Judge Sorokin denied Covidien’s emergency motion to continue the bench trial date, currently scheduled to begin on September 23, concerning Ethicon’s seeking of a declaration that its Enseal® X1 surgical tool does not infringe several Covidien patents. Covidien sought the continuance because its technical expert had undergone an unexpected heart surgery; Ethicon opposed on the grounds that he was but one of a dozen experts, that the ailing expert was to testify only as to a single issue, and that all of the witnesses had made travel and work arrangements to be in Boston for the trial. Judge Sorokin apparently agreed with Ethicon; rather than move the trial entirely, he ordered that it go forward with Covidien permitted to submit the expert’s report and a proffer of his expected testimony. Once the expert has recovered, Judge Sorokin will take his testimony and consider whether any further testimony from any party is thereby necessitated.
Globys sued Sorriso, asserting that Sorriso’s Smart Suite infringes a pair of patents relating to computer-implemented digital invoicing. A review of the exemplary claims in the complaint suggests that the patents may have an Alice eligibility problem; claim 1 of U.S. 7,996,310, the first of the asserted patents, essentially recites a “computer-implemented method” comprising receiving billing information that includes a plurality of individual transactions; receiving selection of parameters for customizing an analysis of the billing information; analyzing the billing information using the parameters provided; and producing a report. The exemplary ”computing system” claim 1 of the second patent, a continuation of the ‘310 patent, includes no meaningful technical limitations, reciting an “analysis engine” and “user interface” as the sole components and describing the system in functional terms. The patent was filed in 2000 and issued in 2011, several years before the Supreme Court’s June 19, 2014 Alice decision on patent eligibility. While the second patent, U.S. 8,930,252, issued in January 2015, prosecution closed and a notice of allowance was sent in April 2014, again prior to the Alice decision.
Enchanted accuses Duracell’s “Powerbank” of infringing U.S. Patent 6,194,871, directed to charge and discharge control circuits for secondary batteries that prevent overcharge and overdischarge of the batteries. According to the complaint, the patented technology solves the problem of preventing a battery from being erroneously charged by another battery pack connected in parallel while also permitting recharge of a battery even when the voltage is completely discharged. The Powerbank products are portable chargers for USB devices and smartphones, and Duracell lists overcharge protection as one of the Powerbank’s safety features. Enchanted, a Plano, Texas corporation (and thus presumptively a Non-Practicing Entity), extensively pleads personal jurisdiction, based on Duracell’s having a principal place of business in Massachusetts, regularly conducting business and deriving substantial revenue in Massachusetts, offering products online to customers in Massachusetts, systematically conducting business in Massachusetts (including the accused activities), and having a regular and established presence in the district. The patent has changed hands a number of times, and was last assigned to Enchanted by Huawei Technologies. Enchanted seeks injunctive relief as well as monetary damages; injunctive relief may be hard to come by, however, as the patent claims priority to a December 3, 1999 Japanese application and will thus almost certainly expire prior to a decision in the litigation.
Judge Saylor granted in part and denied in part Abiomed’s motion to strike Maquet’s second supplemental non-infringement contentions. Maquet, who asserted patent infringement counterclaims, sought to add a claim under 35 U.S.C. § 271(f), which prohibits the export of all or a substantial portion of a patented invention for assembly abroad. Judge Saylor struck this part of the contentions, finding that Maquet’s counterclaims did not refer to 271(f) and made no factual allegations from which a 271(f) claim could be inferred, and thus Maquet should follow the requirements of F.R.C.P. 15. Judge Saylor refused to strike portions of the second supplemental contentions that added new infringement contentions concerning the “guide mechanism” term. He noted that, through inadvertence, his scheduling order did not literally prevent the service of supplemental contentions, and accepted Maquet’s assertion that the amendment was based on “newly adduced” evidence not previously available to it. Maquet further assured the Court that the amendment narrows the asserted claims and “elaborates and refines” their infringement theory. He did ban any further amendment of the infringement contentions.
Judge Saris denied defendant NetApp’s motion for leave to amend and supplement its invalidity contentions for failure to demonstrate good cause as required by the local rules. NetApp, who was sued separately from Lenovo and EMC but whose case was joined, failed to connect its proposed amendment to the claim construction ruling, and waited a year between discovering the new prior art and seeking to amend. Given this, and that fact discovery is now complete and expert disclosures are imminently due, Judge Saris determined that the case “is aging and needs resolution.”
CadioNet sought to sever the patents that were found to be directed to ineligible subject matter from the remainder of the case, which remains to go to trial, so that the ruling on the two patents could be immediately appealed. Judge Talwani determined that, given the posture of the case, Fed. R. Civ. P. 54(b) should apply, rather than Rule 21 as had been argued by CardioNet. Noting the “long-settled and prudential policy against the scattershot disposition of litigation,” Judge Talwani determined that CardioNet’s decision to bring all four patent claims in a single action, “presumably based on its view that the claims are related and involve common sets of fact and law,” mitigate against entry of separate judgment on the two invalidated patents. She did note that CardioNet had a different pair of related patents that were invalidated on Alice grounds at the District Court level (also by Judge Talwani), and that she would likely have granted severance if CardioNet had sought it at the time the appeal on those patents was filed; but as the appeal in that case has been fully briefed, severing the claims in the current case would result in three different litigation tracks. Accordingly, CardioNet’s motion to sever was denied.
Following the Federal Circuit’s affirmance of JMOL that the patent-in-suit was not infringed, Perrigo sought $90,637.02 in costs. Brigham and Women’s objected to virtually all of the requested costs and asserted that the case should be treated as a “mixed-result” case because Brigham “prevailed” on every issue save infringement (i.e., prevailed on standing, laches, invalidity, marking and damages). Judge Zobel rejected this argument, finding that Brigham had not prevailed on its sole claim of infringement and that, as a result, Perrigo was entitled to costs under F.R.C.P. 54(d). Judge Zobel did not award the full amount sought, however; she denied pro hac vice motion fees as not allowable in this district, denied costs associated with depositions that were not used in trial or in the post-trial briefing and denied all costs associated with videotaping or obtaining rough transcripts, finding these costs were not taxable absent prior permission. She also denied costs associated with the use of realtime transcripts, finding these to also not be “necessary” within the meaning of 28 U.S.C. § 1920(2). Judge Zobel refused to award $35,298 in costs associated with the use of a graphic designer to prepare charts, figures and demonstratives used at trial, based on both the excess amount of time spent in their preparation and a lack of evidence supporting these costs. Finally, Brigham’s had, in its motion seeking refusal of the Bill of Costs, sought expert witness fees under F.R.C.P. 26(b)(4)(E), which generally requires a party seeking expert discovery to pay the expert for the time spent in responding. Judge Zobel noted that expert discovery had concluded three years earlier with neither party seeking fees, and denied the request as untimely. In total, she awarded $22,843.48 to Perrigo.