Is There A Temporal Difference Between A Static Database and An Active Database?

Clear With Computers, LLC v. Hyundai Motor America, Inc., (pdf), No. 6:09-cv-479, 2011 WL 43454 (E.D. Tex., January 5, 2011) (Davis, L.)

A jury’s finding of noninfringement for a product does not give a company free reign for future modifications of the same product. After obtaining a jury verdict of noninfringement, the Defendant modified its previously accused website. The Plaintiff initiated a new suit asserting that the redesigned website infringes the previously asserted patent and one additional patent. The Court was confronted with whether it should modify its prior claim constructions due to the modifications made to the accused product. Additionally, the Court had to determine the difference between a static database and an active database. The asserted patents generally describe an electronic system for creating customized product proposals by querying a user to determine a customer’s needs and interests and then uses stored pictures and text segments to create a customized proposal that appeals to the customer.

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Are Private Networks Accessible via the Internet, Part of the Public Internet?

Automated Transactions LLC v. IYG Holding Co., et. al. (pdf), 1:06cv-043-SLR, 2011 WL 810237 (D. Del. March 9, 2011) (Robinson, S.)

It’s no secret, the scope of the Internet is continuously expanding.  More and more systems are being connected to the Internet, either for the public to access or for companies to be able to remotely access their own private networks.  The question raised in Automated Transactions, is whether a private network becomes part of the Internet when you allow remote access to that private network through a Virtual Private Network (“VPN”).  The plaintiff asserted infringement of several patents related to enabling a user to complete a retail transaction over the Internet via a combination of ATM and Internet kiosk.  According to the patents, prior ATM’s connected to a bank via private dedicated lines.  The patented invention allows an ATM to complete the retail transaction over the Internet.  The ATMs used by the defendants completed transactions over a private frame relay network; however, that private network could be accessed remotely over the Internet through a VPN server.  The court was confronted with whether a private network that can be accessed over the Internet through a VPN, was part of the Internet.

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Do Infringement Contentions Really Promote the Crystallization of Infringement Theories?

Shared Memory Graphics, LLC, v. Apple, Inc., et al., (pdf), No. 3:2010-cv-02475, 2010 WL 5477477 (N.D. Cal. December 30, 2010)

Jurisdictions incorporating Patent Local Rules require parties alleging patent infringement to serve infringement contentions that give reasonable notice of why the plaintiff believes it has a reasonable chance of proving infringement. One of the purposes of these contentions is to crystallize the plaintiff’s infringement contentions. When a party’s contentions rely on vague and conclusory statements, it may be prudent to seek a motion to compel more specific contentions to crystallize the opposing party’s theories. In a patent infringement action involving memory systems that contain a graphics accelerator, the parties were before the Court on a motion to compel supplemental infringement contentions pursuant to the Court’s Local Patent Rules.

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Do Conflicts Arise for Plaintiff's Counsel when Defendants Assert Prior Art Owned by Other Clients of Plaintiff's Counsel?

JuxtaComm-Texas Software, LLC v. Axway, Inc., et al. (pdf), No. 6:10-cv-11, 2010 WL 4920909 (E.D. Tex. Nov. 29, 2010) (Davis, L.)

Ethical conflicts can arise in a number of unusual situations.  In JuxtaComm-Texas Software, the Court was confronted with two such unusual situations.  The first involved the issue of whether an ethical conflict arises when defendant relies upon a prior art system that is owned by a third party who is a client of plaintiff’s counsel.  After holding that this situation does not create an ethical conflict with a current client, the Court was then confronted with a second ethical issue.  If plaintiff’s counsel terminates its relationship with the third party, can the plaintiff (while still represented by the same counsel) commence a new patent infringement suit against the now former client?

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Should Plaintiffs Be Required To Pinpoint The Infringing Routine or Algorithm After Production of the Source Code?

Big Baboon Corporation, v. Dell, Inc., et al., (pdf), No. 2:09-cv-01198, 723 F. Supp. 2d 1224 (C.D. Cal. July 2, 2010) (Segal, S.)

The early production of source code included within a plaintiff’s allegation of infringement may provide an early opportunity for a defendant to compel infringement charts that clearly show where each element of each asserted claim is found in each accused system with pinpoint citations to source code. In a patent infringement action involving business-to-business web commerce and business automation systems, the parties were before the Court on a motion to compel infringement contentions, including claims charts, in response to a previously served interrogatory.

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Do Claims of Joint Infringement Face New Requirements?

Akamai Technologies, Inc. v. Limelight Networks, Inc. (pdf), Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417, 2010 WL 5151337 (Fed. Cir. Dec. 20, 2010) (LINN, Rader, Prost)

In Akami Techs., Inc. v. Limelight Networks, Inc., ___ F.3d ___ (Fed. Cir. 2010), the Federal Circuit provided the most extensive elaboration to date on the law of joint infringement (also known as divided infringement). In doing so, the Federal Circuit clarified what a patentee must show in order to establish that a “mastermind” infringes a multi-step method claim where one of the steps is performed by another entity under the mastermind’s direction or control. The patentee must prove either 1) that the mastermind is vicariously liable for the actions of the other entity under traditional agency principles or 2) that the other entity is contractually obligated to the mastermind to perform the claimed step.

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Who has Standing, a Subsidiary or a Parent with Significant Control Over the Wholly Owned Subsidiary?

In re Google Litigation (pdf), No. 08-cv-03172 RMW, 2010 WL 5211545 (N.D. Cal. Dec. 16, 2010) (Whyte, R.)

Determining who has standing to sue for infringement can be a difficult task in the face of a number of agreements purporting to transfer various rights to the patents between inventors, companies owned by the inventor, patent holding companies, investment companies, and wholly owned subsidiaries of these companies. In In re Google Litigation, the Court was confronted with just such a task when the defendant filed a motion to dismiss for lack of standing pursuant to Rule 12(b)(1).

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Is Particularized Testimony And Linking Argument Required For Infringement?

Advanced Micro Devices, Inc., et al., v. Samsung Electronics Co., Ltd., et al., (pdf), No. 3:08-cv-00986-SI, 2010 WL 5059518 (N.D. Cal. Dec. 6, 2010) (Illston, S.)

An expert’s failure to provide particularized testimony and linking argument can undermine a party’s doctrine of equivalents infringement analysis. After construing the disputed claim term “Y-select circuit,” consistent with the defendant’s proposal, the Court accepted plaintiff’s concession that that there is no evidence of literal infringement of the asserted claims, and entered summary judgment of no literal infringement. The Court recognized though, that in addition to literal infringement, however, a plaintiff may also assert infringement under the doctrine of equivalents. Relying on its expert, plaintiff asserted that the accused products contained a “Y-select circuit” in a position that was equivalent to the position recited in the asserted claims. 

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Is the Re-Filing of a Complaint that was Dismissed for Lack of Subject Matter Jurisdiction a Basis for the Awarding of Attorneys' Fees?

Microsoft Corp. v. WebXchange, Inc. (pdf), No. 1:09-cv-00484-JJF, 715 F. Supp. 2d 598 (D. Del. May 1, 2010) (Farnan, J.)

The award of attorney fees based on conduct by the opposing party is within the discretion of the Court and depends on the specific facts of the case. In Microsoft Corp. v. WebXchange, the defendant, WebXchange, had previously filed suits claiming patent infringement in the District of Delaware against three of plaintiff Microsofts’s customers based, in part, on the customers’ use of Microsoft’s products. In response, Microsoft filed a complaint for declaratory judgment in the Northern District of California, seeking a declaration of non-infringement, invalidity, and unenforceability. After this complaint was dismissed for lack of subject matter jurisdiction, Microsoft filed a second complaint for declaratory judgment in the District of Delaware, again seeking a declaration of non-infringement, invalidity, and unenforceability. After this second complaint for declaratory judgment was also dismissed for lack of subject matter jurisdiction, WebXchange filed a motion to recover attorneys’ fees for both the California and Delaware cases.

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How Does the Heightened Pleading Standard of Exergen Apply to Various Claims of Inequitable Conduct?

Mediostream, Inc. v. Microsoft Corp., et al. (pdf), No. 2:08-cv-369-CE, 2010 WL 4239196 (E.D. Tex. Oct. 27, 2010) (Everingham, C.)

Under the Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) line of cases, accused infringers who assert affirmative defenses or counterclaims of inequitable conduct must meet the heightened pleading standard of Rule 9 to plead with particularity.  In Mediostream, the Court was confronted with applying the Exergen standard to a variety of different claims of inequitable conduct.

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