Justia Civil Procedure Opinion Summaries

CPC Patent Technologies Pty Ltd. sought discovery from Apple Inc. under 28 U.S.C. § 1782 for use in a prospective patent infringement lawsuit in Germany. CPC aimed to obtain documents describing the functionality of Apple’s biometric security technology. The district court granted CPC’s application, allowing them to serve a subpoena on Apple, but the scope of the discovery and the specific documents Apple must produce remained unresolved.Initially, a magistrate judge denied CPC’s application, finding the discovery requests unduly burdensome. CPC sought review, and the district court affirmed the magistrate judge’s decision under a clear error standard. On appeal, the Ninth Circuit held that the district court should have reviewed the magistrate judge’s decision de novo, as the ruling on a § 1782 application is dispositive. The case was remanded, and the district court, applying de novo review, granted CPC’s application. Apple objected, particularly concerned about the potential requirement to produce source code, but the district court’s order did not definitively resolve these objections.The United States Court of Appeals for the Ninth Circuit reviewed the case and dismissed the appeal for lack of appellate jurisdiction. The court held that the district court’s decision was not final because the scope of discovery and the specific documents Apple must produce were still undetermined. The lack of a final judgment meant that the Ninth Circuit could not evaluate the Intel factors used to determine whether discovery was warranted under § 1782. Consequently, the appeal was dismissed, leaving the district court to resolve the remaining discovery issues. View "CPC PATENT TECHNOLOGIES PTY LTD. V. APPLE INC." on Justia Law

NexStep, Inc. filed a lawsuit against Comcast Cable Communications, LLC, alleging infringement of nine patents, including U.S. Patent Nos. 8,885,802 and 8,280,009. The District Court for the District of Delaware granted summary judgment of non-infringement for the '802 patent after construing the term "VoIP" to require two-way voice communication, which NexStep's infringement theory did not meet. The '009 patent proceeded to a jury trial, where the jury found no literal infringement but did find infringement under the doctrine of equivalents. However, the district court granted Comcast's post-trial motion for judgment as a matter of law, finding NexStep's proof inadequate.The district court's summary judgment for the '802 patent was based on the construction of "VoIP" as requiring two-way voice communication, supported by technical dictionaries and the agreed industry standard meaning. NexStep's argument that VoIP should include one-way audio transmission was rejected. The court found no genuine dispute of material fact and granted summary judgment of non-infringement.For the '009 patent, the jury found no literal infringement but did find infringement under the doctrine of equivalents. However, the district court set aside this verdict, ruling that NexStep failed to provide the required particularized testimony and linking argument to support the doctrine of equivalents. The court found that NexStep's expert testimony was too conclusory and lacked specificity.The United States Court of Appeals for the Federal Circuit affirmed the district court's rulings. The appellate court agreed with the district court's construction of "VoIP" and its grant of summary judgment for the '802 patent. For the '009 patent, the appellate court found that NexStep's expert testimony did not meet the evidentiary requirements for the doctrine of equivalents, as it lacked particularized testimony and linking argument. The court dismissed Comcast's conditional cross-appeal related to the validity of the '009 patent. View "NEXSTEP, INC. v. COMCAST CABLE COMMUNICATIONS, LLC " on Justia Law

The case involves a dispute between two companies over the enforcement of standard-essential patents (SEPs) related to the 5G wireless-communication standard. The plaintiff, a telecommunications company, had made a commitment to license its SEPs on fair, reasonable, and non-discriminatory (FRAND) terms. The defendant, another technology company, sought an antisuit injunction to prevent the plaintiff from enforcing injunctions it had obtained in Colombia and Brazil based on these SEPs.The United States District Court for the Eastern District of North Carolina denied the defendant's request for an antisuit injunction. The district court applied a three-part framework to analyze the request, focusing on whether the domestic suit would be dispositive of the foreign actions. The court concluded that the domestic suit would not necessarily result in a global cross-license between the parties and therefore did not meet the threshold requirement for issuing an antisuit injunction.The United States Court of Appeals for the Federal Circuit reviewed the district court's decision. The appellate court vacated the district court's denial and remanded the case for further proceedings. The appellate court concluded that the district court had erred in its interpretation of the "dispositive" requirement. Specifically, the appellate court held that the FRAND commitment precludes the plaintiff from pursuing SEP-based injunctive relief unless it has first complied with its obligation to negotiate in good faith over a license to those SEPs. Since whether the plaintiff had complied with this obligation was an issue before the district court, the appellate court determined that the "dispositive" requirement was met.The appellate court did not decide whether the defendant was ultimately entitled to the antisuit injunction, leaving that determination to the district court's discretion upon further analysis. The case was remanded for the district court to consider the remaining parts of the foreign-antisuit-injunction framework. View "TELEFONAKTIEBOLAGET LM ERICSSON v. LENOVO (UNITED STATES), INC. " on Justia Law

Provisur Technologies, Inc. owns patents related to food-processing machinery, specifically high-speed mechanical slicers and a fill and packaging apparatus. Provisur sued Weber, Inc. and its affiliates, alleging that Weber's food slicers and SmartLoader products infringed on these patents. The case was tried before a jury, which found that Weber willfully infringed several claims of Provisur's patents and awarded Provisur approximately $10.5 million in damages.The United States District Court for the Western District of Missouri denied Weber's motions for judgment as a matter of law (JMOL) on noninfringement and willfulness, as well as a motion for a new trial on infringement, willfulness, and damages. Weber appealed these decisions.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the district court's denial of JMOL for noninfringement regarding the '812 and '436 patents, as Weber conceded its noninfringement arguments were no longer available due to an intervening decision. However, the court reversed the district court's denial of JMOL for noninfringement of the '936 patent, finding that Provisur failed to provide sufficient evidence that Weber's SmartLoader could be readily configured to infringe the patent.The court also reversed the district court's denial of JMOL on willfulness, ruling that the evidence presented, including testimony about Weber's failure to consult a third party, was insufficient to establish willful infringement. Additionally, the court found that the district court abused its discretion in allowing Provisur to use the entire market value rule for calculating damages without sufficient evidence that the patented features drove customer demand for the entire slicing line. Consequently, the court reversed the denial of a new trial on damages.The case was remanded for further proceedings consistent with the Federal Circuit's decision. View "PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. " on Justia Law

The case involves the Wisconsin Alumni Research Foundation (WARF) and Apple Inc. WARF accused Apple of infringing U.S. Patent No. 5,781,752 (the '752 patent) with its A7 and A8 processors in a lawsuit filed in 2014 (WARF I). WARF later filed a second lawsuit (WARF II) accusing Apple's A9 and A10 processors of infringing the same patent. In WARF I, the jury found that Apple’s A7 and A8 processors literally infringed the '752 patent. However, Apple appealed, and the United States Court of Appeals for the Federal Circuit reversed the jury's verdict, finding that no reasonable jury could find literal infringement under the plain and ordinary meaning of the term "particular" as used in the patent claims.In the district court for WARF I, WARF had abandoned its doctrine-of-equivalents theory in exchange for Apple not presenting certain evidence at trial. After the Federal Circuit's reversal, WARF sought to reassert the doctrine-of-equivalents theory, but the district court denied this request, citing WARF's prior abandonment and the preclusive effect of the Federal Circuit's interpretation of "particular."In WARF II, the district court stayed proceedings pending the outcome of the appeal in WARF I. After the Federal Circuit's decision, WARF attempted to continue WARF II under the doctrine of equivalents. The district court found that WARF I precluded WARF from proceeding in WARF II, citing issue preclusion and the Kessler doctrine, which prevents repeated litigation of the same issue against the same party.The United States Court of Appeals for the Federal Circuit affirmed the district court's decisions in both WARF I and WARF II. The court held that WARF had waived its doctrine-of-equivalents theory in WARF I and that issue preclusion and the Kessler doctrine barred WARF II. The court concluded that the A7/A8 and A9/A10 processors were essentially the same for the purposes of preclusion and that literal infringement and the doctrine of equivalents are part of the same overall issue of infringement. View "WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. " on Justia Law

The plaintiff, Realtime Adaptive Streaming LLC, sued DISH and related Sling entities for alleged infringement of three patents related to digital data compression. The district court found the asserted claims of one patent ineligible as abstract under 35 U.S.C. § 101. Defendants filed motions to dismiss and for judgment on the pleadings, which the district court denied, opting to rehear invalidity arguments after claim construction. The district court later stayed the case pending inter partes review (IPR) proceedings, which resulted in some claims being found unpatentable. The stay was lifted after the IPR proceedings concluded, and the district court eventually granted summary judgment of invalidity for the remaining patent claims.The United States District Court for the District of Colorado awarded attorneys’ fees to the defendants, citing six "red flags" that should have warned Realtime that its case was flawed. These included prior court decisions finding similar claims ineligible, Board decisions invalidating related patent claims, non-final office actions rejecting claims in the reexamination of the patent at issue, a notice letter from DISH warning of potential fees, and expert opinions from DISH’s witness. The district court found that the totality of these circumstances rendered the case exceptional.The United States Court of Appeals for the Federal Circuit reviewed the district court’s decision and vacated the award of attorneys’ fees. The appellate court found that some of the red flags cited by the district court should not have been given weight, such as the Adaptive Streaming decision and the Board’s decisions on different patents. The court also noted that the district court failed to adequately explain how certain factors, like the notice letter and expert opinions, constituted red flags. The case was remanded for the district court to reconsider the attorneys’ fees award in light of the appellate court’s findings. View "REALTIME ADAPTIVE STREAMING LLC v. SLING TV, L.L.C. " on Justia Law

Platinum Optics Technology Inc. (PTOT) appealed a final written decision from the Patent Trial and Appeal Board (PTAB) regarding U.S. Patent No. 9,354,369, owned by Viavi Solutions Inc. The patent relates to optical filters with specific properties of hydrogenated silicon. PTOT challenged the patent's claims, arguing they were unpatentable due to obviousness based on prior art references. The PTAB ruled against PTOT, finding that the prior art did not render the claims unpatentable.Previously, Viavi had sued PTOT for patent infringement in two cases in the Northern District of California. The claims related to the '369 patent were dismissed with prejudice in both cases. PTOT then petitioned for inter partes review (IPR) of the '369 patent, leading to the PTAB's decision that PTOT failed to prove the claims were unpatentable.The United States Court of Appeals for the Federal Circuit reviewed the case. PTOT argued it had standing to appeal based on potential future infringement liability from continuing to supply bandpass filters and developing new models. However, the court found PTOT's arguments speculative and insufficient to establish an injury in fact. The court noted that the previous lawsuits were dismissed with prejudice, and PTOT did not provide concrete plans or specific details about new products that might infringe the '369 patent.The Federal Circuit dismissed the appeal, concluding that PTOT failed to demonstrate a substantial risk of future infringement or a likelihood that Viavi would assert a claim of infringement. Therefore, PTOT did not have standing to appeal the PTAB's decision. View "PLATINUM OPTICS TECHNOLOGY INC. v. VIAVI SOLUTIONS INC. " on Justia Law

Koss Corporation (Koss) owns several patents related to wireless earphones. Koss filed a patent infringement lawsuit against Bose Corporation (Bose) in the Western District of Texas, alleging infringement of three patents. Bose challenged the venue and also filed for inter partes review (IPR) of the patents with the Patent Trial and Appeal Board (PTAB). Concurrently, Bose sought a declaratory judgment of noninfringement in the District of Massachusetts. The Texas court dismissed Koss's case for improper venue, leading Koss to file counterclaims in Massachusetts. The Massachusetts court stayed the case pending the IPR outcomes.In parallel, Koss's infringement action against Plantronics, Inc. was transferred to the Northern District of California. Plantronics moved to dismiss the case, arguing that the patents were invalid under 35 U.S.C. § 101. The California court agreed, invalidating all claims of the patents. Koss amended its complaint but eventually stipulated to dismiss the case with prejudice, without appealing the invalidation order.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decisions on the IPRs. However, since the California court had already invalidated all claims of the patents and Koss did not appeal this decision, the Federal Circuit found the appeals moot. The court held that the invalidation order from the California court was final and precluded any further action on the patents, leading to the dismissal of the appeals. View "KOSS CORPORATION v. BOSE CORPORATION " on Justia Law

Backertop Licensing LLC and Lori LaPray appealed the U.S. District Court of Delaware’s orders requiring LaPray to appear in-person for testimony regarding potential fraud and imposing monetary sanctions for her failure to appear. The District Court identified potential misconduct in numerous related patent cases involving IP Edge and Mavexar, which allegedly created shell LLCs, assigned patents for little consideration, and directed litigation without disclosing their ongoing rights. The court was concerned that this arrangement concealed the real parties in interest and potentially perpetrated fraud on the court.The District Court ordered LaPray, the sole owner of Backertop, to produce documents and appear in-person to address these concerns. LaPray moved to set aside the order, citing travel difficulties and requesting to appear telephonically, which the court denied. The court rescheduled the hearing to accommodate her schedule but maintained the requirement for in-person testimony to assess her credibility. LaPray did not attend the rescheduled hearing, leading the court to hold her in civil contempt and impose a daily fine until she appeared.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the District Court’s orders were within its inherent authority and not an abuse of discretion. The court found that Federal Rule of Civil Procedure 45, which limits the geographic range of subpoenas, did not apply to the court’s sua sponte orders. The court affirmed the District Court’s orders, emphasizing the necessity of in-person testimony to investigate potential misconduct and assess credibility. The monetary sanctions for LaPray’s failure to appear were also upheld. View "BACKERTOP LICENSING LLC v. CANARY CONNECT, INC. " on Justia Law

This case involves Packet Intelligence LLC ("Packet") and NetScout Systems, Inc. and NetScout Systems Texas, LLC (collectively, "NetScout"). Packet had sued NetScout for patent infringement. The U.S. District Court for the Eastern District of Texas found that NetScout had willfully infringed Packet's patents and awarded Packet damages, enhanced damages for willful infringement, and an ongoing royalty. NetScout appealed this decision.In a previous appeal, the United States Court of Appeals for the Federal Circuit had reversed the district court's award of pre-suit damages and vacated the court's enhancement of that award. The court affirmed the district court's judgment in all other respects and remanded the case to the district court. On remand, the district court denied NetScout's motion to dismiss or stay the case and entered an amended final judgment. The amended judgment reduced the enhanced damages and reset the ongoing royalty rate.Meanwhile, the Patent Trial and Appeal Board ("Board") found all of the patent claims asserted by Packet in this case unpatentable as obvious. Packet appealed the Board's final written decisions. The Federal Circuit coordinated those appeals so they would be considered by the same panel deciding this appeal.The United States Court of Appeals for the Federal Circuit vacated the district court’s amended final judgment and remanded the case with instructions to dismiss the case as moot. The court held that Packet’s infringement judgment was not final before the Board’s unpatentability determinations were affirmed. Therefore, the court was compelled to order that Packet’s patent infringement claims be dismissed as moot. View "PACKET INTELLIGENCE LLC v. NETSCOUT SYSTEMS, INC. " on Justia Law