Exergen Corp. v. Brooklands, Inc. (12-cv-12243).

Judge Woodlock ruled in Exergen’s favor on the issue of inequitable conduct in connection with its 7,787,938 patent, which relates to measuring a person’s internal temperature externally via the temporal artery. Judge Woodlock had previously found the asserted claims invalid for claiming unpatentable subject matter; following this, both parties initially pressed the court to address inequitable conduct on summary judgment, although Exergen subsequently sought to have the inequitable conduct claims dismissed as moot.  Judge Woodlock examined Federal Circuit caselaw on the issue of mootness of inequitable conduct counterclaims on patents that had already been deemed invalid, and determined that such claims are not moot where attorney’s fees are being sought based on the alleged inequitable conduct.  Looking to the allegations of inequitable conduct, Judge Woodlock determined that Brooklands had failed to show by clear and convincing evidence that any of the alleged omissions or misrepresentations demonstrated an intent to deceive the PTO.  He determined that any inequitable conduct relating to references that were not disclosed during prosecution of a parent application was cured by being affirmatively disclosed during the prosecution of the ‘938 patent.  Also, with respect to allegations that the prosecuting attorney had misrepresented positions taken by Exergen as to the claim scope of other Exergen patents in a different litigation, Judge Woodlock found this to be mere attorney argument that did not raise to an intent to deceive because all of the litigation documents were put before the examiner, who is free to reach his own conclusions as to their import.

Webinar – Trade Secrets on the Rise

Protecting Intellectual Property in the Post-AIA World

Over the past few years, trade secrets have gained stature as a means to protect intellectual property in America. With the continuing pressure on patent protection, the ever-increasing ease of copying and misappropriating information, and the creation of new trade secret laws in the United States, the importance of understanding and successfully implementing trade secret protection has never been more important. On Thursday, February 15 at 11:00 EST, I will be presenting a webinar discussing recent developments in trade secret law and the steps that should be taken to ensure your secrets remain protected. Topics that will be discussed include:

• The overlap between trade secret protection and patent protection

• Best practices for protecting information from misappropriation

• Successfully licensing trade secret information

• Trends in the application of the Defend Trade Secrets Act that created a federal cause of action for trade secret misappropriation

I would love to have you join – please click here to register.

Hybrid Audio, LLC v. Foster Electric (USA), Inc. et al. (18-cv-10245).

Hybrid Audio accuses home recording equipment company Foster of infringing RE40,281, a reissue of U.S. 6,252,909.  The ‘281 Patent claims priority to an application filed on September 12, 1992; Hybrid claims to have sent letters to Foster in January 2012, providing notice of its belief that Foster infringed the patent.  Shortly thereafter, reexamination of the patent was sought and granted through a different lawsuit.  All of the claims were confirmed via a reexamination certificate that issued on December 1, 2015.  The patent expired on September 21, 2012, while reexamination was pending; Hybrid contends, however, that it was constrained from seeking royalties or filing lawsuits while the reexamination was pending; additionally, Hybrid asserts that the entire period from the notice letter to the expiration of the patent falls within the six-year limitation on patent damages set forth in 35 U.S.C. § 286.  Hybrid seeks RAND royalties for Foster’s use of MP3 technology, at least a portion of which is asserted to be covered by the ‘281 patent, in its Fostex FR-2 and UR-2 products.  Hybrid further seeks a declaration that the case is exceptional and an award of attorney’s fees.

Egenera, Inc. v. Cisco Systems, Inc. (16-cv-11613).

Judge Stearns construed a number of claim terms in this dispute in which Egenera accused Cisco of infringing U.S. Patent 7,231,430 (Egenera had previously voluntarily dismissed claims relating to a second patent, to avoid the case being stayed pending inter partes review of the second patent).  The technology at issue relates to the creation of a virtual processing area network that simulates a network of computer processors.  Judge Steans rejected Egenera’s proposed construction of “processor” as the “processing node” described in the specification, because the specification does not clearly set forth a definition of the term that is different from its plain and ordinary meaning.  He also rejected Egenera’s proposed construction of “logic” as “software, firmware, circuitry, or some combination thereof.”  Instead, he found “logic” as used in the claims to refer to the abstract concept of computer operations generally that perform the function recited after the term, and thus to be in means-plus-function format.  Having so determined, however, he disagreed with Cisco that the terms were indefinite, finding sufficient structure in the specification for the various “logic” functions recited in the claims.  Finally, he found in Egenera’s favor on “internal communication network,” determining that even though the network is described as emulating Ethernet functionality, the claimed network is not limited to a non-Ethernet physical network.

Teva Pharmaceuticals International GmbH et al. v. Eli Lilly and Company (18-cv-10242).

Teva sued Eli Lilly for infringement of U.S. Patents 9,884,907 and 9,884,908, which cover fremanezumab, a biologic anti-migrane product. Teva asserts that Eli Lilly, with full knowledge of the asserted patents, filed a biologics license application with the FDA for a competing (and allegedly infringing) biologic product, galcanezumab.  While Eli Lilly hasnot yet received approval or begun selling its product, Teva alleges that Eli Lilly has stated its belief that it will imminently obtain approval and begin selling, and is presently beginning to market the product and hire a sales staff to support sales of the product.  Teva asserts knowledge of the patents through Eli Lilly’s challenges to Teva’s related European patent.  Teva seeks a declaration that Eli Lilly’s galcanezumab product infringes the patents, as well as injunctive relief.

Alexander Stross v. Ivymedia Corp. (18-cv-10240).

Texas photographer Alexander Stross sued Ivymedia, alleging that Iveymedia used one of his photographs, “Plenty of Trees,” in its website and advertising for online travel management. He also alleges that Ivymedia knowingly stripped the digital copyright management information from the photograph to conceal its infringement.  Stross seeks actual or statutory damages, to be elected, as well as attorney’s fees and injunctive relief.

Schawbel Technologies LLC v. The Heat Factory USA, Inc. (18-cv-10227).

Schawbel filed suit against The Heat Factory, accusing The Heat Factory of violating an Asset Purchase Agreement and patent license agreement. According to the complaint, the Heat Factory had agreed to buy and resell Schawbel’s heated insole inventory, to be paid in monthly installments.  When The Heat Factory missed some payments, Schawbel exercised its right to terminate the agreements.  Following termination, Schawbel says The Heat Factory continued selling the inventory.  Schawbel asserts breach of contract and willful infringement of eleven utility patents and eight design patents, as well as declaratory judgment that its termination of the APA and license agreement were legitimate.