New Northern District of Georgia Patent Cases

• Molnlycke Health Care AB & Molnlycke Health Care US, LLC v. Smith & Nephew, Inc., Case No. 1:08-cv-03838 (N.D. Ga. Filed Dec. 19, 2008) (Pannell, Jr., J.) - Patent infringement suit involving U.S. Patent No. 5,635,201 (Wound Dressing). Plaintiffs are represented by the Needle & Rosenberg IP Practice of Ballard Spahr of Atlanta.

New Northern District of Georgia Patent Cases

• Data:)Comm Electronics, Inc. v. Skywalker Communications, Inc., Case No. 1:08-cv-03811 (N.D. Ga. Filed Dec. 17, 2008) (Carnes, J.) - Patent infringement suit involving U.S. Patent No. 7,390,964 (Wall Plate with Integral Nose for Electrical Cable) and U.S. Design Patent No. 554,475 (same). Plaintiff is represented by Thomas, Kayden, Horstemeyer & Risley, LLP of Atlanta.

Data:)Comm Electronics has recently filed suit in this district against three other entities to assert the ‘475 patent and/or the ‘964 patent, but each of these cases appears to have closed:

• Case No. 1:08-cv-2412 against Arlington Industries, Inc. (Thrash, Jr., J.) – No docket entries since the Complaint was filed on July 25, 2008 asserting only the ‘964 patent.


• Case No. 1:08-cv-2630 against Electronic Custom Distributors, Inc. d/b/a Direct Connect (Batten, J.) – Suit dismissed without prejudice on November 6, 2008.


• Case No. 1:08-cv-2827 against HD-Products, Inc. d/b/a Powerbridge Solution (Batten, J.) – Suit dismissed without prejudice on November 26, 2008.

New Northern District of Georgia Patent Cases

• Selecto, Inc. v. Everpure, LLC & Pentair Filtration, Inc., Case No. 1:08-cv-03800 (N.D. Ga. Filed Dec. 16, 2008) (Camp, J.) - Patent infringement suit involving U.S. Patent Nos. 7,229,552 and 7,429,326 (Water Purification Apparatus and System). Plaintiff is represented by Weatherly Kerven & Seigel, LLC of Atlanta.

Order on Motion for Partial Summary Judgment that Certain Items are Not Prior Art

Flo Healthcare Solutions, LLC v. Rioux Vision, Inc., Case No. 1:06-cv-2600 (N.D. Ga. Oct. 8, 2008) (Thrash, Jr., J.)

In this case, Plaintiff Flo Healthcare Solutions LLC (“Flo”) claims that Rioux Vision, Inc. (“Rioux”) has infringed U.S. Patent No. 6,721,178 relating to a mobile clinical workstation. Rioux asserts, as one of its defenses, that the ‘178 patent is invalid in view of certain printed publications and products, which Rioux identified in its invalidity contentions filed pursuant to the Local Patent Rules. Before the Court was Flo’s motion for summary judgment on various issues, several of which were not opposed by Rioux. Rioux did oppose Flo’s motion for partial summary judgment that several of the items identified by Rioux are not prior art to (and thus cannot be used to argue the invalidity of) the ‘178 patent.

At issue were four marketing brochures from third-party providers of medical workstations. Rioux contended that the marketing brochures constituted “printed publications” under Sections 102(a) and 102(b) and that the products described in the marketing brochures constituted products “known or used by others” under Section 102(a) and “in public use or on sale” under Section 102(b). In support of two of the brochures, Rioux presented declarations from representatives of the third-parties stating that the brochures were distributed to customers and handed out at trade shows. For the other two brochures, Rioux said it was attempting to obtain evidence to authenticate the brochures and sought additional time to gather such evidence under Rule 56(f).

Prior Art Sufficiently Identified Under Local Patent Rules: The Court held that the two brochures with supporting declarations were admissible prior art publications because the evidence demonstrated that the brochures existed and were publicly accessible during the relevant time period. The Court rejected Flo’s argument that the brochures were inadmissible because Rioux failed to disclose the supporting declarations in its invalidity contentions or interrogatory responses. According to the Court, Rioux met the Local Patent Rules’ requirement for invalidity contentions by providing basic information regarding the “identity of each item of prior art” and was not limited by the Federal Rules of Civil Procedure to the evidence disclosed in its interrogatory answers.

Marketing Brochures Were Not Self-Authenticating: The Court also granted Rioux’s request under Rule 56(f) for more time to authenticate the other two brochures. Notably, the Court concluded that without additional evidence, the brochures themselves are unauthenticated, suggesting that they would be inadmissible for failure to show that the brochures were sufficiently accessible to the public to qualify as a prior art “printed publications.”

Product Marketing Brochures Insufficient to Prove that Products Themselves Qualify as Prior Art: Finally, the Court held that Rioux’s evidence regarding the alleged prior art products, which consisted solely of the marketing brochures describing the products, was insufficient to demonstrate that the products themselves meet the “known or used by others” or “in public use” requirements under Section 102. Accordingly, the Court granted Flo’s motion for partial summary judgment that the products are not prior art to the ‘178 patent.

Motion to Strike Errata Sheet to Expert’s Deposition Transcript Granted

Chemfree Corp. v. J. Walter, Inc. & J. Walter Co., Ltd., Case No. 1:04-cv-3711 (N.D. Ga. Sept. 30, 2008) (Camp, J.)

After taking the deposition of Plaintiff’s expert, Defendants filed a motion for summary judgment, arguing that the patent-in-suit is invalid for lack of enablement. Six days later, Plaintiff’s expert submitted a 40-page deposition errata sheet which, according to the Court, contained changes to 87 separate portions of his deposition transcript, very few of which where mere spelling errors or errors in transcription. Defendants moved to strike those portions of the errata sheet that contradicted the expert’s deposition testimony.

Substantive Changes to Deposition Testimony are Suspect if Made In Response to a Motion for Summary Judgment: Judge Camp began his analysis by noting that although courts are split on when it is appropriate to allow deponents to substantively change their deposition testimony (the Eleventh Circuit has not directly held what standard should apply), many courts agree that substantive changes to deposition testimony are particularly suspect when they are offered in response to a motion for summary judgment.

“A Deposition is Not a Take Home Examination”: The Court found that several portions of the errata sheet contradicted, or at least substantively changed, Plaintiff’s expert’s prior testimony, and held that the expert’s stated reasons for making the proposed changes were insufficient. Specifically, the Court rejected the expert’s explanation that the new testimony provided more complete answers formulated after taking more time to respond to the questions. Judge Camp felt that “taking more time to formulate a response” is what most courts find troubling with contradictory errata sheets and quoted one court’s counsel that “[a] deposition is not a take home examination.” Further, the Court did not accept the expert’s claims that his new answers were better because he was not prepared for certain questions, gave rushed answers, and misunderstood certain questions during the deposition. If the expert felt unprepared or confused during the deposition, he could have said so, concluded the Court.

For these reasons, the Court granted Defendants’ Motion to Strike the errata sheet.

Motion to Compel Granted Based on "At Issue" Waiver of Attorney-Client Privilege

Mohawk Industries, Inc. & Shaw Industries, Inc. v. Interface, Inc., Case No. 4:07-cv-0212 (N.D. Ga. Sept. 29, 2008) (Murphy, J.)*

Plaintiffs Mohawk and Shaw claim that Defendant Interface falsely marked certain of its carpet tile products as being covered by U.S. Patent No. 6,908,656. Defendant asserts that its marking of non-covered products was the result of mistake. During discovery, Defendant produced an email from an employee, Jones, with instructions to other employees regarding which products to mark with the ‘656 patent number. Plaintiffs’ counsel deposed Jones about the email and inquired as to his understanding of what products were covered by the patent. Jones indicated that, at some point, his understanding came from a conversation with Defendant’s in-house counsel. When Plaintiffs’ counsel asked about this conversation, Defendant’s counsel objected on the grounds of attorney-client privilege. Plaintiffs filed this Motion to Compel, arguing that Defendant had waived the attorney client privilege and must disclose all communications between in-house counsel and Defendant’s employees regarding the decision of which products to mark.

“At Issue” Waiver of Attorney Client Privilege: The Court found that Jones had revealed the substance of his conversation with in-house counsel and, as a result, Defendant waived the attorney client privilege as to that particular conversation. Further, the Court held that Defendant had waived the attorney client privilege as to all communications between Jones and in-house counsel prior to Jones’ sending of the email because Defendant had “inject[ed] a new factual issue into the case that, in fairness, requires disclosure of the privileged materials.” Specifically, the Court found that by contending that the decision to mark its tiles was based on Jones’ mistake regarding which tiles were covered by the patent, Defendant injected into the case the question of what Jones knew about which products were covered and when he knew this information. Although the Defendant had not raised an affirmative defense that it relied on the advice of counsel in its decision to mark, the Court held that injecting these factual issues into the case was sufficient to waive the privilege and, in fairness, require disclosure of the communications to the Plaintiffs.

The Court therefore granted Plaintiffs’ Motion to Compel and ordered that discovery be opened on the topic of Jones’ conversation with in-house counsel and that discovery be had relating to any communications between Jones and in-house counsel prior to the sending of Jones’ email.

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

New Northern District of Georgia Patent Cases

• Unibind Limited & Peleman Industries, Inc. v. Provo Craft and Novelty, Inc., Case No. 1:08-cv-3713 (N.D. Ga. Dec. 8, 2008) (Evans, J.) - Patent infringement suit involving U.S. Patent No. 5,425,554 (Book Binding Element). Plaintiffs are represented by Seyfarth Shaw of Atlanta.

Motion to Dismiss for Lack of Personal Jurisdiction Granted

Datascape, Inc. v. Sprint Nextel Corp., Sprint Spectrum, L.P., & Sprint Solutions, Inc., Case No. 1:07-cv-0640 (N.D. Ga. Sept. 29, 2008) (Cooper, J.)

Plaintiff Datascape brought this patent infringement suit against Sprint Nextel and two of its subsidiaries, Sprint Spectrum and Sprint Solutions. Before the Court was Sprint Nextel’s motion to dismiss it from the action for lack of personal jurisdiction. Sprint Nextel, a Kansas corporation with its principal place of business in Virginia, argued that it is simply a holding company and lacked the “minimum contacts” with Georgia required to justify personal jurisdiction. In support of its motion, Sprint Nextel submitted a declaration from its Assistant Secretary who stated that the business activities of Sprint Nextel relate primarily to owning stock in its subsidiaries and that all business operations in Georgia are conducted by its subsidiaries, including the other named defendants in this case.

Datascape argued that personal jurisdiction was justified because Sprint Nextel (1) appeared as a defendant in a different lawsuit in the Northern District of Georgia and admitted to providing communications services in Georgia and (2) advertised its services on an interactive website available to residents of Georgia.

Based on the evidence presented, the Court was “unable to find that Sprint Nextel has contacts with the State of Georgia sufficient to confer either general or specific jurisdiction.” With regard to Sprint Nextel’s admissions in the prior lawsuit, the Court held that such unsworn statements were not binding in this case and, even if binding, were outweighed and directly contradicted by the testimony given under oath by Sprint Nextel’s Assistant Secretary. As for Sprint Nextel’s website, although the website “paint[ed] a picture of Sprint Nextel as being more than a holding company,” the Court held that “the exercise of personal jurisdiction based upon the website, alone, would not be proper.”

New Northern District of Georgia Patent Cases

• Flo Healthcare Solutions, LLC v. Omnicell, Inc., Case No. 1:08-cv-3710 (N.D. Ga. Dec. 9, 2008) (Thrash, Jr., J.) - Patent infringement suit involving U.S. Patent No. 6,721,178 (Mobile Clinical Workstation). Plaintiff Flo Healthcare Solutions is represented by Chorey Taylor & Feil of Atlanta.
  
  Flo Healthcare is also asserting the ‘178 patent against Rioux Vision, Inc. in this district, in a case that is set for trial beginning January 5, 2009. (Case No. 1:06-cv-02600.) See my discussion of Judge Thrash’s Order construing the ‘178 patent here.

Plaintiff’s Motion to Compel Denied; Defendant’s Motion to Enforce Subpoena and Compel Production Granted

Romala Stone, Inc. v. The Home Depot U.S.A., Inc., Case No. 1:04-cv-2307 (N.D. Ga. Sept. 19, 2008) (Story, J.)

Plaintiff’s Motion to Compel: Romala Stone sought an order compelling Home Depot to produce documents relevant to the calculation of damages in this patent infringement and breach of contract case. Romala Stone contended that Home Depot was withholding documents responsive to a number of Romala Stone’s discovery requests. Home Depot, on the other hand, claimed that it had produced all non-privileged and relevant documents. After considering the arguments and evidence, the Court concluded, without much discussion, that Romala Stone had failed to establish that Home Depot was withholding any non-privileged documents relevant to the remaining claims.

Defendant’s Motion to Enforce Subpoena: Home Depot sought an order compelling Romala Stone and non-party Navigant Consulting, Inc. to produce documents responsive to Home Depot’s subpoena to Navigant. Romala Stone originally hired Navigant in a “consulting” capacity, but later engaged Navigant in an “expert” capacity and submitted a Rule 26 expert report setting forth Navigant’s opinion on damages. Romala Stone instructed Navigant to withhold production of any documents relating to its consulting engagement on the basis of privilege. The Court found such withholding unjustified because Romala Stone failed to show that there was a demarcation between Navigant’s roles of expert consultant and testifying expert. Upon review of the record, the Court concluded that Navigant’s consulting services were directly related to the same issues, and were performed by many of the same employees, as Navigant’s expert services. Accordingly, the Court held that documents relating to Navigant’s consulting engagement were subject to discovery.

Motion to Compel Denied

Mohawk Industries, Inc. & Shaw Industries, Inc. v. Interface, Inc., Case No. 4:07-cv-0212 (N.D. Ga. Sept. 18, 2008) (Murphy, J.)*

In this case, Plaintiffs Mohawk and Shaw claim that Defendant Interface falsely marked certain of its carpet tile products as being covered by U.S. Patent No. 6,908,656. Before the Court was Plaintiffs’ motion to compel Defendant to produce “Work in Progress” (“WIP”) schedules that were used during the production of Defendant’s carpet tiles. The WIP schedules included a special instruction to line operators that indicated whether the ‘656 patent number should be printed on the back of the tile. Plaintiffs contended that the WIP schedules should be produced because they were responsive to discovery requests and relevant to determining whether Defendant marked non-covered carpet tiles with the ‘656 patent number.

Defendant opposed production of the WIP schedules, asserting that all hard copies were discarded a month after being used and that any electronic records were unreliable. With regard to the electronic records, Defendant contended that when a new instruction is entered into its computer system, the system overwrites any previous instruction; thus, re-creating the WIP schedules electronically would not accurately show the instructions used on the day of production. Plaintiffs argued that any dispute concerning the reliability of re-created WIP schedules should go to the weight of the evidence, not to their relevance or admissibility.

The Court agreed with the Plaintiffs that the WIP schedules were relevant to the issues in the case, but declined to compel their production because (1) re-creating the WIP schedules electronically would be burdensome to the Defendant and (2) due to the overwrite characteristic of Defendant’s computer system, the re-created documents would be duplicative of other documents that had already been produced in the litigation.

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

New Northern District of Georgia Patent Cases

• BabyBjorn AB v. Regal Lager, Inc., Case No. 1:08-cv-3680 (N.D. Ga. Dec. 3, 2008) (Forrester, J.) - Patent infringement suit involving U.S. Patent No. 5,490,620 (Child-Supporting Shoulder Harness). Plaintiff BabyBjorn is represented by Kilpatrick Stockton of Atlanta.

New Northern District of Georgia Patent Cases

• Black & Decker Inc. & Black & Decker (U.S.) Inc. v. Gypsum Management and Supply, Inc. & Tool Source Warehouse, Inc., Case No. 1:08-cv-03487 (N.D. Ga. Filed Nov. 12, 2008) (Martin, J.) - Patent infringement suit involving U.S. Patent Nos. 5,545,080 (Motorized Sander) and 5,690,545 (Motorized Rotary Tool). Plaintiffs are represented by Swift Currie McGhee & Hiers of Atlanta and Niro, Scavone, Haller, & Niro of Chicago.
• Telematics Corporation v. Datatrac Corporation, Discrete Wireless, Inc., Air-Trak, Inc., Blue Sky Network, Inc., Cemtek Com, Inc., Cheetah Software Systems, Inc., Fleet Management Solutions, Inc., GPS Insight, L.L.C., Horizon Technologies, L.L.C., Navtrak, Inc., Sagequest, L.L.C., & Telogis, Inc., Case No. 1:08-cv-03504 (N.D. Ga. Filed Nov. 13, 2008) (Carnes, J.) - Patent infringement suit involving U.S. Patent Nos. 5,428,546 (Method and Apparatus for Tracking Vehicle Location); 5,594,650 (Method and Apparatus for Tracking Vehicle Location); 5,758,313 (Method and Apparatus for Tracking Vehicle Location); 5,884,216 (Method and Apparatus for Tracking Vehicle Location); 5,922,040 (Method and Apparatus for Fleet Management); and 6,088,648 (Method and Apparatus for Tracking Vehicle Location). Plaintiff Telematics is represented by Thomas, Kayden, Horstemeyer & Risley, LLP of Atlanta.
• Winware, Inc. v. Autocrib, Inc., Case No. 1:08-cv-03582 (N.D. Ga. Filed Nov. 20, 2008) (Duffey, Jr., J.) - Patent infringement suit involving U.S. Patent No. 7,337,963 (Portal System for a Controlled Space). Plaintiff WinWare is represented by Thomas, Kayden, Horstemeyer & Risley, LLP of Atlanta.