- CCH Associates, LLC, Cardiovascular Ventures, Inc., & Cates v. Datascope Corp., Case No. 1:08-cv-3313 (N.D. Ga. Filed Oct. 24, 2008) (Carnes, J.) – Patent Infringement Suit Involving U.S. Patent Nos. 6,056,768; 6,162,240; and 6,699,261 (Blood Vessel Sealing System). Plaintiffs are represented by King & Spalding of Atlanta.
Catch Curve, Inc. v. Graphnet, Inc., Case No. 1:06-cv-2386 (N.D. Ga. Sept. 16, 2008) (Cooper, J.)Plaintiff Catch Curve moved for a default judgment or, in the alternative, for an order compelling Defendant Graphnet to comply with its discovery obligations and for sanctions. Catch Curve argued that such relief was warranted because Graphnet’s non-infringement contentions and invalidity contentions were inadequate and failed to comply with the Local Patent Rules. After finding Graphnet’s disclosures “grossly non-complaint,” the Court granted Catch Curve’s alternative request to compel Graphnet’s compliance and for sanctions.
Graphnet filed the contentions at issue after the Court (1) permitted two different sets of attorneys to withdraw from the case based on Graphnet’s failure to communicate with its counsel and (2) issued an order requiring Graphnet to obtain new counsel and file its non-infringement and invalidity contentions within 30 days of its new counsel’s appearance. Graphnet filed a “Response to Infringement Contentions,” a “Response to Chart of Claims” and “Initial Invalidity Contentions” by the deadline ordered by the Court and stated that it intended to supplement these materials with additional information.
Upon reviewing these materials, the Court found that, even with the additional time granted by the Court’s order, Graphnet failed to comply with the disclosure obligations of the Local Patent Rules. Specifically, Graphnet’s Response to Infringement Contentions was found to contravene Local Patent Rule 4.2 by (1) lacking a chart responsive to Catch Curve’s infringement contentions, (2) failing to acknowledge or deny whether each claim element was found in the accused products, and (3) failing to include documentation sufficient to show the operation of the accused products. Graphnet’s Response to Chart of Claims was deemed inadequate (and contrary to Rule 11) by repeating a “blanket denial” that “this element is not present within the accused service.” Further, Graphnet’s Initial Invalidity Contentions were found insufficient by (1) failing to identify each item of prior art alleged to show obviousness, (2) failing to indicate whether invalidity was alleged based on anticipation or obviousness, and (3) failing to include a chart identifying where each element of the asserted claims was found in the prior art.
Notwithstanding the Court’s opinion that Graphnet’s disclosures were “grossly non-compliant” and that Graphnet’s purported supplementation was a “knowing and willful” violation of the Court-ordered deadline, the Court declined to impose the harsh sanction of default judgment. Instead, the Court granted Catch Curve’s alternative request for an order compelling Graphnet to comply with the Local Patent Rules and pay Catch Curve’s costs and attorneys’ fees incurred in bringing the motion.
Datascape, Inc. v. Sony Ericsson Mobile Communications, Inc., Case No. 1:05-cv-03317 (N.D. Ga. Sept. 12, 2008) (Cooper, J.)Judge Cooper granted in part Plaintiff Datascape’s Motion to Compel and ordered Defendant Sony Ericsson to supplement its responses to several of Datascape’s document requests. The Court also ordered Sony Ericsson to pay Datascape’s expenses and attorneys’ fees incurred in connection with the Motion to Compel because the Court found that Sony Ericsson took “substantially unjustified” positions prior to and in defense of the Motion to Compel and “exhibited dilatory behavior” during discovery.
The discovery disputes at issue arose in April 2006 when Sony Ericsson responded to Datascape’s first set of document requests without producing any documents. Sony Ericsson explained that because it “is a large company with many employees, documents, and records” and its “investigation and discovery is necessarily time consuming,” it would produce responsive documents “on a rolling basis as relevant information is uncovered.” Datascape took issue with this response, believing that Sony Ericsson should have produced all responsive documents within 30 days after service of the requests. After attempts to resolve the issues proved unsuccessful, Datascape filed its Motion to Compel.
Stating that Documents will be Produced on a Rolling Basis is Insufficient: The Court agreed with Sony Ericsson that, given the volume of discovery at issue, 30 days was not enough time for Sony Ericsson to review and produce all responsive documents. Nevertheless, the Court held that simply stating that documents would be produced on a rolling basis was insufficient. In the Court’s view, Sony Ericsson should have alleviated Datascape’s concern that document production would go on indefinitely without court intervention. The Court advised that:Whenever a party anticipates that producing documents on a rolling basis will be necessary, that party should at least propose to the requesting party a specific plan or schedule for producing the documents and an expected completion date for the production.
Given that Sony Ericsson took over two years to respond to Datascape’s requests, and that certain requests remained in dispute, the Court found that Sony Ericsson “took an unjustified position from the outset regarding the timing of its production.”
Local Patent Rules Relating to Infringement Contentions Do Not Excuse Production of “Technical Documents”: The Court also found that Sony Ericsson took an unjustified position with regard to the production of “technical documents.” Sony Ericsson argued that it did not need to produce responsive technical documents until it responded to Datascape’s infringement contentions, relying on Patent Local Rule 4.2 which requires that a response to infringement contentions include “a copy of source code, specifications, schematics, flow charts, artwork, formulas, or other documentation” sufficient to show operation of the accused system. The Court rejected this interpretation, noting that Patent Local Rule 3.1(a) provides that “[t]hese Rules do not excuse any party from responding to any proper discovery request made under the Federal Rules of Civil Procedure.”
“Control” Over a Parent Company’s Documents May be Evidenced by Producing a Document from the Parent Company and Sharing the Same Legal Counsel: Sony Ericsson is co-owned by two parent corporations, Telefonaktiebolaget LM Ericsson (“Ericsson”) and Sony Corporation (“Sony”). Under Federal Rule of Civil Procedure 34(a), Sony Ericsson must produce responsive documents belonging to its parent corporations if the documents are within Sony Ericsson’s “possession, custody, or control.” Control is defined broadly as the “ability to obtain upon demand documents in the possession of another.” Datascape argued that such control was established in this case and that Sony Ericsson should be compelled to produce documents from its parents, Ericsson and Sony. The Court agreed with respect to Ericsson, finding sufficient evidence of control based on (1) Sony Ericsson’s production of at least one document that pre-dated Sony Ericsson’s formation and was in Ericsson’s possession and (2) the fact that Sony Ericsson and Ericsson share the same legal counsel. According to the Court, this showed that Sony Ericsson at least had the “practical ability” to obtain documents from Ericsson. The Court found insufficient evidence of Sony Ericsson’s control over documents belonging to Sony and declined to compel their production.
- Georgia-Pacific Gypsum, LLC v. New NGC, Inc., Case No. 4:08-cv-00166 (N.D. Ga. Oct. 10, 2008) (Murphy, J.) – Patent infringement suit involving U.S. Patent Nos. 6,770,354 (Mat-Faced Gypsum Board) and 6,808,793 (Pre-Coated Mat-Faced Gypsum Board). Plaintiff is represented by the Law Offices of Edward Hine, Jr. of Rome and Jones Day of Atlanta.
KEG Techs., Inc. et al. v. Laimer, et al., Case No. 1:08-cv-393 (N.D. Ga. Sept. 9, 2008) (Batten, J.)Defendants sought to reassign this case to Judge Story, who presided over an earlier-filed case (KEG Techs., Inc. et al. v. Laimer, et al., Case No. 1:04-cv-253) that involved two of the same patents and three of ten of the same defendants. Defendants relied on Rule 905-2 of the Court’s Internal Operating Procedures which provides that “related” cases must be assigned to the same judge. Specifically, Defendants argued that this case is related to the 2004 case under subsections (2) and (3) of Rule 905-2.
Issue of Fact Must Be Identical – Not Enough to Involve the Same Legal Issue: Subsection (2) of Rule 905-2 provides that cases are related whenever the later-filed case involves “[t]he same issue of fact or arises out of the same event or transaction included in an earlier numbered pending suit.” This subsection is narrowly defined, however, to specify that “a case is NOT related if it has the same LEGAL issue; if any issue of fact is only similar rather than identical; or if the event or transaction is only similar rather than identical.” The Court found that these requirements were not satisfied because this case involves patent infringement allegations relating to several products and against a number of defendants that were not involved in the 2004 case.
Earlier-filed Case Must Be Pending: Subsection (3) of Rule 905-2 provides that cases are related if the later-filed case involves “[t]he validity or infringement of the same patent, copyright, or trademark included in an earlier numbered pending suit.” Here, however, the 2004 case was no longer “pending”; it had been terminated in 2007 after entry of a default judgment. Accordingly, the Court held subsection (3) inapplicable. The Court deemed this a fair result, noting that because Judge Story disposed of the 2004 case early and on procedural grounds, reassigning the case would not promote judicial economy.
McKesson Information Solutions LLC v. Epic Systems Corp., Case No. 1:06-CV-2965 (N.D. Ga. Aug. 29, 2008) (Camp J.)Judge Camp construed the claims of U.S. Patent No. 6,757,898 relating to a method for a health-care provider and a patient to communicate automatically and electronically with each other over the internet.
The Court rejected several of Epic’s (the accused-infringer’s) proposed constructions as overly broad and not specific to the patented invention. For example, Epic proposed constructions for the preamble terms “health-care provider” and “plurality of users” that would include not only medical doctors and patients, respectively, but also dentists, physical therapists and chiropractors as “health-care providers” and clients and consumers as “users.” The Court acknowledged that the invention described in the specification could be used for such similar services, but held that the claimed invention, by using the term “health-care” provider, was not so broadly defined.
Similarly, the Court disagreed with Epic’s proposed construction of “provider/patient interface.” The parties agreed that the interface is a web page that permits the provider and the user to communicate, but disputed what information is exchanged over the interface. The Court found that Epic’s proposed construction, which stated that the interface allows for the exchange of “information,” was overly broad. The Court agreed with McKesson’s proposed construction that the information being exchanged is “inquiries, responses, data, services, and information,” which was repeatedly recited in the specification.
For other terms, the Court rejected both parties’ proposed constructions and adopted its own. For instance, the Court adopted its own construction of the term “mapped content” based on the context in which that term was used in the claim. In addition, the Court construed the phrase “said provider/patient interface providing a fully automated mechanism for generating a personalize page or area” in a manner that recognized the distinction between the invention and the prior art and “excluded much of the redundant, unnecessary language proposed by the parties.”
Also of interest, the Court construed claim 2, which claimed “[t]he method of claim 1, wherein the method is implemented by an electronic provider-patient interface system (the ‘ePPi System’),” as being expressly limited to the preferred embodiment of the invention. The Court found that a person of ordinary skill in the art would regard “the ePPi system” as the entire invention claimed and thus incorporated into the claim the four functional components of the ePPi system as set forth in the specification.
