In Munchkin, Inc. v. Tomy International, Inc., 1-18-cv-06337 (NDIL May. 24, 2022) the Court considered the permissible extent of attorney participation in the preparation of an expert report. The Court did so in response to plaintiff’s motion to exclude the testimony of defendant’s technical expert for failing to prepare his own report. Specifically, plaintiff Munchkin sought to exclude the opinion of defendant TOMY’s technical expert, Jesse Darley, who offered opinions regarding non-infringement.
Continue Reading District Court Considers Acceptable Limits to Attorney Participation in Drafting of Expert Reports

In California Costume Collections, Inc v. Pandaloon, LLC, 2-21-cv-01323 (CDCA Apr. 7, 2022) (John W. Holcomb), the Central District of California recently considered whether a plaintiff plead an inequitable conduct claim with the required particularity concerning knowledge of materiality. In the case, Plaintiff California Costume Collections (“CCC”) filed its Complaint against Defendant Pandaloon, LLC (“Pandaloon”) for declaratory judgment of non-infringement, invalidity, and unenforceability of U.S. Design Patent No. D806,325 (the “D325 Patent”) for a “Pet Costume.” In response, Pandaloon filed a Motion to dismiss Count Three of the Complaint—in which CCC alleges that the D325 Patent is unenforceable due to inequitable conduct—on the ground that it fails to state a claim for relief under Rule 12(b)(6) of the Federal Rules of Civil Procedure.
Continue Reading District Court Dismiss Inequitable Conduct Claim Alleging Inferred Knowledge of Prior Art Based on Wide Spread Availability

Willful patent infringement can result in enhanced, and in some case treble, damages but not in every instance. Because the standard for finding willful infringement has traditionally been lower than that for enhancing damages, a finding of willful infringement does not guarantee an award of enhanced damages.  However, a 2019 Federal Circuit opinion caused confusion, suggesting the standards were essentially the same.  SRI Int’l, Inc.  v. Cisco Sys., Inc. (“SRI II”) 930 F.3d 1295 (Fed. Cir. 2019).  In SRI Int’l, Inc.  v. Cisco Sys., Inc. (“SRI III”) (Fed. Cir. 2021), the Federal Circuit acknowledged the confusion and clarified these standards.
Continue Reading Federal Circuit Clarifies Standards for Willful Patent Infringement and Enhanced Damages

There are many requirements for obtaining a patent.  One of those is the written description requirement.  Pursuant to 35 U.S.C. §112(a), the patent must describe the invention in writing.  If the written description requirement is not met, the patent won’t be granted.  If the patent has already been issued, it can be invalidated for failure to satisfy the written description requirement.  Recently, in Juno Therapeutics, Inc. v. Kite Pharma, Inc., 2021 U.S. App. LexIs 25706 (Fed. Cir. 2021), a damage award of $1.2 billion for patent infringement was reversed for just this reason.
Continue Reading Written Description Remains Critical to Patents

How many of the lawyers out there liked hypotheticals in law school? I did not, but this case prompted me to write one!  So, for those of you who enjoy hypotheticals, here it is:

Company A, a North Carolina LLC, owns four patents.  A new company is formed, Company B, a Texas LLC.  Company B has the same corporate address in North Carolina and the same five shareholders as Company A.  Company B conducts no business activities.  About 20 days after Company B is formed, Company A assigns its four patents to Company B, with an agreement that gives Company B the rights to sue for patent infringement only in the district court for the Western District of Texas.  (And assume that the Western District of Texas is a very fast and favorable court for plaintiffs in patent infringement cases.)  About ten days after the assignment, Company B files two lawsuits for patent infringement in the Western District of Texas, alleging that the defendants sell mobile devices that use third party applications that infringe the patents.  The defendants move to transfer the cases to the district court in the Northern District of California on grounds of convenience.  They allege that the Western District of Texas is not the proper venue because most of the third-party applications were researched and developed in the Northern District of California, while none were developed in the Western District of Texas, and several witnesses and inventors were located in the Northern District of California, while none were in the Western District of Texas.  Here’s the question: Should the district court for the Western District of Texas grant the motions to transfer?
Continue Reading You Can’t Manipulate Venue!