settled its patent case involving claims of infringement against AT&T Mobility LLC.  The patents in suit are U.S. Patent Nos. 6,681,121 ("Circuitry for Activating a Modem in a Cellular Telephone") and 7,206,305 ("Software Code for Improved In-band Signaling for data Communications Over Digital Wireless Telecommunications Networks").

The Airbiquity settlement comes after its counsel, Dorsey & Whitney, sought leave of court to withdraw as counsel for Airbiquity in view of its existing representation (unrelated matters) of Motorola and Apple who are not parties to the action, "but whose interests might be adversely affected if plaintiff prevails in this matter."  The motion raised novel issues under Washington law with respect to possible ethical concerns raised by representation of a litigant on legal issues that might be adverse to an existing client, although the current representation is not "directly adverse" to any existing client.

From Judge Zilly's order:

"Washington courts have not yet had occasion to opine on the ethical concerns raised
by Dorsey in this case. In this matter, Dorsey represents a patent holder claiming that a
cellular telephone service provider is infringing one or more of its patents. Dorsey also
provides unrelated legal services to a manufacturer of cellular telephones that has an
exclusive service arrangement with the provider being sued in this matter. In its motion to
withdraw, Dorsey has represented to the Court that the infringement contentions asserted by
Dorsey on behalf of one client (plaintiff) reach one or more of the products manufactured by
Dorsey’s other client (Apple). Motion at 1 (docket no. 133). Dorsey also indicates,
however, that plaintiff does not intend to join Apple as a party in this litigation."


Further, the order goes on to state:

"The Court is not persuaded that Dorsey has a concurrent conflict of interest. The
Court recognizes that the conflict of interest rules concerning current clients are different
from those involving former clients, and that the prohibition against representing clients
whose interests are adverse applies even when the matters in which the lawyer has provided
services are not the same or substantially related. Compare RPC 1.9(a) (“A lawyer who has
formerly represented a client in a matter shall not thereafter represent another person in the
same or a substantially related matter in which that person’s interests are materially adverse
to the interests of the former client unless the former client gives informed consent,
confirmed in writing.”). The concurrent conflict rule is premised on an attorney’s duty, and a
client’s legitimate expectation, of loyalty. See Concat LP v. Unilever, PLC, 350 F. Supp. 2d
796, 815 (N.D. Cal. 2004). It is also designed to safeguard client confidences. See
Prudential Ins. Co. v. Anodyne, Inc., 365 F. Supp. 2d 1232, 1237 (S.D. Fla. 2005). Dorsey
has not shown that either of these goals would be compromised if it is not allowed to
withdraw from representation of plaintiff in this action."


In addition to the above happenings, the following new cases were filed since September, bringing our year-to-date patent case total to 34, well behind where we were last year on this day; 42 patent cases filed in 2008 by December 3 of that year.  Numbers seem to be down everywhere, including East Texas.  On December 3, 2008, East Texas had 290 patent cases filed.  This year, just 230 cases filed by December 3. (Source: justia.com).  Numbers are down in East Texas for many reasons, not just the economy.  Indeed, some of you may have heard that yesterday, the CAFC granted mandamus again, reversing an order refusing to transfer venue to the E.D. of North Carolina.  See In re Hoffmann La-Roche Inc., 09-M911 (Fed Cir. 2009). That is the third time in less than a year that the CAFC has granted mandamus in order to reverse the Eastern District of Texas, albiet applying Fifth Circuit Law. See In re TS Tech USA Corp., 551 .3d 1315, 1322 (Fed. Cir. 2008) and In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009).  Times, they are a-changin'

Now, the list of Washington cases since September 2009.

Lectent LLC v. SAS Group Inc et al  (September 29, 2009)

Logan v. BabyPlus Company et al (October 1, 2009)

Laughing Rabbit Inc v. Stever (October 5, 2009)

Direct Route LLC v. OnOffline Inc et al (October 22, 2009)

LED Dental Ltd et al v. Trimira LLC et al (November 6, 2009)

Cequint Inc v. Toysoft Development Inc (November 6, 2009)

WRE-Hol LLC v. Pharos Science & Applications Inc et al (November 17 2009)

That's all for now.