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.
Wednesday, May 6, 2009
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.
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.
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.
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.
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