New Northern District of Georgia Patent Cases

• Arris Group, Inc. v. British Telecom PLC, 1:09-cv-00671 (N.D. Ga. Mar. 11, 2009) (Pannell, Jr., J.) - Complaint for declaratory judgments of non-infringement and invalidity involving U.S. Patent Nos. 5,142,532 (Communication System); 5,526,350 (Communication Network); 6,538,989 (Packet Network); and 6,665,264 (Connection Admission Control). Plaintiff is represented by Troutman Sanders of Atlanta and Ostrow Kaufman & Frankl LLP of New York.

New Northern District of Georgia Patent Cases

• Southwire Co. v. Prysmian Power Cables & Sys. U.S.A., LLC, 3:09-cv-00028 (N.D. Ga. Mar. 10, 2009) (Camp, J.) - Patent infringement suit involving U.S. Patent No. 7,367,373 (Extrusion Head for Producing Self-Sealing Cable). Plaintiff is represented by Sutherland Asbill & Brennan of Atlanta.

New Northern District of Georgia Patent Cases

• Amstech Inc. (d/b/a AimSHOT) v. Osprey International, Inc., Kenzie’s Optics, Inc., Oliver, & Smith, 1:09-cv-00654 (N.D. Ga. Mar. 10, 2009) (Duffey, Jr., J.) - Patent infringement suit involving U.S. Patent No. RE 40,429 (Bore Sight). Plaintiff is represented by King & Spalding of Atlanta.


• Osmose, Inc. & Osmose Holdings, Inc. v. Phibro Animal Health Corp., Phibro-Tech, Inc., & Phibro Wood LLC, 3:09-cv-00026 (N.D. Ga. Mar. 1, 2009) (Camp, J.) - Complaint for declaratory judgment of unenforceability involving U.S. Patent No. 7,426,948 (Method of Preserving Wood). Plaintiffs are represented by Trammell, Camp & Lewis, LLC of Newnan, Georgia and Milbank Tweed Hadley & McCloy of Washington D.C.

Motion to Stay Pending Arbitration or, in the Alternative, to Transfer, Denied Without Prejudice

American Panel Corp. v. Huh et al., 1:08-cv-01241 (N.D. Ga. March 5, 2009) (Carnes, J.)

This case involves claims by Plaintiff American Panel Corporation, a Georgia corporation, that Defendant Vertex LCD, Inc., a California corporation, breached a contractual obligation to Plaintiff, infringed Plaintiff’s patent, and tortiously interfered with Plaintiff’s business relationships. Plaintiff’s breach of contract claims relate to a Supply Agreement and three Purchase Orders entered into between the parties. The Supply Agreement included an arbitration clause, providing that any dispute or claim arising out of or in connection with the agreement shall be arbitrated in Los Angeles, California.

Before the Court was Defendant’s motion to stay the litigation so that the parties may proceed to arbitrate portions of the dispute in California, or, in the alternative, to transfer the case to the Central District of California.

After reviewing the parties’ briefing, the Court remained uncertain whether the case should be sent to arbitration. Judge Carnes felt that several questions had not been answered, such as what effect, if any, an alleged termination of the Supply Agreement had on the arbitration issue and whether the arbitration clause covers a claim of patent infringement. The Court therefore denied the motion without prejudice and directed the parties to address several specific issues in any subsequent briefing should the Defendant wish to refile its motion.

Motion to Stay Pending Reexamination Granted

Unibind Ltd. et al. v. Provo Craft and Novelty, Inc. 1:08-cv-03713 (N.D. Ga. Feb. 27, 2009) (Evans, J.)

Judge Evans granted the Defendants’ Motion to Stay the litigation pending reexamination of the patent-in-suit. The request for reexamination was filed by the Defendant shortly after the Plaintiff filed its complaint in this action.

The Court found that all three factors for evaluating whether a stay should be granted weighed in favor of a stay. First, any prejudice to the Plaintiff due to delaying litigation could be remedied by monetary damages. Second, a stay would simplify the issues in this case through the PTO’s analysis of the patent. Third, discovery had not yet begun.

The Court deferred ruling on whether the Defendant should be precluded from making invalidity arguments based on references it submitted during the reexamination proceeding.

Order on Motions for Summary Judgment and Motion in Limine

Collins & Aikman Floor Coverings, Inc. et al. v. Interface, Inc., 4:05-cv-00133 (N.D. Ga. Feb. 25, 2009) (Murphy, J.)*

Interface, Inc. et al. v. Shaw Industries, Inc. et al., 4:05-cv-00189 (N.D. Ga. Feb. 25, 2009) (Murphy, J.)*

Interface, Inc. et al. v. Mohawk Industries, Inc. et al., 4:05-cv-00190 (N.D. Ga. Feb. 25, 2009) (Murphy, J.)*

Interface, Inc. et al. v. Collins and Aikman Floor Coverings, Inc. et al., 4:05-cv-00191 (N.D. Ga. Feb. 25, 2009) (Murphy, J.)*


In these consolidated patent cases, Judge Murphy issued orders on the following motions:

• Motions for Summary Judgment of invalidity based on lack of enablement, failure to meet the written description requirement, and indefiniteness – denied;
• Motion for Summary Judgment of no willful infringement – granted;
• Motion for Summary Judgment on whether the defendant patentee can recover lost profits – denied – and price erosion - granted; and
• Motion in Limine to exclude expert testimony on enablement – denied.

*Disclosure: My firm, Alston & Bird, represents Mohawk in these cases.

Motion to Dismiss and Motion for Summary Judgment Denied

Sike Cookers & Grill, Inc. v. Vidalia Outdoor Products, Inc., et al., 1:08-cv-00750 (N.D. Ga. Feb. 19, 2009) (Forrester, J.)

Judge Forrester held that Plaintiff complaint satisfied the pleading standards of FRCP 8(a) and denied the Defendants’ Motion to Dismiss. The Court relied on a previous decision from this district holding that there is no heightened pleading standard for patent cases.

The Court also denied the Defendant’s Motion for Summary Judgment of non-infringement because ruling on such a motion would require the Court to construe the claims prior to the parties’ claim construction disclosures under the Local Patent Rules.

Order Granting Motions to Stay Pending Appeal in Related Case

Catch Curve, Inc. v. Integrated Global Concepts, Inc. et al., 1:06-cv-2199 (N.D. Ga. Feb. 18, 2009) (Cooper, J.)

Catch Curve, Inc. v. Graphnet, Inc., 1:06-cv-2386 (N.D. Ga. Feb. 18, 2009) (Cooper, J.)

Judge Cooper granted Plaintiff’s motions to stay the two actions above pending Plaintiff’s appeal of a claim construction ruling in a third action involving the same five patents-in-suit. The Court determined that the Federal Circuit’s construction of the patents on appeal will be relevant to and provide guidance to the Court’s disposition of the claims asserted in these actions. Any prejudice to the Defendants from the delayed resolution of their claims was deemed outweighed by the preservation of resources offered by a stay.

Order on Motion for Sanctions

Water Visions Int’l v. Hughes, 1:08-cv-2169 (N.D. Ga. Feb. 13, 2009) (Evans, J.)*

Judge Evans granted Defendant Hughes motion for sanctions, finding that Plaintiff and its counsel violated Rule 11. The Court dismissed Plaintiff’s complaint without prejudice and deferred Defendant’s motion for attorneys’ fees and expenses until such time as the Plaintiff files another complaint against the Defendant involving the patent-in-suit.

*Disclosure: My firm, Alston & Bird, represents Defendant Hughes in this case.

New Northern District of Georgia Patent Cases

• Fusionbrands, Inc. et al. v. Taylor Gifts, Inc. & The Helman Group, Ltd., 1:09-cv-00364 (N.D. Ga. Feb. 10, 2009) (Story, J.) - Design patent infringement suit involving U.S. Design Patent No. 556,501 (Egg Poacher). Plaintiffs are represented by Gorby, Peters & Associates, P.C. of Atlanta.

Order on Motion to Compel and Motion to Exclude

McKesson Information Solutions LLC v. Epic Systems Corp., 1:06-cv-2965 (N.D. Ga. Feb. 9, 2009) (Camp, J.)

Judge Camp granted in part and denied in part Defendant’s motion to compel and Plaintiff’s motion to exclude evidence.

Defendant moved to compel Plaintiff to provide supplemental answers to 501 of Defendant’s requests for admission. The Court found the number of requests excessive and directed Defendant to refile no more than 225 requests. The Court then directed Plaintiff to respond to all requests that concern issues of fact or the application of law to fact, but advised that the Plaintiff need not respond to any requests that (i) concern legal conclusions, such as whether certain art constitutes “prior art” to the patent in suit, or (ii) require more than a “reasonable inquiry” to answer.

Plaintiff moved to exclude various evidence and arguments offered by the Defendant. The Court granted Plaintiff’s motion with respect to 23,000 documents Defendant produced a week before the close of discovery, documents related to a prior art system Defendant produced a week and a half before the close of discovery, and documents related to another prior art system Defendant produced on the last day of discovery. The Court found Defendant’s productions to be untimely and not justified.

Order on Inequitable Conduct and Obviousness

Outside the Box Innovations, LLC (d/b/a Union Rich USA) v. Travel Caddy, Inc. & Rooster Products (d/b/a The Rooster Group), Case No. 1:05-cv-2482 (N.D. Ga. Dec. 19, 2008) (Evans, J.)

Following an evidentiary hearing, Judge Evans held that the patents-in-suit, the ‘992 patent and the ‘104 patent, were unenforceable due to inequitable conduct, that all claims of the ‘992 patent were invalid for obviousness, and that several claims of the ‘104 patent were invalid for obviousness.

The Court’s inequitable conduct rulings were based on two separate acts by Defendant Travel Caddy, the patentee.

Failure to Disclose Litigation Proceedings: First, Travel Caddy failed to disclose the current litigation while the application for the ‘104 patent, a continuation of the ‘992 patent, was pending. Plaintiff Union Rich’s original complaint sought a declaratory judgment of non-infringement of the ‘992 patent. The ‘104 patent, which issued later, was added to the case when Travel Caddy amended its counterclaims. Judge Evans deemed the litigation material to the application for the ‘104 patent and found an intent to deceive the PTO even though at the time the ‘104 patent issued, Union Rich had not yet raised invalidity or unenforceability as a defense. Based on statements made in the parties’ discovery plan and in other pleadings, the Court found that while the application for the ‘104 patent was still pending, it was clear that the issue of validity would likely arise in the litigation. Rejecting Travel Caddy’s explanation that it did not believe the litigation to be material, the Court held that Travel Caddy’s failure to disclose the current litigation rendered the ‘104 patent invalid for inequitable conduct.

False Claim of Small Entity Status: Second, Travel Caddy claimed small entity status on the applications for the ‘992 and ‘104 patents although it had granted a non-exclusive license under the applications to a non-small-entity reseller. The Court held that the non-exclusive license rendered Travel Caddy ineligible for small entity status and the associated reduced fees. The Court held the false claim of small entity status to be “undoubtedly material” and found an intent to deceive despite Travel Caddy’s belief that only an exclusive license would preclude small entity status.

Obviousness: The Court based its obviousness determinations on various combinations of several prior art references that the examiner relied on to reject claims in a related application.

New Northern District of Georgia Patent Cases

• Datascape, Inc. v. Sprint Spectrum, L.P. & Sprint Solutions, Inc., Case No. 1:09-cv-00136 (N.D. Ga. Jan. 16, 2009) (Cooper, J.) - Patent infringement suit involving U.S. Patent Nos. 5,742,845; 5,905,908; 6,366,967; 6,684,269; and 6,745,259 (Open Network Systems). Plaintiff Datascape is represented by Robins Kaplan Miller & Ciresi of Atlanta.

Motion to Compel Denied

Mohawk Industries, Inc. & Shaw Industries, Inc. v. Interface, Inc., Case No. 4:07-cv-0212 (N.D. Ga. Nov. 6, 2008) (Murphy, J.)*

Plaintiffs Mohawk and Shaw claim that Defendant Interface falsely marked certain of its carpet tile products as being covered by Defendant’s patent. Defendant asserts that its marking of non-covered products was the result of mistake. In a previous Order (discussed here), Judge Murphy concluded that Defendant had waived the attorney-client privilege as to certain communications between Defendant’s employee, Jones, and its in-house counsel that may have led to Jones’ understanding as to which products were covered by the patent and needed to be marked. As a result, the Court granted Plaintiffs’ motion to compel discovery on this topic.

After the Court’s Order, Plaintiffs redeposed several of Defendant’s witnesses. During these depositions, Defendant’s counsel objected to a number of questions as exceeding the scope of the Court’s Order. Plaintiffs, believing that such questions were within the scope of the Court’s Order, filed this Motion seeking an order compelling the witnesses to answer.

The Court denied Plaintiffs’ Motion, finding that because (1) Plaintiffs had had several opportunities to question the witnesses, (2) the witnesses had testified that they could not recall key facts about the communications at issue, and (3) the parties’ history of discovery disputes indicated that further depositions would likely only result in more motions to compel, an order compelling additional discovery was not warranted.

*Disclosure: My firm, Alston & Bird, represents Plaintiff Mohawk in this case.

Claim Construction Order

Sothern Mills, Inc. v. Polartec, LLC, Case No. 1:07-cv-0893 (N.D. Ga. Nov. 25, 2008) (Martin, J.)

Judge Martin construed a number of disputed claim terms from U.S. Patent No. 5,727,401, relating to a fire resistant fabric for use in firefighters’ uniforms. The construed terms included “3-end knit,” “stitch yarns,” “tie yarns,” “nap yarns,” “intermediate moisture barrier layer,” “face side,” “to form a fleece,” “knitted face layer,” “napped back layer,” and “face yarns.”