Judge Lynn issued an Order (available here) in RXPress Pharmacy v. Afgin Pharma allowing the amendment of infringement contentions. The Court set forth the applicable standard as follows:
Infringement contentions may be amended upon a showing of good cause. Am. Misc. Order 62, R. 3-7. Good cause may include newly discovered accused instrumentalities, newly discovered bases for claiming infringement, or newly discovered prior art references. Id. A party seeking amendment must state that the newly discovered accused instrumentalities, bases for claiming infringement, or prior art references were not known to that party prior to the motion despite diligence in seeking them. Id. In determining whether good cause exists, courts consider: (1) the reason for the delay and whether the party has been diligent; (2) the importance of what the court is excluding and the availability of lesser sanctions; (3) the danger of unfair prejudice; and (4) the availability of a continuance and the potential impact of a delay on judicial proceedings.
Applying this standard, Judge Lynn found that leave should be granted:
Here, Defendant requested leave to amend based on what Defendant contends are newly discovered prescription pads, prescriptions, and instructions. The amendments to Defendant’s infringement contentions are important, particularly to infringement and damages calculations, and Plaintiff will not be unfairly prejudiced because Plaintiff will have a fair opportunity to address the infringement contentions. Finally, the amendment should not delay judicial proceedings. Neither party argues that allowing Defendant to amend its infringement contentions will cause any delay in the case schedule.
Judge McBryde made clear, in an November 10, 2015 Order (available here), that when a motion to dismiss is pending and the plaintiff amends its complaint, the motion to dismiss becomes moot: “So that there will be no confusion, i.e., no need for sur-replies to replies that will raise new grounds for dismissal, the court is ordering that the motions to dismiss, which address the original complaint, be denied as moot.”
On October 10, 2015, Judge Lynn issued an Order (available here) in In re Industrial Print Technologies, LLC Patent Litigation denying defendants’ motion for leave to amend their pleadings to add Acacia Research Group as a counter-defendant. Defendants argued that Acacia should be joined as a party because the plaintiff was Acacia’s “wholly-owned designated affiliate” and the plaintiff is “a grossly-undercapitizlied shell for [Acacia] to enforce patent rights” and simply the “alter ego” of Acacia. Judge Lynn rejected defendants’ arguments, and held that the proposed amendment would be futile as defendants could not assert any claims against Acacia.
On November 2, 2015, Judge Kinkeade issued an Order (available here) invalidating two of Global Tel*Link’s patents under the Supreme Court’s recent Alice decision on a motion for judgment on the pleadings filed by Securus. Judge Kinkeade found that both patents were directed toward an abstract idea and that the patents lacked an inventive concept. Accordingly, they were not patent eligible.
On November 3, 2015, Judge Lynn entered an Order (available here) in Raz Imports v. Luminara Worldwide transferring the case to the District of Minnesota. The plaintiffs had filed a declaratory judgment lawsuit against the defendant one day after receiving the defendant’s cease and desist letter. Judge Lynn applied the Federal Circuit law on the “first-to-file” rule and found that the case was an anticipatory action. The Court then applied the Section 1404(a) transfer factors and ultimately decided that the case should be transferred to Minnesota.
On Friday, a fractured Federal Circuit issued its decision in SCA Hygiene v. First Quality Baby Products (available here). The Federal Circuit sat en banc and held that, notwithstanding the Supreme Court’s Petrella decision (which I discussed here), laches is still an available defense in patent infringement cases because, unlike in the Copyright Act, “Congress codified a laches defense in 35 U.S.C. § 282(b)(1) that may bar legal remedies.” Additionally, the Federal Circuit held that laches may also bar prospective relief (i.e., injunctive relief and ongoing royalties). A laches defense may affect ongoing royalties, but only “in extraordinary circumstances.”
Judge Kinkeade issued an Order (available here) transferring Word to Info’s (“WTI”) patent infringement lawsuit against Facebook to the Northern District of California. Notably, WTI is a Texas corporation with its principal place of business in Richardson, Texas, and the sole inventor of the seven patents-in-suit lives in Richardson, Texas.
In Summit 6 v. HTC, defendants sought to stay the case pending the PTAB’s inter partes review concerning the patents-in-suit. Judge O’Connor denied defendants’ motion to stay (decision available here), noting in the process that the PTAB had not instituted the proceedings, discovery closed in one month, claim construction briefing had closed, and trial was set for the year’s end.
Judge O’Connor issued an Order (available here) in Williams-Pyro v. Warren Watts Technology denying a motion to compel because it was not filed during the discovery period. Judge O’Connor stated: “Motions to compel are untimely if filed after the deadline for completion of discovery.” Although there are exceptions to this general rule, Judge O’Connor found that none of the exceptions applied (discovery had closed approximately one year prior to the motion and the case was on the eve of trial).
Three new patent infringement cases have been filed recently: (i) Hawk Technology Systems v. Galleria Mall (complaint available here); (ii) T&CO Energy Services v. TexStarr Solutions (complaint available here); and (iii) Gourley v. Bluelounge Distribution (complaint available here).