Verint Americas, Inc. (d/b/a Witness Actionable Solutions) v. NICE Systems, Inc. et al., No. 1:06-cv-126 (N.D. Ga. May 16, 2008) (Batten, J.)
Judge Batten presided over a five-day jury trial resulting in a verdict for Plaintiff Verint Americas, Inc. (formerly Witness Systems, Inc.) on its patent infringement claims. The jury determined that certain features of Defendants’ NICE Systems, Inc.’s and NICE Systems, Ltd.’s product suite infringe Plaintiff’s U.S. Patent No. 6,404,857. The jury also awarded Plaintiff $3.3 million in damages.
Monday, May 19, 2008
Tuesday, May 13, 2008
Temporary Restraining Order Granted
AMVAC Chem. Corp. v. Aceto Agricultural Chems. Corp. et al., No. 1:08-cv-1617 (N.D. Ga., May 8, 2008) (Cooper, J.)
Judge Cooper granted Plaintiff AMVAC Chemical Corporation’s (“AMVAC’s”) Motion for Temporary Restraining Order and enjoined Defendant Aceto Agricultural Chemicals Corporation (“Aceto”) from using or offering any products claimed in the patent-in-suit, which relates to a delivery system for pesticides. The Court concluded that AMVAC satisfied the four elements required to prove entitlement to a temporary restraining order in patent cases, namely, (1) a reasonable likelihood of success; (2) irreparable harm; (3) the balance of harms is in the movant’s favor; and (4) the public interest is favorably impacted.
As to the first element, success on the merits, Aceto (which previously held a license under the patent-in-suit from the former patent owner) did not challenge the validity of the patent-in-suit and admitted that it continues to offer pesticides in a delivery system covered by the patent-in-suit. Aceto asserted an affirmative defense of patent exhaustion, but Judge Cooper found that Aceto had not met its burden of establishing that the defense applied. Therefore, the Court deemed AMVAC likely to succeed on the merits of its patent infringement claim.
As to the second element, irreparable harm, the Court found that AMVAC presented sufficient evidence of loss of customers and goodwill to demonstrate the potential for actual irreparable harm, including evidence that one of AMVAC’s customers contacted AMVAC and demanded a substantial rebate in light of product available from Aceto’s distributors. Consequently, the Court did not need to decide whether AMVAC was entitled to a presumption of irreparable harm. (In eBay Inc. v. MercExchange, 126 S. Ct. 1837 (2006), the Supreme Court unanimously rejected the Federal Circuit’s application of such a presumption, at least in the context of a permanent injunction, finding that no justification existed in the Patent Act for departing from the traditional considerations applicable to requests for equitable relief.)
After finding that the remaining elements were met, the Court issued a temporary restraining order against Aceto to be effective upon AMVAC’s posting of a $500,000 security bond and for ten-days thereafter. The Court also noted that it will coordinate with the parties to schedule a hearing on AMVAC’s Motion for a Preliminary Injunction and will consider increasing the amount of the bond if a preliminary injunction is entered.
Judge Cooper granted Plaintiff AMVAC Chemical Corporation’s (“AMVAC’s”) Motion for Temporary Restraining Order and enjoined Defendant Aceto Agricultural Chemicals Corporation (“Aceto”) from using or offering any products claimed in the patent-in-suit, which relates to a delivery system for pesticides. The Court concluded that AMVAC satisfied the four elements required to prove entitlement to a temporary restraining order in patent cases, namely, (1) a reasonable likelihood of success; (2) irreparable harm; (3) the balance of harms is in the movant’s favor; and (4) the public interest is favorably impacted.
As to the first element, success on the merits, Aceto (which previously held a license under the patent-in-suit from the former patent owner) did not challenge the validity of the patent-in-suit and admitted that it continues to offer pesticides in a delivery system covered by the patent-in-suit. Aceto asserted an affirmative defense of patent exhaustion, but Judge Cooper found that Aceto had not met its burden of establishing that the defense applied. Therefore, the Court deemed AMVAC likely to succeed on the merits of its patent infringement claim.
As to the second element, irreparable harm, the Court found that AMVAC presented sufficient evidence of loss of customers and goodwill to demonstrate the potential for actual irreparable harm, including evidence that one of AMVAC’s customers contacted AMVAC and demanded a substantial rebate in light of product available from Aceto’s distributors. Consequently, the Court did not need to decide whether AMVAC was entitled to a presumption of irreparable harm. (In eBay Inc. v. MercExchange, 126 S. Ct. 1837 (2006), the Supreme Court unanimously rejected the Federal Circuit’s application of such a presumption, at least in the context of a permanent injunction, finding that no justification existed in the Patent Act for departing from the traditional considerations applicable to requests for equitable relief.)
After finding that the remaining elements were met, the Court issued a temporary restraining order against Aceto to be effective upon AMVAC’s posting of a $500,000 security bond and for ten-days thereafter. The Court also noted that it will coordinate with the parties to schedule a hearing on AMVAC’s Motion for a Preliminary Injunction and will consider increasing the amount of the bond if a preliminary injunction is entered.
Motion to Dismiss Denied – Request for Attorneys’ Fees Under Section 285 May be Pled as a Separate Claim
Insituform Techs., Inc. et al. v. Amerik Supplies, Inc. et al., No. 1:08-cv-333 (N.D. Ga., May 6, 2008) (Batten, J.)
In their Counterclaims, Defendants plead as count two a claim for attorneys’ fees and expenses pursuant to 35 U.S.C. § 285, which authorizes such an award to the prevailing party in “exceptional” patent infringement cases. Plaintiffs moved to dismiss count two under Federal Rule of Civil Procedure 12(b)(6) for being procedurally improper, arguing that the proper course for requesting attorneys’ fees is by filing a motion after judgment is entered or by listing the request as a remedy in the prayer for relief, rather than through an affirmative claim or count in a counterclaim. Judge Batten disagreed with the Plaintiffs, noting that the Federal Circuit has described a claim for attorneys’ fees under Section 285 as “a separate claim.” The Court explained that “[o]nce the case has been resolved and a prevailing party has been identified, that party may then move the court for an award of fees pursuant to 35 U.S.C. § 285, but § 285 does not bar a party from pleading the request for fees as a separate claim for relief.” (Order at 3.) Thus, the Court denied the Plaintiffs’ Motion to Dismiss.
In the alternative to an order dismissing count two, the Plaintiffs moved for an order under Federal Rule of Civil Procedure 12(e) requiring Defendants to make a more definite statement with respect to count two. Defendants responded by seeking leave to amend their counterclaims to provide more detail and submitted a proposed amendment that alleged four separate instances in which they claim that the patentee had acted in a manner sufficient to render the case “exceptional.” Upon review of the proposed amendment, the Court granted Defendants’ request for leave to amend their counterclaims.
In their Counterclaims, Defendants plead as count two a claim for attorneys’ fees and expenses pursuant to 35 U.S.C. § 285, which authorizes such an award to the prevailing party in “exceptional” patent infringement cases. Plaintiffs moved to dismiss count two under Federal Rule of Civil Procedure 12(b)(6) for being procedurally improper, arguing that the proper course for requesting attorneys’ fees is by filing a motion after judgment is entered or by listing the request as a remedy in the prayer for relief, rather than through an affirmative claim or count in a counterclaim. Judge Batten disagreed with the Plaintiffs, noting that the Federal Circuit has described a claim for attorneys’ fees under Section 285 as “a separate claim.” The Court explained that “[o]nce the case has been resolved and a prevailing party has been identified, that party may then move the court for an award of fees pursuant to 35 U.S.C. § 285, but § 285 does not bar a party from pleading the request for fees as a separate claim for relief.” (Order at 3.) Thus, the Court denied the Plaintiffs’ Motion to Dismiss.
In the alternative to an order dismissing count two, the Plaintiffs moved for an order under Federal Rule of Civil Procedure 12(e) requiring Defendants to make a more definite statement with respect to count two. Defendants responded by seeking leave to amend their counterclaims to provide more detail and submitted a proposed amendment that alleged four separate instances in which they claim that the patentee had acted in a manner sufficient to render the case “exceptional.” Upon review of the proposed amendment, the Court granted Defendants’ request for leave to amend their counterclaims.
Monday, May 12, 2008
Motion in Limine Denied as Improper – Whether Prosecution History Estoppel Precludes Use of Doctrine of Equivalents is an Issue for Summary Judgment
Witness Systems, Inc. v. Nice Systems, Inc. et al., No. 1:06-cv-126 (N.D. Ga. May, 10, 2007) (Batten, J.)
The Defendants filed a Motion in Limine seeking to preclude the Plaintiff from relying on the doctrine of equivalents due to prosecution history estoppel. On a recommendation from the Special Master, Judge Batten concluded that whether prosecution history applies is an issue of law that should have been raised in a motion for summary judgment. The Court explained that “[m]otions in limine address evidentiary questions and are inappropriate devices for resolving substantive issues.” (Order at 3 (citation and quotations omitted).) The Court also cited a decision from the Eastern District of Missouri where that court denied a similar motion in limine after construing it as a “disguised” motion for summary judgment. (Order at 4.) As a result, the Court denied the Defendants’ Motion as untimely and improper.
The Defendants filed a Motion in Limine seeking to preclude the Plaintiff from relying on the doctrine of equivalents due to prosecution history estoppel. On a recommendation from the Special Master, Judge Batten concluded that whether prosecution history applies is an issue of law that should have been raised in a motion for summary judgment. The Court explained that “[m]otions in limine address evidentiary questions and are inappropriate devices for resolving substantive issues.” (Order at 3 (citation and quotations omitted).) The Court also cited a decision from the Eastern District of Missouri where that court denied a similar motion in limine after construing it as a “disguised” motion for summary judgment. (Order at 4.) As a result, the Court denied the Defendants’ Motion as untimely and improper.
New Northern District of Georgia Patent Cases
- May 8, 2008: Evans & Winfrey v. Kimberly-Clark/HuggiesTM, United States Patent and Trademark Office, Dudas & Weiss, No. 1:08-cv-01678 (N.D. Ga.) (Thrash, J.) – Correction of Inventorship
Thursday, May 8, 2008
Order Adopting Special Master’s Report and Recommendation on Defendants’ Motion for Summary Judgment of Non-Infringement
Witness Systems, Inc. v. Nice Systems, Inc. et al., No. 1:06-cv-126 (N.D. Ga. May, 7, 2007) (Batten, J.)
In this patent infringement action, the Defendants are accused of infringing the patent-in-suit by offering a product suite for use in a contact center that captures phone calls and emails and analyzes their content. The Defendants filed a Motion for Summary Judgment contending that the accused product suite does not meet, either literally or under the doctrine of equivalents, certain limitations in the asserted claims. Specifically, the Defendants argued that the claim limitation “communication traffic controller” required a hardware device that could not be found in the accused product because the accused product used a software application instead of hardware. Further, the Defendants asserted that the limitation “operating responsive to the analysis of recorded data” was not met because the accused product operated in response to input by a human user and not in response to the analysis of recorded data.
The Court appointed a Special Master to consider the Defendants’ Motion. The Special Master issued a Report and Recommendation (available here) concluding that there was a genuine issue of fact as to whether the accused product satisfied the “communication traffic controller” limitation. As for the “operating responsive to the analysis of recorded data” limitation, the Special Master found that an operation performed in response to input from a human user is not literally the same as an operation performed in response to the analysis of recorded data as required by the claim, but determined that a reasonable jury could find that such operations are equivalent. Consequently, the Special Master recommended that the Defendants’ Motion for Summary Judgment be granted on the basis that the accused product does not literally satisfy the “operating” limitation but that the Motion be denied on the basis that the accused product does not satisfy the “operating” limitation under the doctrine of equivalents.
In this patent infringement action, the Defendants are accused of infringing the patent-in-suit by offering a product suite for use in a contact center that captures phone calls and emails and analyzes their content. The Defendants filed a Motion for Summary Judgment contending that the accused product suite does not meet, either literally or under the doctrine of equivalents, certain limitations in the asserted claims. Specifically, the Defendants argued that the claim limitation “communication traffic controller” required a hardware device that could not be found in the accused product because the accused product used a software application instead of hardware. Further, the Defendants asserted that the limitation “operating responsive to the analysis of recorded data” was not met because the accused product operated in response to input by a human user and not in response to the analysis of recorded data.
The Court appointed a Special Master to consider the Defendants’ Motion. The Special Master issued a Report and Recommendation (available here) concluding that there was a genuine issue of fact as to whether the accused product satisfied the “communication traffic controller” limitation. As for the “operating responsive to the analysis of recorded data” limitation, the Special Master found that an operation performed in response to input from a human user is not literally the same as an operation performed in response to the analysis of recorded data as required by the claim, but determined that a reasonable jury could find that such operations are equivalent. Consequently, the Special Master recommended that the Defendants’ Motion for Summary Judgment be granted on the basis that the accused product does not literally satisfy the “operating” limitation but that the Motion be denied on the basis that the accused product does not satisfy the “operating” limitation under the doctrine of equivalents.
Both the Plaintiff and the Defendants filed Objections to the Special Master’s Report and Recommendation. Upon review of the pleadings de novo, Judge Batten found that the parties’ objections had no merit and that the Special Master’s factual and legal conclusions were correct. Judge Batten therefore adopted as the Court’s Order the Special Master’s Report and Recommendation on the Defendants’ Motion for Summary Judgment of Non-Infringement.
New Northern District of Georgia Patent Cases
- May 1, 2008: AMVAC Chemical Corp. v. Aceto Agricultural Chemical Corp. and John Does, No. 1:08-cv-01617 (N.D. Ga.) (Cooper, J.) – Patent Infringement
- May 1, 2008: Light Valve Solutions, L.L.C. v. EM Company, Alliance International Trade & Investment Group, Inc., BenQ America Corp., BenQ USA Corp., Boxlight Corp., Canon USA, Inc., Christie Digital Systems USA, Inc., Dukane Corp., Eiki International, Inc., Epson America, Inc., Hitachi America, Ltd., InFocus Corp., Liesegang Corp., Microtek Lab, Inc., Mitsubishi Digital Electronics America, Inc., Mitsubishi Electric and Electronics USA, Inc., NEC Display Solutions America, Inc., Pansonic Corporation of North America, Sanyo North America Corp., Sharp Electronics Corp., Toshiba America, Inc., and Viewsonic Corp., No. 1:08-cv-01618 (N.D. Ga.) (Camp, J.) – Patent Infringement
- May 2, 2008: Isotec International, Inc. v. Dimension One Spas, Inc., No. 1:08-cv-01626 (N.D. Ga.) (Carnes, J.) – Patent Infringement
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