Judge Ware Claim Construction: Cryptography Research v. Via Int’l

Cryptography Research, Inc. v. Via Int’l Service Assoc. (PDF) 2007 U.S. Dist. LEXIS 40929 Decided May 22, 2007 Judge Ware This third claim construction order is relatively short.

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Judge Ware Appoints a Technical Advisor

Boston Scientific Corp. v. Micrus Corp. – Proposed Order of Appointment (PDF) and Report and Recommendation (PDF) Judge Ware Decided May 22, 2007 Boston Scientific and Target Therapeutics sued Micrus for willful patent infringement. The technology at issue deals with ââ?¬Å?coil delivery systems which are medical devices used to insert embolization coils to a selected site within a blood vessel.ââ?¬Â? Judge Ware decided to appoint a technical expert, although in the Ninth Circuit:

The exercise of this authority should be used sparingly and only in highly complicated cases.

The First Circuit has held that technical advisors are forbidden by FRE 706(a), which permits the judge to appoint an expert witness. Here, Judge Ware appointed the technical advisor (Mr. Rainer Schultz) under the following conditions:

1. Any advice provided to the Court by Mr. Schulz will not be based on any extra-record information. 2. From time to time, the Court may request Mr. Schulz to provide a formal written report on technical advice concerning the case. A copy of the formal written report prepared by Mr. Schulz shall be provided to the parties. However, the Court reserves the right to have informal verbal communication with Mr. Schulz which are not included in any formal written report. 2. Mr. Schulz may attend any court proceedings. 3. Mr. Schulz may review any pleadings, motions or documents submitted to the Court. 4. As a technical advisor, Mr. Schulz will make no written findings of fact and will not supply any evidence to the Court. Thus, Mr. Schulz will be outside the purview of ââ?¬Å?expert witnessesââ?¬Â? under Fed. R. Evid. 706. As such, the provisions in Rule 706 for depositions and questioning of expert witnesses will be inapplicable to Mr. Schulz. See Reilly, 863 F.2d at 155-156. 5. Mr. Schulz will have no contact with any of the parties or their counsel except for billing purposes. 6. The parties are directed to pay the reasonable fees charged by Mr. Schulz for his service as a technical advisor to the Court in this case. If the appointment is made, the parties shall confer to determine an apportionment for purposes of payment of Mr. Schulzââ?¬â?¢s fees. All matters pertaining to the fees of Mr. Schulz are referred to the assigned Magistrate Judge Richard Seeborg. 7. Mr. Schulz shall file a declaration that he will adhere to the terms of his appointment.

Either party was permitted to object to the appointment. The objection was to be made to Magistrate Judge Seeborg. Judge Ware was never to be informed as to which party made the objection. Neither party objected to the appointment of a technical advisor. Neither party objected on the grounds of bias. One party did, however, object to Mr. Schulz being appointed because his experience appears to be a field different than that of a person having ordinary skill in the art. Magistrate Judge Seeborg left the final decision to Judge Ware because neither party suggested that appointing Mr. Schulz would constitute an abuse of discretion.

Microsoft Gets a Double Default

Microsoft Corp. v. John Coppola (PDF) Microsoft Corp. v. Denise Ricketts (PDF) Judge Alsup Decided May 24, 2007 Microsoft sued both John Coppola and Denise Ricketts (in separate lawsuits) for selling counterfeit copies of Microsoft products on eBay.com and ioffer.com, respectively. Microsoft investigators purchased three counterfeit copies from each defendant to verify that the product was in fact counterfeit. Neither Coppola nor Ricketts appeared or otherwise responded to Microsoftââ?¬â?¢s complaint. Microsoft sued them both for ââ?¬Å?copyright infringement, trademark infringement under the Lanham Act, false designation of origin, constructive trust on illegal profits and accounting.ââ?¬Â? Microsoft sought maximum statutory damages of $3.2M from Coppola and $3.05M from Ricketts. In addition, Microsoft asked for $2000 in attorneyââ?¬â?¢s fees from each party. The court has significant discretion to award damages on a default judgment. In his discretion, Judge Alsup awarded Microsoft attorneyââ?¬â?¢s fees in both cases and $14,000 from Coppola and $12,500 from Ricketts. These numbers represent twice the statutory minimum. Coppola and Ricketts were both permanently enjoined from selling more infringing products. Judge Alsup was not comfortable awarding Microsoft over $3M per defendant on a default judgment. Statutory damages are intended to serve as a deterrent, but that does not justify such a windfallââ?¬Â¦. These damages, coupled with the permanent injunction granted against defendant, will adequately serve the purpose of deterrence. Microsoft was unable to prove actually damages because it could not conduct any discovery. Maybe it was a smart move by Coppola and Ricketts to not respond to Microsoftââ?¬â?¢s complaints. If you were their counsel would you advise them to default?

Judge Hamilton Claim Construction

Trimble Navigation Ltd. v. RHS, Inc. (PDF) Judge Hamilton Decided May 29, 2007 Judge Hamilton construes 10 claims in this claim construction opinion. The patent:

covers a GPS-based guidance system for agricultural farming that recognizes any “manually or operator-induced deviations” made during a given path, and replicates the altered path in the next subsequent path to be computed or driven.

What a Difference a Day Makes

Aristocrat Tech. v. Intââ?¬â?¢l Game Tech. (PDF) Judge Jenkins Decided June 13, 2007 Plaintiffs filed a PCT application related to electronic gaming machines. The deadline for filing the US fee for the national stage of the application was Jan. 10, 2000. The USPTO received the fee on Jan. 11, 2000. As such, the application was deemed ABANDONED due to failure to pay the basic national fee on time. Plaintiffs filed a petition to correct this. They claimed the delay was ââ?¬Å?unintentional.ââ?¬Â? The USPTO revived the patent. When plaintiffs asserted the patent against International Game Tech (IGT), ITG claimed the patent was invalid due to abandonment. IGT argued the correct standard was not ââ?¬Å?unintentional,ââ?¬Â? but ââ?¬Å?unavoidableââ?¬Â? as set forth in 35 USC 133 and 371. Plaintiffs argued:

[T]hat the PTO had authority to accept the petition to revive the allegedly abandoned [patent] application under the ââ?¬Å?unintentionalââ?¬Â? prong of 37 CFR Ã?§ 1.137(b). As further support for the existence of PTO discretion in reviving patent applications, Plaintiffs contend that Section 41(a)(7) specifically empowers the PTO with the discretion to revive ââ?¬Å?unintentionallyââ?¬Â? abandoned patent application.

After thorough analysis, Judge Jenkins held that the proper standard was ââ?¬Å?unavoidableââ?¬Â? and, therefore, the USPTO improperly granted the petition for revival of the patent. The patent was invalid because it was abandoned. What a difference a day makes!

ND Cal Addresses KSR

Technology Licensing Corp. v. Gennum Corp. (PDF) Magistrate Judge Seeborg Decided May 4, 2007 Technology Licensing sued Gennum for patent infringement. After trial, Gennum raised the issue of obviousness. There was little evidence on the issue and the record was ââ?¬Å?underdeveloped.ââ?¬Â? Presumably, Gennum thought KSR might have lowered the standard far enough that it could pull out a victory post trial. In a footnote, Magistrate Judge Seeborg opines that KSR

:

[M]ay have thereby generally lowered the bar for alleged infringers attempting to establish obviousness. 2007 U.S. Dist. LEXIS 35521, at *65 n.38.

To see a great compilation of follow-on KSR cases, including BPAI opinions, go to The Fire of Genius�s Post-KSR Resource Page. It is still too early to tell how much KSR changed the obvious landscape, but there is some pretty juicy language that will likely show up in numerous motions as we continue forward.

Judge Alsup Claim Construction

Comcast Cable Communications v. Finisar Corp (PDF). Judge Alsup construes six phrases in this claim construction order.

Race to the Courthouse

Intuitive Surgical, Inc. v. California Institute of Technology (PDF) Judge Wilken Decided April 18, 2007 Caltech had a meeting with Intuitive to offer a license. According to Intuitive, Caltech accused Intuitive of patent infringement and threatened suit. That same day, after the unsuccessful license meeting, Caltech sued Intuitive in the Eastern District of Texas. A mere two hours later Intuitive filed a declaratory judgment action in ND Cal. Caltech argued for either a stay, a dismissal, or a transfer. Intuitive argued:

that the first-to-file rule should not apply because it [Intuitive] filed suit just two hours after Caltech, and that if the first-to-file rule does apply, an exception is warranted because Caltech engaged in forum shopping.

Judge Wilken noted that there are exceptions to the first-to-file rule, and one may or may not apply in this case. Either way, the analysis and decision should be left to the court in the first-filed action. That two hour difference in getting the paper work in resulted in the decision being left to the Eastern District of Texas (known for not transferring cases). Too bad they didn�t take the time zones into effect, it would have been a tie!

Judge Ware Claim Construction

The Regents of the University of California, Plaintiff, v. Micro Therapeutics and Dendron GmbH, Defendants, and Third Party Plaintiffs, v. Boston Scientific and Target Therapeutics, Third Party Defendants (PDF) The Regents of the University of California sued defendants for infringement of 12 patents. This is Judge Ware’s claim construction with a substantial amount of analysis.

Claim Construction Differences

In re Cygnus Telecommunications Technology, LLC, Patent Litigation (PDF) Cygnus sued numerous defendants for patent infringement. This is Judge Whyte’s claim construction and ruling on summary judgment motions. Compare this to: Storus Corp. v. Restoration Hardware, Inc. (PDF) Storus sued defendants for patent infringement. This is Judge Chesney’s claim construction. Notice that it goes into very little analysis.