Northwest Patent Litigation Blog

Microsoft v. Motorola FRAND Litigation – Links

By Dana Herberholz on Posted in FRAND, Injunctive Relief, Northwest Companies

Big news last week in Microsoft v. Motorola where Judge Robart granted Microsoft’s motion for a preliminary injunction and a temporary restraining order preventing Motorola “from enforcing any injunctive relief it may receive in the German court system.”  The order has received considerable attention, and I will not get into the details in this post.  That being said, this is the Northwest Patent Litigation Blog, and I would be remiss if I did not at least mention the order and provide some links.

At the heart of the dispute in the case before Judge Robart is Microsoft’s claim that Motorola refused to license patents essential to the H.264 video codec standard on ”fair, reasonable, and non-discriminatory” (FRAND) terms.  Microsoft filed its complaint in November 2010 and, eight months later, Motorola sued Microsoft for patent infringement in Germany.  Oh, and the two are also taking each other on in the ITC.

Judge Robart’s order raises very interesting issues concerning the tools available to the Microsofts and Motorolas of the world for enforcing their patent portfolios globally.  Below are links to a handful of posts that I found informative and are sure to get you up to speed:

1. Florian Mueller knows Germany.  He does a fantastic job of describing the nature of injunctive relief in German courts and the significance of Judge Robart’s order

2. Florian also has a follow-up post that summarizes the heart of the dispute (a mere $4 billion) between Microsoft and Motorola

3. Jorge Contreras provides a very informative summary of U.S. cases where FRAND issues are currently being litigated

4. Here’s the  local write-up of Judge Robart’s order in the Seattle Times

5. Here’s an article that explains why Germany is becoming a popular forum for patent litigants, leading some to call it Europe’s Eastern District of Texas

Judge Lasnik Denies Motion for Two-Week Extension of Time to Serve Infringement Contentions

By Dana Herberholz on Posted in Infringement Contentions, Local Rules

Enroute Systems Corp., v. ArrivalStar S.A., No. C11-0451RSL, Slip Op., (W.D. Wash. March 28, 2012) (Lasnik, J.) 

In what he admitted was a “harsh result,” Judge Lasnik denied defendant ArrivalStar’s request for a two-week extension of time to serve its Rule 120 infringement contentions on plaintiff Enroute Systems.  The takeaway from this order is simple:  Do not ignore deadlines in a case management order, and be sure to file a timely request for an extension if additional time is needed.  

In this case, ArrivalStar argued that it needed additional time to serve its infringement contentions for three reasons: 

  1. The case management order (entered on December 21, 2011) gave ArrivalStar only 14 days (to January 4, 2012), including holidays, to prepare its contentions;
  2. Enroute misled ArrivalStar into believing all deadlines were on hold pending settlement discussions; and
  3. Denying the requested extension would prejudice ArrivalStar. 

The Court rejected ArrivalStar’s first argument, concluding that it should have filed a timely motion for an extension of time if the intervening holidays genuinely impacted its ability to comply with the January 4 deadline.  Instead, ArrivalStar waited six weeks and filed its motion requesting additional time on February 16, 2012.     

Judge Lasnik noted that the two-week period to serve infringement contentions should not have come as a surprise to ArrivalStar.  He explained this deadline is standard in the Western District of Washington and is designed to promote efficiency:  “Courts in this district expect that a party asserting a claim of patent infringement has, at the time of filing, information sufficient to support the claim and is therefore prepared to state its infringement contentions early in the litigation.”   

The Court also rejected ArrivalStar’s second argument.  ArrivalStar submitted a settlement demand one week after the Court entered its case management order.  Enroute’s counsel responded to the demand on January 3, 2012, representing that he was hoping to meet with his client and that he would get back to ArrivalStar.  Although its infringement contentions were due the following day, ArrrivalStar made no attempt to negotiate a stipulation for additional time to serve those contentions.  Based on these facts, the Court found Enroute did nothing to suggest that a settlement was likely or that deadlines would be postponed.   

Finally, Judge Lasnik concluded that ArrivalStar failed to establish good cause for the requested extension.  Federal Rule of Civil Procedure 16(b)(4) and the language of the Court’s case management order provide that good cause is required to modify court-imposed deadlines,  including ArrivalStar’s deadline to serve infringement contentions.  After explaining that “[p]rejudice to the moving party, standing alone, does not supply the necessary good cause,” the Court concluded that ArrivalStar did not act with reasonable diligence in seeking the extension, and, therefore, did not establish good cause for the extension.  The Court characterized its order as “harsh” but necessary to “serve the larger interests of judicial efficiency and economy, and not just the interests of individual litigants.”

Patent Cases Filed and Claim Construction Orders Increased in 2011

By Dana Herberholz on Posted in Claim Construction, Complaint, Northwest Companies

It’s that time of year when bloggers and academics look back and discuss the number of patent cases filed the year before.  These discussions usually focus on the most popular districts for patent infringement litigation, including the Eastern District of Texas, the District of Delaware, the Northern District of Illinois, the Northern District of California, and the Central District of California.

Unfortunately, the four judicial districts in the Northwest are usually left out of the discussion … until now.  The chart below identifies the number of patent complaints (infringement or declaratory judgment) filed in the Northwest in 2011 compared with the same figures for 2010:

While the number of patent complaints filed in the Western District of Washington and Eastern District of Washington remained stable in 2011, the District of Oregon experienced a sharp increase in the number of cases filed.  Oregon’s increased popularity is due, in large part, to Scalar Corporation, who filed eight patent infringement complaints in 2011 (and none in 2010).  Idaho’s 2011 filings are down from 2010, however, three cases have already been filed this year, up one from last year’s total.

Based on my count, Microsoft was a party in eight of the cases filed in the Western District of Washington in 2011 and in five cases in that district in 2010.  Other Northwest companies that made the list in the Western District of Washington include HTC America (party in one case in 2011 and two cases in 2010) and Nintendo of America (one case in 2011 and one case in 2010).

I also thought it would be interesting to take a look at the number of claim construction orders entered in these districts in 2011.  Here’s the data alongside the same data for 2010:

Ten judges accounted for the 18 claim construction orders entered in the Northwest in 2011.  Here’s a breakdown of the number of claim construction orders by judge in 2011:

  1. Judge Lasnik (WDWA)  (4)
  2. Judge Pechman (WDWA) (3)
  3. Judge Martinez (WDWA) (2)
  4. Judge Brown (DOR) (2)
  5. Judge Settle (WDWA) (2)
  6. Judge Jones (WDWA) (1)
  7. Judge Mosman (DOR) (1)
  8. Judge Papak (DOR) (1)
  9. Judge Hernandez (DOR) (1)
  10.  Judge Hubel (DOR) (1)

Sources:  Justia, Pacer, Docket Navigator

 

Federal Circuit: No Intervening Rights Absent New or Textually-Altered Claims

By Dana Herberholz on Posted in Claim Construction, Federal Circuit, Northwest Companies, Reexamination

Marine Polymer Tech. v. HemCon, Inc., Slip. Op., 2010-1548 (Fed. Cir. Mar. 15, 2012) (en banc) 

Last Thursday, the Federal Circuit brought good and bad news to a number of Northwest companies through its en banc opinion in Marine Polymer v. HemCon.  The divided Court affirmed a $34.2 million patent-infringement judgment against Portland-based HemCon Medical Technologies, putting HemCon squarely on the bad-news side of things.  The opinion is good news, however, for Bellevue, Washington’s Intellectual Ventures (represented by the Portland-based firm of Stoel Rives), who filed an amicus brief supporting Marine Polymer’s position on the issue of intervening rights.      

While the implications of the opinion are significant to those directly involved, what does the opinion mean for the rest of us (if anything)?    

Background 

The facts and procedural history leading up to last week’s opinion are detailed in one of my earlier posts.  In short, Marine Polymer did well for itself before the district court and not so well on HemCon’s appeal to the Federal Circuit, where a panel reversed the district court’s judgment of infringement against HemCon.  The panel held that HemCon acquired intervening rights during reexamination of the patent-in-suit because Marine Polymer changed the scope of the asserted independent claims by deleting dependent claims.  Notably, Marine Polymer did not change the language of any of the independent claims it was asserting in the litigation against HemCon.  

Marine Polymer petitioned for rehearing en banc.  On January 20, 2012, the Federal Circuit granted the petition and vacated the panel decision—presumably to clear up whether intervening rights can be acquired to an original claim in a post-grant review proceeding where the text of the claim is not altered.  In its petition for rehearing en banc, Marine Polymer framed the issue as follows:   

Whether arguments made regarding a patent claim during reexamination of a patent give rise to intervening rights under 35 U.S.C., §§ 307(b) and 252, where the patent claim in question is neither “amended” nor “new” in the reexamination.    

The Opinion  

Although the Court concluded that HemCon did not acquire intervening rights, it did so only by a 6-4 majority and only as an “alternative ground” to affirming the district court on claim construction: 

Although we reject the premise of HemCon’s argument regarding intervening rights—that the district court’s claim construction prior to reexamination of the ‘245 patent was erroneous—we conclude, as an alternative ground for decision, that even if the district court’s claim construction was erroneous, HemCon’s intervening rights argument must fail because it disregards the plain and unambiguous language of § 307(b).   

Notably, the Court concluded that a claim is not “‘amended’ for purposes of § 307(b) without changing the claim language itself.”   

The Court affirmed the district court’s claim construction in a split 5-5 opinion.  Judges Moore and O’Malley did not participate, and Judge Lourie wrote the majority opinion.  Part I of the majority opinion addresses claim construction, infringement, and damages, and Part II addresses intervening rights.  Judges Rader, Newman, Bryson, and Prost joined in both parts, and Judge Linn joined only in Part II.  Judge Dyk wrote the dissent and was joined by Judges Gajarsa, Reyna, Wallach, and in part by Judge Linn.   

Takeaways 

The outcome here is tough for HemCon.  I thought HemCon’s argument that Marine Polymer changed the scope of the asserted claims when it deleted dependent claims during reexamination was persuasive, but not enough to overcome the clear language of § 307(b), which unambiguously applies to “amended or new” claims.  Patent attorneys know what it means to amend a claim, and HemCon had a difficult argument that it was entitled to intervening rights to claims that were neither new nor textually altered.   

One interesting issue is how courts will apply Marine Polymer.  Does the portion of the opinion concerning intervening rights have any precedential value, or is it merely dictum as Judge Dyk argued in the dissent?  On the one hand, Part II was decided by a 6-4 majority, suggesting that district courts will treat it as binding precedent.  On the other hand, one could argue that this portion of the opinion is not binding because (1) it was only an “alternative ground” for affirming the district court’s judgment, and (2) the issue of intervening rights was never before the district court or part of its judgment.   

Assuming courts will apply the opinion as binding precedent, Marine Polymer is a relief for patent owners like Intellectual Ventures concerned about expanding the scope of the intervening rights defense to include arguments made during reexamination.    

Facts Showing Knowledge and Specific Intent are Required to State Claim for Induced Infringement

By Dana Herberholz on Posted in Motions to Dismiss, Pleadings

Eagle Harbor Holdings LLC v. Ford Motor Co., No. C11-5503-BHS, Slip Op., (W.D. Wash. Feb. 7, 2012) (Settle, J.)

Complaints for patent infringement are commonly attacked at the pleading stage.  Motions to dismiss for failure to state a claim have been on the rise since the Supreme Court’s 2009 opinion in Ashcroft v. Iqbal, which heightened the bar for satisfying the pleading requirements of Fed. R. Civ. P. 8.  Now, a complaint for patent infringement must include facts to state a plausible (as opposed to probable) claim for relief – particularly when the complaint includes allegations of induced infringement or contributory infringement.  A claim that merely recites the elements of a cause of action for induced infringement supported by conclusory statements is unlikely to survive a motion to dismiss or a motion for judgment on the pleadings.   

In Eagle Harbor Holdings, Judge Settle granted Ford Motor Company’s motion for judgment on the pleadings and dismissed the patent owners’ claims for induced infringement.  In the original complaint, Eagle Harbor Holdings LLC and Mediustech LLC (“Plaintiffs”) accused Ford of infringing 11 patents.  Five months after filing the complaint, Plaintiffs filed their First Amended Complaint, which included allegations that Ford actively induced “others” to infringe 10 of the patents-in-suit.  Paragraph 17 of the First Amended Complaint is representative of these allegations:      

     17. On information and belief, Ford has infringed and continues to infringe one or more claims of the ’137 patent.  Ford is liable for infringing the ’137 patent under U.S.C. 271 by making, selling, offering for sale, and/or actively inducing others to use in an infringing manner, at least Ford, Lincoln, and/or Mercury branded vehicles equipped with [the claimed invention]. 

In its motion for judgment on the pleadings, Ford argued that the First Amended Complaint should be dismissed because it did not: (1) identify a third party that Ford allegedly induced to infringe the patents; (2) include facts to demonstrate that Ford had knowingly induced infringement; and, (3) allege that Ford had specific intent to induce third parties to infringe the patents.  In response, Plaintiffs alleged their inducement claims were properly plead and Ford’s motion was premature since Plaintiffs would later be required to provide detailed infringement contentions in accordance with Local Patent Rule 120.   

Judge Settle agreed with Ford, finding Plaintiffs’ claims for induced infringement consisted of “mere labels and conclusions” and failed to include the required facts to support a claim for inducement—namely that Ford was aware of the patents and that it specifically intended to induce infringement.  The Court rejected Plaintiffs’ argument, noting “the Local Rules are not a substitute for inadequate pleadings.”  Plaintiffs were granted leave to file an amended complaint that must include, among other things, the identities of the third parties that Ford allegedly induced to infringe.   

Judge Settle’s order is a reminder that claims generically alleging direct infringement “and/or” infringement by inducement “and/or” contributory infringement are no longer sufficient.  When pleading induced infringement, patent owners should be sure to identify who was induced to infringe and the conduct on the part of the inducing party evidencing an affirmative intent to induce the infringement.

Successful Equitable Estoppel Defense Should Not Shock Owner Of Electric Dog Collar Patents

By Dana Herberholz on Posted in Equitable Estoppel, Summary Judgment

Radio Systems Corp. v. Tom Lalor, No. C10-828-RSL, Slip Op., (WD Wash. Jan. 26, 2012) (Lasnik, J.)

Patent opinions often involve abstract technology.  Not this one.  The technology at issue in this opinion involves good old-fashioned dog “shock collars” (sensitively referred to as “electronic animal control collars”).  I have seen these devices with my own two eyes, and they terrify me.  I also see the affirmative defenses of laches and estoppel asserted frequently in patent infringement matters, but rarely do I see cases turning on these equitable defenses.  This is one of those cases.

In Radio Systems, Judge Lasnik held the defendants (inventor Tom Lalor and his company Bumper Boy) were equitably estopped from pursuing their infringement claims against Radio Systems Corp. and Innotek, Inc. where the defendants’ cease-and-desist letters to Innotek were separated by more than four-and-a-half years of silence.  The opinion is an important reminder for patent owners to maintain regular contact with accused infringers to avoid abandoning their infringement claims.

Factual Background:

Innotek is a designer and manufacturer of collars used to discourage certain behaviors in animals by delivering an electric shock.  In February 2005, defendants served a cease-and-desist letter notifying Innotek that its UltraSmart animal collar allegedly infringed U.S. Patent No. 6,830,014 (“Animal Collar”).

Innotek's UltraSmart Collar

Innotek quickly responded in a detailed letter, asserting that the `014 patent was invalid.  Innotek concluded its letter with a statement that it hoped the parties could “put [the] matter to rest,” but it was “willing to take a more aggressive approach” if necessary.  Defendants never responded.

Nearly five years later, in November 2009, defendants served another cease-and-desist letter on Innotek and Radio Systems, who acquired an interest in Innotek in 2006 and incorporated the design of Innotek’s collars into its own lines of animal control collars.  In that letter, defendants claimed that Radio System’s UltraSmart and SD-1825 collar designs infringed the `014 patent and a related patent, U.S. Patent No. 7,267,082.

Radio Systems and Innotek filed a complaint seeking a declaratory judgment of invalidity, unenforceability, and/or non-infringement.  Defendants answered by accusing nine of defendants’ products (falling within four different designs) of infringement.  Plaintiffs moved for summary judgment of non-infringement and invalidity of the patents-in-suit and for unenforceability of the `014 Patent based on equitable estoppel and laches.

The Opinion

Judge Lasnik granted plaintiffs’ motion for summary judgment of non-infringement on all designs with the exception of the UltraSmart design.  In the most interesting portion of the opinion, the Court held that defendants were equitably estopped from maintaining their infringement claim on the UltraSmart design.

Judge Lasnik began his equitable estoppel analysis by identifying the three “important elements” of the defense as set forth in A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc):

  1. The patentee must communicate something to the accused infringer in a misleading way by statements or conduct;
  2. The accused infringer must show that it substantially relied on the patentee’s misleading conduct; and,
  3. The accused infringer must prove that it would be materially prejudiced if the patentee is permitted to proceed with its infringement case.

As to the first element, the Court concluded the defendants’ four-and-a-half year delay between demand letters was “more than enough to mislead Innotek into thinking that Lalor was no longer pursuing his claim.”   Although defendants argued that Lalor never intended to abandon his claim against Innotek and was simply busy from 2005 to 2009 pursuing the `082 patent, the Court was not persuaded – particularly since Lalor did not communicate his alleged intent to Innotek during that time.

Judge Lasnik also found that Innotek and Radio Systems relied on defendants’ inaction in satisfaction of the second element of their equitable estoppel defense.  As evidence of this reliance, the Court pointed to Radio Systems’ acquisition of Innotek and the ongoing expansion of the UltraSmart product line during the multi-year period of silence.

Furthermore, the Court concluded that plaintiffs would be materially prejudiced if defendants were allowed to proceed with their infringement case.  Both Innotek and Radio Systems continued to invest in their expanding product lines (including the UltraSmart line), which would amount to material prejudice if defendants were allowed to maintain their infringement claim.   Judge Lasnik was also persuaded by the argument that plaintiffs suffered prejudice because they were “robbed … of the opportunity to structure their business plans as they might have had they known of the threat of litigation.”

Finally, drawing on case law outside of the Ninth Circuit, the Court concluded that both Radio Systems and Innotek (as opposed to only Innotek) could invoke the defense of equitable estoppel.  The Court noted that defendants ran the risk that Innotek would expand the accused product line during the long period of silence.  It was also “perfectly foreseeable” that Innotek would sell or transfer its design in the accused product to a third party and that Innotek and the acquiring company would “rely on the absence of any ongoing dispute during the course of their dealings.”

 

Intervening Rights for Original, Unamended Claims? Federal Circuit to Reconsider Marine Polymer En Banc.

By Dana Herberholz on Posted in Claim Construction, Federal Circuit, Northwest Companies, Reexamination

On January 20, 2012, the Federal Circuit entered an order in Marine Polymer v. HemCon vacating its September 26 opinion and granting the plaintiff-appellant’s petition for rehearing en banc.  This is undoubtedly welcome news for Intellectual Ventures and other patent holding companies concerned about extending the scope of the intervening rights defense.

I summarized the September 26 panel opinion and Intellectual Ventures’ amicus brief in my December 6 post.  In short, the panel held that the patentee (Marine Polymer) changed the scope of the asserted claims when it cancelled dependent claims during reexamination.  Judge Dyk, joined by Judge Gajarsa, concluded that the accused infringer (HemCon Medical Technologies) was entitled to absolute intervening rights to the asserted claims, even though the asserted claims were not amended during reexamination.  Judge Lourie filed a dissent.

In its amicus brief, Intellectual Ventures argued that the panel opinion was contrary to the text of 35 U.S.C. § 307(b), which provides that “amended or new claims” submitted during reexamination are subject to intervening rights.  According to Intellectual Ventures, a patentee does not create intervening rights in claims that are not “textually altered” during reexamination.  Intellectual Ventures also included several policy-based arguments in its amicus brief.     

Dennis Crouch has some interesting insights and is of the opinion that the Court will reverse the decision by a “strong majority.”  I agree, and I expect the Court’s forthcoming opinion will look much like Judge Lourie’s dissent, emphasizing the plain language of 35 U.S.C. § 307(b).

Accused Infringer’s “General Financial Information” Not Discoverable

By Dana Herberholz on Posted in Discovery, Northwest Companies

Columbia Machine, Inc. v. Besser Co., No. 3:10-cv-05667-RBL, Slip Op., (WD Wash. Dec. 23, 2011) (Creatura, J.)

It’s not uncommon for patent owners to serve extremely broad discovery requests on accused infringers, including requests concerning a client’s financial status.  I frequently see document requests for “all state and federal tax returns” and “all financial reports,” among others.  While public companies may have no objection to turning over their financial information in litigation, private companies have cause for concern – particularly where their general financial information is sensitive and not relevant to the litigation. 

Judge Creatura’s recent opinion in Columbia Machine should provide accused infringers some degree of comfort when faced with overly broad and intrusive requests for financial information.  In Columbia Machine, the Court held that the patent owner (Columbia Machine) was not entitled to the accused infringer’s “general financial information” where the accused infringer (Besser) was a private company.

The discoverability of Besser’s financial information was before the Court on Besser’s motion for protective order.  Columbia Machine served a request for production directed to Besser’s general financial information, including its annual reports.  In response, Besser produced redacted versions of its annual reports and moved for a protective order precluding additional discovery about its financial condition on the grounds that such information was confidential and irrelevant.  Columbia opposed the motion, arguing that Besser’s general financial information was relevant because Besser “claimed it was solvent and had insignificant debt.”

Judge Creatura granted Besser’s motion for protective order, concluding Besser’s representation about its financial status was insufficient to demonstrate that its general financial information was relevant to any of the claims or defenses in the litigation.  The Court also reviewed the operative complaint and held that Besser’s general financial information would not lead to the discovery of admissible evidence unless and until a judgment was rendered against Besser.

Note:  In its motion for protective order, Besser also sought to preclude discovery concerning: (1) the identities of the six customers that purchased the accused product, and (2) technical information regarding the accused product in its entirety, as opposed to the portions of the accused product at issue.  The Court denied Besser’s motion for protective order on these two issues.

Moving for Summary Judgment Prior to Claim Construction? Think Twice

By Dana Herberholz on Posted in Claim Construction, Northwest Companies, Summary Judgment

PacTool Int’l LTD v. Kett Tool Co., No. 3:06-cv-5367BHS, Slip Op. (WD Wash. Dec. 20, 2011) (Settle, J.)

Whether you represent a patent owner or an accused infringer, the issue of if (and when) your client should move for summary judgment is one of the most important strategic decisions to be made in your case.  Consideration of early summary judgment motions came up in PacTool Int’l v. Kett Tool Co. where Judge Settle granted Kett’s (the accused infringer) motion to vacate an earlier order granting PacTool’s motion summary judgment of literal infringement. 

Judge Settle’s latest order is interesting for few reasons.  First, it addresses the tricky issue of filing an early summary judgment motion.  Second, it concerns a motion to vacate a prior order – a request for relief that I see far less often that a motion for reconsideration.  Third, I feel compelled to write about this order in follow up to my earlier post concerning Judge Settle’s October 27, 2011 claim construction order in this case.  Although I addressed Kett’s claim construction arguments in my previous post (including its unsuccessful argument that the asserted claims were indefinite based on their inclusion of “words of degree”), I did not mention PacTool’s two motions for summary judgment of literal infringement, which deserve equal treatment and coverage.

PacTool’s Motions for Summary Judgment

PacTool filed its first motion for partial summary judgment of literal infringement on March 25, 2010 (the “First Motion”).  In its First Motion, PacTool argued that Kett literally infringed claim 16 of the ‘303 Patent and claims 10 and 19 of the ‘998 Patent.  The Court ordered the parties to submit briefing on the issue of whether it could consider PacTool’s motion prior to claim construction, and it ultimately did.  On January 31, 2011, Judge Settle entered an order granting, in part, the First Motion, finding that Kett literally infringed claims 10 and 19 of the ‘998 Patent. The Court granted the First Motion on the ground that Kett “failed to contest a significant portion of the claim limitations in the patents in suit.”

On September 13, 2011, PacTool filed another motion for summary judgment of literal infringement (the “Second Motion”), arguing that additional products infringed claim 16 of the ‘303 Patent and claims 10 and 19 of the ‘998 Patent.  On October 28 (one day after its claim construction order) the Court denied PacTool’s Second Motion, finding that PacTool failed to meet is burden on the words of degree limitations (a few of which I covered in my earlier post).

Kett’s Motion to Vacate

After the Court denied the Second Motion, Kett immediately moved to vacate the Court’s order granting PacTool’s First Motion for summary judgment of literal infringement, arguing that it was inconsistent with the Court’s order denying PacTool’s Second Motion.  In its responsive brief, PacTool argued that Kett failed to present arguments concerning the words of degree limitations in response to PacTool’s First Motion and, therefore, waived those arguments.  The issue on Kett’s motion to vacate, as framed by the Court, was “whether to hold a party to a previous order based on the party’s failure to present arguments or whether to resolve the inconsistency and decide the issue based on the merits of the parties’ claim and evidence in support thereof.”

The Court agreed with Kett and vacated its order granting the First Motion.  The Court noted that it awarded summary judgment prior to the close of fact discovery, prior to claim construction, and without the benefit of a complete record, including “objective standards that determine the scope of the patents in suit.”  The Court summarized its rationale for vacating its order granting PacTool’s First Motion as follows:  “It cannot be contested that decisions supported by evidence are preferable to decisions supported by a party’s failure to address a certain issue, especially if the party’s failure occurs on an early dispositive motion and before patent claims have been construed.”

Conclusion

In general, prevailing on a motion for summary judgment is tough and, as this case demonstrates, is even more difficult when the motion is filed before claim construction and before the close of fact discovery.  To be sure, summary judgment is a very useful tool for early disposition of non-meritorious cases and for fleshing out the opposing party’s position.  Nevertheless, and as Judge Settle’s most recent order suggests, parties may want to consider filing an early summary judgment motion only in clear cases where claim construction is unnecessary or where the motion is dispositive regardless of how the court construes the claims.

Eight Obscure Christmas Patents

By Dana Herberholz on Posted in Interesting Patents

I have two confessions.  First, this post has nothing to do with patent litigation in the Northwest.  Second (and I never thought I would say this as an adult), I am finding myself really looking forward to Christmas this year.  My two-year-old son can’t wait to open all of the worthless stuff we bought for him, and I can’t wait to watch.

Although I’m excited, I’m no Clark W. Griswold, and I certainly am not excited enough to start filing Christmas-related patent applications.  But that’s okay.  I searched the USPTO’s database, and I discovered there are plenty of inventors who have advanced the arts and sciences and made the world a better place with patents like “Santa in Bath” and “Santa Foot.”  Here’s a look at those patents and some of my other favorites.  Enjoy, and Merry Christmas!

Santa in Bath – D372207

I’m just going to leave this one alone.  Take a look at Figures 2 and 3 of this design patent:

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