IP Newsflash

A district court has denied a request to amend patent infringement contentions to add claims obtained through ex parte reexamination after the case had been substantially narrowed through a parallel inter partes review (IPR) proceeding.

The Federal Circuit vacated and remanded a decision by the District Court for the Northern District of California when it failed to consider joining the patent owner before dismissing a case in which the licensee possessed Article III standing, but did not possess sufficient rights in the patent to bring the infringement suit alone.

A federal district court in the Northern District of California granted plaintiff XpertUniverse’s (XU) motion for partial summary judgment on collateral estoppel and precluded defendant Cisco Systems from raising new invalidity grounds. The court also denied Cisco’s motion for judgment on the pleadings under 35 U.S.C. § 101.

After nearly two years of patent litigation in dozens of cases in the United States and China, a Chinese trial court issued an injunction against Samsung, barring it from making or selling its 4G LTE smartphones in China—an order that the Northern District of California has now temporarily halted by anti-suit injunction.

On March 23, 2018, a district court judge issued a preliminary injunction requiring the defendants to withdraw their petitions for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). The court granted plaintiff’s motion for an injunction based on its finding that the terms of the parties’ license agreement require that any challenges to the validity of the licensed patents be litigated in either San Francisco or Orange County, California.

On June 19, 2017, Northern District of California Judge William Alsup granted-in-part and denied-in-part plaintiff Comcast Cable Communications, LLC’s (“Comcast”) motion to strike defendants OpenTV, Inc. and Nagravision SA’s (collectively “OpenTV”) infringement contentions. The court, however, did not strike with prejudice but instead treated Comcast’s motion as a motion to compel amendment of OpenTV’s infringement contentions so that OpenTV could cure deficiencies.

On February 14, 2017, Judge Chhabria of the Northern District of California granted, in part, Apple’s motion to exclude the expert report of Unwired Planet’s survey expert, Dr. Allenby. Dr. Allenby was hired to conduct a consumer survey to assess the value of the claimed method for “provisioning” a mobile communication device. This process involves the mobile communication device connecting with a server and being authenticated to allow the user access to certain services. According to the decision, Dr. Allenby’s report, however, relied on Unwired Planet’s proposed definition of “provisioning,” and not the court’s construction. The expert had defined the term “provisioning” to mean something akin to “providing;” however, the court’s construction was far narrower.

On January 19, 2017, Judge Susan Illston of the Northern District of California granted-in-part and denied-in-part a group of plaintiffs’ (collectively, “Plaintiffs”) motion to strike portions of defendant Ariosa Diagnostic, Inc.’s (and its parent company) (collectively, “Defendants”) invalidity contentions. Specifically, Plaintiffs argued that Defendants’ invalidity contentions were barred by (1) statutory estoppel under 35 U.S.C. § 315(e) and (2) judicial estoppel.