Tagged: Patent Rules

District of New Jersey Denies Motion to Amend Invalidity Contentions, Citing Defendant’s Lack of Diligence and Timeliness in Filing Motion

In Razor USA LLC v. DGL Group, Ltd., the United States District Court for the District of New Jersey recently denied a defendant’s motion to amend its invalidity contentions to include an additional written description argument. The case involves utility and design patents pertaining to a hoverboard. After learning that the design patent issued with drawings had previously been rejected by the Patent and Trademark Office (PTO) (as opposed to those that the PTO later approved), the defendant sought to add an argument that the design patent was invalid pursuant to 35 U.S.C. § 112(a) for the same reasons that the PTO had previously rejected the published drawings. The defendant asserted that it learned about this “new” defense after the plaintiff’s expert stated in a declaration that he had reviewed the prosecution history of the design patent, which prompted the defendant’s own investigation of the prosecution history. In evaluating whether the defendant’s application met the requirements of Local Patent Rule 3.7, the court looked to the defendant’s diligence and the timeliness of the motion. The court concluded that both were lacking. With respect to diligence, the “dominant consideration” in the motion to amend, the court concluded that the defendant had failed to act with the requisite diligence in discovering the information it sought to add...

Court Denies Motion to Amend Invalidity Contentions, Citing Defendant’s Failure to Show When It Could Have Discovered New Information

In MicroVention, Inc. v. Balt USA, LLC, the United States District Court for the Central District of California recently denied a defendant’s motion to amend its invalidity contentions to add additional written description and enablement arguments, finding a lack of diligence by the defendant. The court, which in patent cases “follows a schedule similar to that imposed by the Northern District of California,” emphasized the diligence that must be shown to warrant a party amending its invalidity contentions. Specifically, the court noted that “‘[t]he critical issue is not when [the party] discovered [the] information, but rather whether [it] could have discovered it earlier had it acted with the requisite diligence.’” (quoting Google, Inc. v. Netlist Inc., 2020 WL 1838693, at *2 (N.D. Cal. May 5, 2010)). As we recently reported, the District of New Jersey “adopted verbatim [its] Local Patent Rules from the Northern District of California.” TFH Publ’n, Inc. v. Doskocil Mfg. Co., 705 F. Supp. 2d 361, 365 (D.N.J. 2010). The court found that one of the defendant’s proposed amendments was based on the claim construction position the plaintiff had taken during the claim construction phase of the case. However, the court recognized that the plaintiff’s claim construction had not changed since the beginning of the case and, on that basis, found that...

Expert Report Cannot Be Used for Previously Undisclosed Invalidity Theories

The United States District Court for the Central District of California recently granted a plaintiff’s motion to strike portions of the defendant’s expert report for the untimely disclosure of new invalidity theories that were not previously disclosed in the defendant’s invalidity contentions. In Nichia Corporation v. Feit Electric Company, Inc., the plaintiff sought to strike from the defendant’s expert report: (1) an entirely new reference; (2) two new obviousness theories based on combinations of references not included in the defendant’s final invalidity contentions; and (3) a new written description argument. In ruling, the court highlighted the district’s Standing Patent Rules’ emphasis on “early notice” of infringement and validity contentions, that amendments to contentions require diligence by the moving party and that new infringement and invalidity theories cannot be introduced through expert reports. The Standing Patent Rules that the parties were following were initially set forth by Judge Guilford of the Central District of California. It has been noted that “Judge Guilford’s Standing Patent Rules are similar to the Local Patent Rules adopted by the Northern District of California.” Mort. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1321(Fed. Cir. 2016). And, relatedly, the District of New Jersey “adopted verbatim [its] Local Patent Rules from the Northern District of California.” TFH Publ’n, Inc....

Heightened Pleading Requirement for Direct Patent Infringement Action Effective December 1, 2015

On December 1, 2015, revised Federal Rule Civil Procedures went into effect and changed pleading requirements for patent cases. The new rules were adopted by the Supreme Court on April 29, 2015, based on recommendations of the Judicial Conference of the United States and will eliminate Form 18. Form 18 set for a bare bones requirement for patent infringement complaint and merely required the plaintiff to provide notice of its claims. Form 18 simply required: (1) an allegation of jurisdiction; (2) a statement that plaintiff owns the patents; (3) a statement that defendant has been infringing the patent by making, selling and using the device embodying the patent; (4) a statement that plaintiff has given the defendant notice of its infringement; and (5) a demand for injunction and/or damages.

Federal Circuit Directs Magistrate Judge to Decide Motion to Transfer After Long Delay and Substantive Rulings While Motion Was Pending

The Court of Appeals for the Federal Circuit recently granted yet another writ of mandamus, this time directing a magistrate judge in the Eastern District of Texas to stay proceedings and decide a motion to transfer that had been pending for over nine months. In re: Google, Inc., 2015-138 (Fed. Cir. July 16, 2015). This decision is a part of a continuing trend, since 2008, of the Federal Circuit taking issue with rulings from the Eastern District of Texas denying transfer motions in patent infringement actions or denying the stay of proceedings in favor of an action pending in another jurisdiction.

101 Gaining Importance in Local Patent Rule Submissions After Alice

A recent district court decision has held that patent eligibility arguments not raised in invalidity contentions served pursuant to local patent rules are waived. In Good Technology Corporation v. MobileIron, Inc., No. 5:12-cv-5826, the United States District Court for the Northern District of California denied Defendant MobileIron, Inc.’s motion for judgment on the pleadings based on patent eligibility arguments that were not disclosed in either original or amended invalidity contentions.

Heightened Pleading in Patent Complaints to Frustrate Trolls – Exception for Hatch-Waxman/ANDA Cases

All branches of government have worked to decrease frivolous litigation by non-practicing entities (“NPEs”), or patent trolls, in order to both encourage developing technology and allow businesses to utilize that technology without a looming threat of disruptive and costly litigation. In the course of our coverage of these efforts, we have seen state and federal legislative bodies, as well as the United States Patent and Trademark Office (“USPTO”), the executive branch, and the courts, suggesting potential solutions. Congress is currently weighing a revamped version of House Judiciary Committee Chairman Bob Goodlatte’s Innovation Act bill, which seeks to reform patent litigation by focusing on pleading standards.

NJ District Courts Bar Defendants’ Indefiniteness Argument During Claim Construction Because Not Alleged in Invalidity Contentions

We previously reported that New Jersey District Court Judges will limit a patent infringement defendant’s discovery to the claims and defenses identified in its Invalidity Contentions served under Local Patent Rule 3.3. For the same reasons, a defendant may be barred from taking certain positions during claim construction. In an opinion issued last week, Judge Jose L. Linares held in Auxilium Pharmaceuticals, Inc. & FCB I LLC v. Watson Laboratories, Inc., No. 12-3084 (JLL) that a defendant that does “not raise an indefiniteness defense in its invalidity contentions . . . cannot seek a determination that the patents-at-issue are invalid for indefiniteness through claim construction.”

Norman IP v. Lexmark: Post AIA Joinder and the Rule 42 Trump Card

In Norman IP Holdings, LLC v. Lexmark Int’l, Inc., a recent Eastern District of Texas decision, Chief District Judge Leonard Davis provided guidance on the application of Fed. R. Civ. P. 20 (“Rule 20”) joinder and Fed. R. Civ. P. 42 (“Rule 42”) consolidation in patent infringement cases post-enactment of the Leahy-Smith America Invents Act (“AIA”). Norman IP brought suit against Lexmark and others on September 15, 2011, one day before the AIA was signed into law. Norman IP later added an additional 23 defendants. The defendants filed a motion to dismiss for improper joinder or to sever, and Norman IP alternatively requested that any severed cases be consolidated under Rule 42. The Court granted defendants’ motion to sever and issued an order consolidating the cases for pretrial issues excluding venue.

Implementation of USPTO Rules Under the AIA is Underway: Preissuance Submissions

35 U.S.C. § 122(e), adopted last fall as part of the Leahy-Smith America Invents Act (“AIA”), conditions third party submissions to the USPTO for consideration and inclusion in an application file. Recently, the USPTO published the final rules regulating these submissions by third parties: Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (2012). That is to say, the USPTO provided the requirements and guidance to anyone wishing to have the Office consider patents, published patent applications, or other printed publications of potential relevance during the examination of a pending application. The new rules pave the way for a third party to limit the scope of a pending patent application, particularly a competitor’s application, in a meaningful way.