Rocket Docket IP Litigation

On February 13, 2009, Humanscale sued CompX International and CompX Waterloo in the EDVA for infringement of US Patent No. 5,292,097.   Humanscale designs and manufactures keyboard support products, such as the keyboard tray in the '097 patent.  In response, Defendants filed the usual counterclaims for invalidity, noninfringement, and unenforceability, and also asserted infringement by Humanscale of US Patent Nos. 5,037,054 and 5,257,767.  Almost exactly a year later, it looks like parties are headed to trial by jury before Judge Spencer in Richmond.  On February 5, 2010, the Court heard oral argument on Humanscale's motion for summary judgment of invalidity and laches (the only summary judgment motion that appears to have been filed), and denied it from the bench.  According to the current scheduling order, the parties are scheduled to begin trial on February 16. 

Patent cases are notoriously expensive to litigate.  As a result, more and more parties are turning to Rule 12(c) in an attempt to narrow down issues in the case, or to dismiss the case entirely.  In Monec v. Apple (which this blog has previously covered here), the Eastern District of Virginia dismissed the case in its entirety, finding that the plaintiff could not recover based on the claims of the patent as written.   And more recently in the Norfolk Division, defendant Walden University filed a Rule 12(c) motion asserting that certain claims of the patent at issue in its case against Digital-Vending Services International are indefinite, in part because they claim both an apparatus and a method.  In addition to arguing that Walden's motion is premature, because the claims have not yet been construed, DVSI has opposed Walden's motion on its merits.  The Court has neither set a date for the hearing nor ruled on the motion. 

The IP Section of the Virginia State Bar has announced its 2010 writing competition, for articles relating to intellectual property law, or the practice of intellectual property law.  According to the VSB's website, the contest is open to students at Virginia law schools, or Virginia residents attending law school outside the Commonwealth of Virginia.  The prize is $4,000 and publication of the article on the VSB IP Section website.  Articles are due by May 29, 2010.  More details can be found here.   

PRE Holding, Inc. v. Monaghan Medical Corporation was dismissed without prejudice pursuant to a Stipulated Order entered on January 27, 2010, in the Richmond Division of the Eastern District of Virginia.  The lawsuit had been pending in the EDVA since July 21, 2009, when PRE Holding asserted that the Defendants infringed U.S. Patent No. 7,562,656, which is directed toward an aerosol medication inhalation system to aid in the delivery of aerosolized medicaments to patients.  Monaghan subsequently requested an Inter Partes Reexamination of the ’656 patent, and the USPTO granted the request on January 20, 2010, and entered a First Office Action rejecting all of the asserted claims as unpatentable. 

The Court also ordered that the six year statute of limitations for obtaining damages in the case was tolled from the date the suit was filed through the date on which a final ruling is entered in the Reexamination Proceeding, and that damages would not be limited during that tolling period.

In Nemet Chevrolet v. Consumeraffairs.com, Inc., No. 08-2097 (4th Cir. 2009), the Fourth Circuit majority, Judges King and Agee, recently upheld the district court’s Rule 12(b)(6) dismissal of Nemet's defamation claims against Consumeraffairs.com, based on website posts relating to Nemet’s automobile services. The majority found defendant immune as an information service provider under section 230 of the Communications Decency Act (“CDA”). Nemet argued that its claims were sufficient to withstand the motion to dismiss and that Consumeraffairs.com was not entitled to immunity because it was an “information content provider” under section 230(f)(3).

On May 19, ePlus, Inc. filed suit in the Rocket Docket against a number of defendants for infringement of patents covering aspects of electronic sourcing and procurement systems.  ePlus, Inc. v. Lawson Software, Inc., Civ. Action No. 2:09-cv-00232 (E.D. Va.).  No stranger to the Rocket Docket, ePlus has attempted to enforce these patents twice before in this Court.  In a case filed in 2004, ePlus received a favorable jury verdict against Ariba in the Alexandria Division before Judge Brinkema, and subsequently, in a case against SAP where the same 79 claims asserted against Lawson were at issue, ePlus was left with a hung jury in the Richmond Division before Judge Spencer.  Both cases settled after the jury returned.  In this case, as with the other two, ePlus filed its complaint in the Alexandria Division, but as with the case against SAP, this case against Lawson was transferred to the Norfolk Division pursuant to the Court's patent rotation procedure.  In Norfolk, the Defendants made a joint motion to transfer the case to Judge Spencer in Richmond, and the Court obliged.

Analyzing the traditional factors under 28 U.S.C. section 1404(a), the Court concluded that the "interests of justice" factor was dispositive in this case.  While giving short shrift to the Defendants' concerns over inconsistent results, the Court was persuaded that the judicial economy concern under this factor should carry the day, relying heavily on the Court's decision in Mullins v. Equifax Info. Servs., LLC., 2006 WL 1214024 (E.D. Va. 2006).  Specifically, because Judge Spencer was already familiar with the patents, had already construed the claims of many of them (despite the fact that his claim construction order was withdrawn at the parties' request after they settled the SAP case), and had presided over a multi-week jury trial on these patents, he was so much more familiar with them so as to enable him to preside over this case at much less cost, in terms of judicial resources.

The Eastern District of Virginia recently denied a preliminary injunction to PRE Holding, Inc., a patent infringement plaintiff seeking to enjoin the sale of certain allegedly infringing devices sold by Defendants, which included a “valved holding chamber” that aids in the delivery of aerosolized medication to patients through inhalation.  PRE Holding, Inc. v. Monaghan Med. Corp., Civ. Action No. 3:09-cv-00458 (E.D. Va. Nov. 17, 2009).  In doing so, the Court invoked the Supreme Court’s recent decision in Winter v. Nat’l Res. Defense Council, Inc., 129 S. Ct. 365 (2008).  Explaining that Winter “restated and clarified” the well settled four-factor standard for preliminary injunctive relief, the Court noted that the Chief Justice, speaking for the Court, “emphasized that ‘injunctive relief [is] an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.”  Turning to the merits of PRE’s motion, the Court reiterated this “clear showing” requirement with respect to the likelihood of success on the merits factor, and cited to Real Truth About Obama v. Fed. Election Comm’n, 575 F.3d 342 (4th Cir. 2009) as further support.  Ultimately, the Court concluded that PRE failed to make the requisite clear showing of a likelihood of success on the merits.

The Federal Circuit, though, whose law governs preliminary injunction motions in patent cases, has not invoked this dictum from Winter, and has stated both before and since that a patentee need only make a showing of a “reasonable” likelihood of success on the merits.  See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375-76 (Fed. Cir. 2009) (quoting Winter, 129 S. Ct. at 374).  Indeed, the Federal Circuit has held that at the preliminary injunction phase, the movant “need not present sufficient evidence to be entitled to summary judgment,” New England Braiding Co. Inc. v. A.W. Chesterton Co., 970 F.2d 878, 882-83 n.4 (Fed. Cir. 1992), and that a patentee need not make a “strong,” or “clear” showing of likelihood of success on the merits to prevail, Roper Corp. v. Litton Sys., Inc., 757 F.2d 1266, 1271 n.5 (Fed. Cir. 1985).  Arguably then, the Court’s decision in PRE Holding raises the bar for patentees seeking preliminary injunctions in the Rocket Docket.

The clock is ticking for U.S. Patent Application No. 10/962,357, which is currently pending before the USPTO.  The patent application is generally directed toward a pharmaceutical composition comprising arsenite for the treatment of malignancy, and will go abandoned as of December 3, 2009, absent intervention of the Eastern District of Virginia. 

Komipharm International Co., Ltd. claims ownership and has attempted to pursue the prosecution of this patent application; however, the USPTO has denied its attempts to do so.  The USPTO has determined that Komipharm does not own all rights in the patent application because one of the named inventors, Dr. Sang Bong Lee, retained his rights.  This is significant because it means that Dr. Lee’s consent is needed to continue prosecution of the patent application.  In an effort to circumvent the USPTO’s decision, Komipharm filed a complaint on November 30, 2009, in the Eastern District of Virginia against David Kappos, Director of the USPTO.  Komipharm seeks a ruling that the USPTO’s decision that Komipharm is not the owner of a pending patent application, despite U.S. assignments of the pending patent application to Komipharm, is arbitrary, capricious and contrary to law.  Komipharm also seeks a preliminary injunction to suspend all prosecution of the pending patent application until ownership of the patent application is determined by the EDVA, or in the alternative, requests that the USPTO withdraw the pending Office Action so as to preserve the status quo while the matter is pending.

In a surprising decision in Tafas v. Kappos on November 13, 2009, the Federal Circuit granted the parties' joint motion to dismiss the appeal as moot, but denied the parties' joint motion to vacate the judgment of the Eastern District of Virginia.  The court reasoned that dismissal of the appeal was proper as moot because the USPTO had rescinded the rules that formed the basis for the litigation.  However, the court also reasoned that vacatur of the Eastern District of Virginia's judgment was not proper because the mootness arose due to a unilateral act of the USPTO in rescinding the rules.  In contrast, vacatur of the EDVA's decision would have been proper if the mootness had arisen from an external cause over which the parties had no control - that was not the case.  Accordingly, the EDVA's decision stands.

The blog Inventive Step has this post on the recent Virginia State Bar Intellectual Property Section 21st Annual Fall Weekend.  The new director of the PTO David Kappos was one of the speakers, and he addressed a number of his proposals for change at the PTO.  He quipped that when previously asked whether he planned to hit the ground running in his new position, he had responded no.  Instead, he planned to “drop out of a chopper shooting” to begin work before he hit the ground. 

The USPTO Director David Kappos signed a new final rule rescinding the 2007 Patent Regulations Package previously proposed by the Bush Administration.  The USPTO also announced that it would be filing a motion to dismiss the currently pending Tafas v. Doll lawsuit, which was initially brought in the Eastern District of Virginia by inventor Triantafyllos Tafas and GlaxoSmithKline to prevent the rules from taking effect. In justifying the reasons for withdrawing the highly unpopular regulations, Kappos stated that “the USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market.”  Kappos further noted that “this course of action represents the most efficient way to formally and permanently move on from these regulations and work with the IP community on new ways to take on the challenges these regulations were originally designed to address.”

The Tafas v. Doll decision has been previously reported on the blog here. 

After a hearing on August 21 on Apple's request for fees, and Monec's request for reconsideration, the Court denied both motions in a one-line order.  Monec has already filed its notice of appeal to the Federal Circuit. 

Pentium Fund, Ltd. (“PFL”), a Swiss hedge fund and financial services company, claims it is the rightful owner of the domain names pentiumfund.com, pentiumfund.net, and pentiumfund.org, in a declaratory judgment action filed in the Eastern District of Virginia, No. 1:09cv532, against Intel Corporation (“Intel”).  PFL filed the complaint in response to a decision by the World Intellectual Property Office Arbitration and Mediation Center (“WIPO”) ordering that the domain names be transferred to Intel Corporation.  The complaint also alleges that Intel’s attempt to take over these domain names is unlawful under the reverse domain name hijacking provisions of the Anticybersquatting Consumer Protection Act (“ACPA”).

TeleCommunications Systems (TCS) has sued Sybase 365 (formerly Mobile 365) twice more for patent infringement in the Eastern District of Virginia.  In a prior case before Judge Spencer, TCS won a jury verdict on March 21, 2009 against Sybase for infringement of a single patent (6,985,748), and a damages award of $12 million.  On July 30, TCS filed a second lawsuit.pdf against Sybase in the Richmond Division, for infringement of a related patent which had just recently issued.  The case has been assigned to Judge Spencer as well. 

On the same day, TCS filed this Complaint.pdf against Sybase in the Alexandria Division, asserting infringement of two separate patents "permitting the two-way communication of short messages between either a short message service center or a wireless handset, and an HTTP device or an Universal Resource Locator."  Although filed in Alexandria, this case has been assigned to Judge Doumar in Norfolk pursuant to the EDVA's patent rotation procedure.

Because of the identity of the parties and similarities in the technology, look for the consolidation of these cases at some point.

The EDVA recently granted Funai Corporation's motion to transfer (previously reported in our blog here) and kicked Vizio, Inc.'s patent infringement case to the Central District of California in its August 7, 2009, Order.  In weighing the interests of justice, the Court determined that the mere fact of one percent of sales of the offending product in Virginia was not enough to keep the case pending in the Rocket Docket, especially in light of the substantial connections of both plaintiff and defendant's third-party manufacturers to California.  While Vizio countered by arguing that despite the lack of connection to Virginia, the fact that the EDVA is a Rocket Docket should weigh against transferring the case, the Court recognized that while the docket conditions of the transferor and transferee courts may be considered, it would not give it commanding weight.  The Court reasoned that if it allowed docket considerations to control, then all cases filed in the EDVA would be immune from transfer.  

IPO reports here that Judge Schall of the Federal Circuit has announced his intention to take Senior Status as of October.  This will be the first vacancy on the Court since Judge Kimberly Moore was appointed in 2006.  Judge Schall was appointed in August 1992 by President George H.W. Bush.  Just prior to his appointment, he was an Assistant to the Attorney General of the United States, under Attorneys General Dick Thornburgh and William P. Barr.    

PatentlyO links to the briefs filed with the US Supreme Court in In Re Bilski in this post.  Amicus briefing is extensive, with over 35 briefs filed so far supporting either Bilski or neither party.  The government's opposition is due September 25, and amicus briefs in support of the opposition are due within seven days of the government's filing. 

Gene Quinn at IP Watchdog has a great post here on his rating of the Top 50 Patent Blogs, with Patently O taking the top award.  As he explains, patent law blogs rank very high in popularity, in comparison with other blogs and websites generally.  For example, five of the top rated patent blogs were in the top 2% of all websites according to Alexa traffic data, which has approximately 16 million websites indexed.  (IPWatchdog, Promote the Progress, Invent Blog, PatentlyO, Spicy IP)

Last month, the Eastern District of Virginia posted a notice seeking applicants for a federal Magistrate Judge position in the Norfolk Division.  Public Notice  Applications are due by September 1, 2009.  The Notice states how the selection will be made:

"A merit selection panel composed of attorneys and other members of the community will review all applicants. Due consideration will be given to all qualified applicants. The merit selection panel will then recommend to the district judges in confidence the five persons it considers best qualified. The court will make the appointment following an FBI full-field investigation and an IRS tax check of the applicant selected by the court for appointment."

Hot on the heels of its early victory, Apple has filed a motion for sanctions against Monec under Rule 11, and a request for its attorney fees.  Fees.pdf  Apple contends that the allegations of infringement by the iPhone were objectively unreasonable, because of the limitation in the patent that the invention permit one page of a book to be displayed at a "normal size."  According to Apple, and Judge Brinkema in the order granting judgment of noninfringement, the iPhone does not meet this limitation.  Monec has filed a motion for reconsideration, arguing that the Court's claim construction includes errors of law, and that the Court's order denies Monec due process.  Monec.pdf  Specifically, Monec argues that the Court improperly took judicial notice that a librarian constituted a person having ordinary skill in the art without complying with Federal Rule of Evidence 201, and that the Court should not have granted judgment without the benefit of discovery, a Markman hearing, etc.  A hearing on both motions is set for August 21.

There have been 48 trademark cases filed in the Eastern District of Virginia in 2009.  If this pace continues, the total number may approach twice the number filed in 2008, which totaled 51 for the entire year.  Of the 2009 cases:

• Of those 48, at least 14 are Anticybersquatting cases under the ACPA.
• The vast majority, 38, have been filed in the Alexandria Division, with the assignments as follows:  Trenga (9); Hilton (7); O'Grady (6); Lee (5); Cacheris (4); Ellis (4); and Brinkema (3).
• In the Richmond Division, Judge Payne has been assigned 3 cases, Judge Spencer 1, Judge Hudson 1, and Judge Williams 1.
• In the Norfolk Division, Judge Jackson has been assigned 3 cases, and Judge Friedman 1. 

The Federal Circuit has granted the parties’ joint motion to stay the proceedings in Tafas v. Doll.   The case docket is available on PACER (see page 1, Entry 222).  Under the parties’ motion, the Appellants’ opening brief to the en banc court, if still necessary, would be due sixty days after the confirmation of the new Director of the USPTO. 

On Friday, the U.S. Patent and Trademark Office (USPTO) and the appellees in the Tafas case asked the Federal Circuit to stay the proceedings until sixty days after the new PTO Director is confirmed by the U.S. Senate. Joint Consent Motion for a Stay of En Banc Proceedings.  If granted, the joint motion would postpone for several months the due date for the parties’ en banc briefs, which are currently scheduled for submission in August and early September.  The parties contend that a stay is justified because the new Director may revise the USPTO’s position in the case and thereby change or moot the issues that are presently before the Federal Circuit.  See our previous posts about this case here and here.

In a victory that surely does not happen often, Apple recently won summary judgment on the pleadings in a patent infringement case in Alexandria filed by Monec over Apple's iPhone.  See our previous posts about Apple's motion for judgment on the pleadings in the case here, and on Monec's asserted claims in the complaint here.  Last week, Judge Brinkema granted Apple's Motion and dismissed the case with a summary one page order.  Apple Order.pdf.  With this early and decisive victory, Apple was able to avoid what could likely have been an expensive discovery process, in addition to the cost and uncertainty of trial. 

On June 23, the EDVA denied Level 3's Motion for Judgment as a Matter of Law and for a new trial (Order.pdf), and on July 21, Level 3 filed its Notice of Appeal to the Federal Circuit.  Level 3's arguments focus on Defendant's use of the Court's claim construction at trial.  See our previous post here covering the Court's summary judgment order and the jury trial in Norfolk. 

Juniper Networks, Inc.'s ostensible litigation strategy to take advantage of the Rocket Docket as a plaintiff, but transfer claims that it must defend to a slower paced jurisdiction, appears to have been successful.  As previously reported, the Eastern District of Virginia, Alexandria Division, recently entertained Juniper Networks, Inc.'s Motion to sever GraphOn Corporation's Counterclaim and transfer it to the Eastern District of Texas.  The Court issued GraphOn's marching orders on June 24, 2009, where the counterclaim will be transferred.  For a discussion of Juniper's approach, see this article in Am Law Litigation Daily. read more

A complaint recently filed in the Eastern District of Virginia concerns a story “of burning professional jealousy, fueled by the glory of seeing one’s name in the lime lights of the big screen, in combination with greed.”  The complaint was filed in the Richmond division (Case Number 3:08cv386), by Raman K. Singh (“Singh”), an English professor retired from Mary Washington University, against Gary Haas aka Gary Hollywood, (“Haas”) an individual who lives on the same small Greek island as Singh.   Singh seeks a declaratory judgment that his story The Jesus Manuscript, about a theory that Jesus visited India before his death, created in 2006, does not infringe The Ikon, a story about art forgery, written by Haas and Singh in 2007.

On July 10, 2009, Rosetta Stone sued Google in the Alexandria Division of the Eastern District of Virginia, for trademark infringement based on Google’s AdWords® program.  Through AdWords, Google sells keyword search terms, so that when an Internet user types a search term into Google that has been purchased, a link to the purchaser’s website appears at the top or on the right column of the search results page as a “Sponsored Link.”  In its Complaint, Rosetta Stone alleges that Rosetta Stone’s competitors (and companies selling counterfeit Rosetta Stone products) have purchased Rosetta Stone’s registered trademarks through AdWords; thus, when one of Rosetta Stone’s registered marks is entered into Google as a search term, links to these third parties websites appear as Sponsored Links on the search results page.  Rosetta Stone thus alleges that Google is liable for trademark infringement based on its sale of Rosetta Stone’s registered marks. 

 Eric Goldman, author of the Technology & Marketing Law Blog who has been following these types of cases for years, has collected each of the pending cases against Google which make the same allegations here, and includes intelligence on Rosetta Stone's lawyers, and their previous experience with these cases.

The United States Court of Appeals for the Fourth Circuit reined in the award of attorney fees and costs which Quantum System Ingtegrators, Inc.'s received in its copyright suit against Sprint Nextel Corporation in the Eastern District of Virginia.  The copyright infringement lawsuit involved network monitoring software and concluded with Quantum collecting actual damages, attorneys' fees and costs based on Sprint's copyright infringement.  Despite Quantum's award, the Fourth Circuit noted in its ruling on July 7, 2009, that Quantum's success was only "minimal" in this lawsuit, which did not justify an award of fees and costs more than five times the actual damages in the case. read more

Last week, in a case it described as one of “practically first impression,” the Eastern District of Virginia granted summary judgment in favor of Solo Cup Co. that it was not liable for improper patent marking under                              35 U.S.C. § 292(a). Pequignot v. Solo Cup Co., No 1:07cv897-LMB/TCB (E.D. Va. July 2, 2009). The Court agreed with Solo that the advice of counsel it received to replace patent-marking molds with non-marking molds in a gradual fashion was reasonable. Solo’s overall conduct was held to evidence a lack of intent to deceive the public. The Court also held that an “offense” under the statute is the overall decision to mark improperly, thereby rejecting Pequignot’s argument that Solo should be penalized for each and every lid it marked. read more

The United States Court of Appeals for the Federal Circuit has agreed to rehear en banc the highly anticipated appeal in Tafas v. Doll.  The case initiated in the Eastern District of Virginia, in which the Court enjoined the implementation of new rules relating to patent application continuations and claims.  The Court's March 20, 2009, opinion was expressly vacated and the appeal was reinstated in the Court's July 6, 2009, Order.   See our previous post about this case here.  read more

Some observations from the patent case filings in the Eastern District for the first half of the year:

• The pace of filings during this calendar year (30) is roughly on track with the number of last year’s filings (58 for the year ending September 2008). During 2008, patent filings as a percentage of the district’s total caseload (2.25%) were more than double the national average (1.1%).
• Cases are fairly evenly spread across the district, even without a substantial number of intra-district transfers. There were 12 filings in Alexandria, 1 of which was transferred under the special patent case transfer procedure to the Norfolk division. 10 patent cases were filed in Norfolk, and 8 in Richmond.
• Cases are more or less evenly distributed among the judges. Each of the four non-senior judges in Alexandria has at least one pending case. Three of the four non-senior judges in the Norfolk division have at least one case also. In Richmond, the cases have been distributed evenly between Judge Spencer and Judge Payne, but as of yet, Judge Hudson has not drawn a patent case assignment in 2009.

We previously posted about the suit filed in Alexandria by Monec Holding AG, a Swiss wireless communications company, against Apple Inc., for patent infringement.  Monec v. Apple  Notably, Apple stated its counterclaim for noninfringement in great detail, asserting that the iPhone® does not satisfy the limitation of a “display” that “has dimensions such that one page of a book can be displayed at normal size.”  Simply put, the claims do not cover a device as small as the iPhone.  Apple even went so far as to discuss the prosecution history and statements made by the applicant about prior art cited by the PTO.  Now, despite the fact that discovery does not close until October 9, Apple has moved for “judgment on the pleadings or summary judgment, or in the alternative, to transfer” to the Northern District of California. Apple Motion.pdf  Importantly, Local Rule 56(C) provides that each side only gets one motion for summary judgment, without leave of Court.  To the extent that the Court construes Apple's motion as one for summary judgment, it may not get another chance. 

Juniper Network Inc.'s strategic plan to take advantage of the Rocket Docket as a plaintiff in its patent infringement claims against GraphOn Corp., while transferring GraphOn's patent infringement claims to a slower jurisdiction, appears to be coming to fruition.  The dispute between Juniper and GraphOn initially began in 2007 in the Eastern District of Texas, where GraphOn sued Juniper for patent infringement for network security products.  Juniper retaliated by suing GraphOn in the Eastern District of Virginia for patent infringement for data transmission.  Not to be outdone, GraphOn attempted to take advantage of the Rocket Docket by filing in the Virginia case a counterclaim for infringement based on the Juniper products it accused of infringement in the Texas case.  However, GraphOn's attempt to bring its claims to Virginia were not successful.

In an opinion by Judge Lee, the Eastern District of Virginia recently granted Juniper’s motion to sever and transfer GraphOn’s patent infringement counterclaim to the Texas case.  Juniper moved to transfer only GraphOn's counterclaim for patent infringement -- not Juniper’s affirmative claim for patent infringement.  Juniper successfully argued that that patent infringement counterclaims were better suited to be adjudicated in the Texas court because they targeted all but one of the same products which were already at issue there.  Juniper further justified the transfer by showing that the counterclaims had no relation to the patent infringement suit that Juniper was asserting against GraphOn in the Virginia case.  Juniper therefore kept its claims for patent infringement against GraphOn in the Rocket Docket, while transferring GraphOn's claims for infringement to a slower jurisdiction in Texas. 

With discovery complete, both Solo Cup Co. and Matthew A. Pequignot have asked the Eastern District of Virginia to resolve major issues in the patent marking case Pequignot v. Solo Cup Co., No 1:07cv897-LMB/TCB (E.D. Va.). Solo contends that it cannot be liable for improper marking because it has acted in accordance with advice from counsel while implementing a plan to reduce and eventually eliminate the marking of products with expired patent numbers. Pequignot counters that Solo knowingly marked its products improperly and should be penalized for each article so marked. read more

On June 16, 2009, Vizio, Inc. opposed Funai Electric Co., Ltd.’s Motion to transfer the pending patent infringement lawsuit from the Eastern District of Virginia, Norfolk Division, to the Southern District of California. The case involves multiple patents relating to digital televisions and is currently pending before the Honorable Robert G. Doumar. Funai’s justification for its Motion to Transfer is based on Declaratory Judgments which were filed by Funai and Sony Inc. (“Sony”), not a party to the Virginia case, against Vizio in California regarding the same patents at issue in the Virginia lawsuit.  In its Opposition, Vizio disputed transfer of the suit on the basis that the California case with Sony involved different parties and products.  Vizio also opposed transfer on the grounds that Funai’s own Declaratory Judgment was filed after it was served with Vizio’s complaint in Virginia, and that neither Vizio nor Funai have operations in the District.

The PTO is appealing a decision by the Eastern District of Virginia overturning the PTO’s denial of patent-term extension for a pharmaceutical patent. PhotoCure ASA v. Dudas, No 1:08cv718-LO-JFA, 2009 U.S. Dist. LEXIS 27543 (E.D. Va. Mar. 31, 2009), appeal docketed, No. 2009-1393 (Fed. Cir. June 11, 2009). In its ruling, the Eastern District of Virginia determined that a 1990 decision from the Federal Circuit interpreting the patent-term extension statute conflicted with a later panel decision. The Court held that the earlier decision is controlling and compels extension of the patent’s term. read more

    Major record companies continue their pursuit of individuals who illegally download music.    Five lawsuits have recently been filed in the Eastern District of Virginia against individuals who were identified based on their Internet Protocol (“IP”) addresses.  UMG Recordings, Inc. v. Snipe, 3:09cv298, filed May 06, 2009; Sony Music Entm’t v. Albarzinji, Case No. 1:09cv495, filed May 14, 2009; Zomba Recording LLC v. Havert, Case No. 1:09cv560, filed May 19, 2009; Arista Records LLC v. Jackson, 2:09cv229, filed May 19, 2009; and Warner Bros. Records Inc. v. Weiner, Case No. 1:09cv559, filed May 19, 2009.

All four magistrate judges from the Alexandria Division of the Eastern District of Virginia participated in a bench-bar dialogue organized last month by the Federal Bar Association’s Northern Virginia Chapter.  The event took place on May 13 at the Albert V. Bryan Courthouse in Alexandria.  The panel of magistrate judges engaged with members of the bar on the subject of federal civil motions practice, and provided the Court’s perspective on several issues important to patent cases and federal litigation generally. read more

In response to Monec’s allegations that Apple’s well-known iPhone® infringes U.S. Patent No. 6,335,678 (“’678 patent”), Apple reciprocated by filing an Answer and Counterclaim of non-infringement and invalidity on May 11, 2009, in the Eastern District of Virginia, Alexandria Division.  Apple's allegation of non-infringement is based on an interpretation of a term found in each of the claims of the '678 patent, which require a “display” that “has dimension such that one page of a book can be displayed at normal size.”  Apple also generally alleges that the '678 patent is invalid, and responded to Monec's allegations of unfair trade practices, monopolization and tortious interference with prospective business advantage by stating that the allegations were "mistakenly" copied from a prior complaint.

The Fourth Circuit affirmed the Eastern District of Virginia's decision that an online plagiarism detection service does not infringe students’ copyright ownership in papers submitted through the system. A.V. v. iParadigms, LLC, Case No. 1:07-cv-00293-CMH-BRP (E.D.Va., 2008), aff’d Case Nos. 08-1424, 08-1480, 2009 U.S. App. LEXIS 7892 (4th Cir. April 16, 2009).  Plaintiffs argued that iParadigms’ plagiarism detection service, which was designed to evaluate the originality of written works and prevent plagiarism, infringed their copyright ownership in the essays and other papers that they submitted for high school classes. read more

A group of local patent litigation practitioners has begun crafting a set of "local rules" for patent cases in the Eastern District of Virginia. At least one prominent judge in the district has indicated his willingness to support local patent rules, as long as they maintain the ability of each individual judge to exercise his or her discretion in modifying and adapting default rules and procedures. The first draft of the group’s work -- which essentially compiles certain of the practices and procedures some of the judges in the district currently use in patent litigation cases -- is attached here at /files/Uploads/Documents/draft edva local patent rules.pdf. The group is currently soliciting the opinion of various judges and local IP bar associations, and plans to present its proposed set of local patent rules to the judges on the Local Rules Committee at the end of May or the beginning of June.

The Eastern District of Virginia has held that a private party has standing to bring an action based on the false marking statute, 35 U.S.C. § 292, even in the absence of direct injury.  Pequignot v. Solo Cup Co., No 1:07cv897-LMB/TCB, 2009 U.S. Dist. LEXIS 26020 (E.D. Va. Mar. 27, 2009).  In denying a motion to dismiss for lack of subject matter jurisdiction, the Court interpreted section 292 as a qui tam statute conferring Article III standing to the plaintiff as a relator and partial assignee of the U.S. government’s claims for false-marking violations.  The Court also rejected the defendant’s argument that the qui tam framework violates the separation-of-powers aspects of the U.S. Constitution. read more

The Fourth Circuit ruled that “OBX” is a generic or geographically descriptive designation for “Outer Banks” in OBX-Stock, Inc. v. Bicast, Inc., Case No. 2:04-cv-000450BO (E.D.N.C.), aff’d Case Nos. 06-1769, 06-1887 (4th Cir. 2009).  On appeal from the Eastern District of North Carolina's decision against enforcement of the OBX marks by OBX-Stock, Inc., the panel consisted of Judges Niemeyer, Agee, and O'Grady (US District Judge for the Eastern District of Virginia, sitting by designation). read more

On March 20, 2009, the Federal Circuit issued its decision in Tafas v. Doll, an appeal by the PTO from the Eastern District of Virginia's decision to enjoin the PTO from implementing the Claims and Continuation Final Rules.  The opinion can be found here:  Tafas v Doll.pdf.  The Claims and Continuation Final Rules limit the number of requests for continued examination (Final Rule 114), require submission of a new "examination support document" when filing a certain number of claims (Final Rules 75 and 265), and limit the number of continuation applications that can be filed (Final Rule 78).  With Judge Prost writing for the majority, the Court upheld Final Rules 75, 114 and 265, finding them to be procedural rather than substantive, and therefore within the rulemaking authority of the PTO.  The Court struck down Rule 78, however, as inconsistent with 35 USC § 120, which states that any continuation or continuation-in-part application "shall" be granted priority to the patent application upon satisfaction of certain requirements.  read more

Earlier this month a Suffolk, Virginia corporation sued Minneapolis-based Target Corporation for alleged infringement of a design patent.  Spring & Assocs., LLC v. Target Corp., No. 1:09cv00149-LO/JFA (filed Feb. 11, 2009).  In the suit, Spring & Associates (“Spring”) accuses Target of infringing U.S. Design Patent No. 581,628 (“’628 Patent”), which covers an ornamental design for underwear. read more

Research in Motion, Ltd. (“RIM”) is facing another yet another suit in the Eastern District of Virginia charging some of its popular BlackBerry® products with patent infringement.  Virginia-based WiAV Solutions LLC (“WiAV”) has asserted ten patents against BlackBerry devices in a complaint filed last month.  WiAV Solutions LLC v. Research in Motion, Ltd., No. 3:09cv00047-REP (filed Jan. 26, 2009).  WiAV brings its action less than three years after RIM agreed to a $612.5 million settlement to resolve a case filed by NTP, Inc. in the same court. read more

In a battle between manufacturers of generic pharmaceuticals, the Eastern District of Virginia has dismissed counts for declaratory judgment of patent noninfringement, invalidity, and unenforceability.  Zydus Pharms., Inc., USA v. Teva Pharm. Indus. Ltd., No. 1:08cv1071 (E.D. Va. Jan. 23, 2009) (order granting in part and denying in part defendants’ motion to dismiss).  A covenant not to sue that Teva provided to Zydus was deemed sufficient to resolve the Article III controversy between the parties regarding the patent counts, thereby eliminating subject matter jurisdiction over them.  The court, however, permitted Zydus’s state and federal antitrust claims and its claim for tortuous interference with prospective economic advantage to proceed. read more

The Eastern District of Virginia grants default judgment and damages to a plaintiff in a copyright case after plaintiff alleges copyright infringement of architectural blueprints. The complaint was filed in the Richmond district (Case Number 3:08cv723), by Donald A. Gardner Architects, Inc. (“Gardner”), a South Carolina architectural firm, against Bradley K. Price and NetCad Drafting Inc., (“NetCad”) a company located in Petersburg, Virginia. Gardner alleged that NetCad copied, published and distributed fourteen designs for single family homes, namely the Caroline, Beaufort, Thornberry II, Hawthorne, Irwin, Herndon, Baldwin, McBride, Carrington, Brighton, Keenan, Anniston, Southerland, and Edgewater, which were created and authored by Gardner. read more

In a case assigned to Judge Mark S. Davis, the newest federal judge in the Norfolk Division of the Eastern District of Virginia, the Court denied summary judgment on December 29 and presided over a patent trial in January in the matter of Level 3 Communications, LLC v. Limelight Networks, Inc., No. 2:07cv589. The dispute is over alleged infringement by Limelight Networks, Inc. (“Limelight”) of two patents owned by Level 3 Communications, LLC (“Level 3”) relating to Internet content delivery networks (CDNs). In the denial of summary judgment, the Court concluded that genuine issues of material fact regarding noninfringement and invalidity defenses raised by Limelight required resolution by trial. That trial was completed on January 23, with the jury siding with Limelight on the issue of infringement and the court entering judgment based on the jury’s verdict. read more

Can anonymous music file sharers breathe easy after the record companies voluntarily dismissed two cases in the Eastern District of Virginia? Capital Records, Inc. v. Does 1-13, Case No. 2:08-cv-00090 (E.D.Va. 2008); and Interscope Records v. Does 1-7, Case No. 4:07-cv-00052. Although the Court initially denied motions for expedited discovery to issue subpoenas in these cases, the record companies were victorious after they cited more than 200 cases across the country in which similar subpoenas were allowed. read more