September 12, 2023
By Shawn S. Chang; Pranav Godbole; Robert K. High; Max Mauldin; Sonja W. Sahlsten; Kevin D. Rodkey; †Bushra Haque and Michael Nielsen
This is part of a series of articles discussing recent orders of interest issued in IP cases by the United States District Courts in the Southeast
In WhereverTV, Inc. v. Comcast Cable Communications, LLC, No. 2:18-cv-00529-WFJ-NPM (M.D. Fla. June 5, 2023), Judge Jung granted Comcast Cable Communications, LLC’s Rule 50(a) Motion for Judgment as a Matter of Law, finding no literal infringement of U.S. Patent No. 8,656,431 (“’431 patent”) because WhereverTV failed to put forth evidence that Comcast’s accused product literally met the “adding of deleting channels” and “interactive program guide application installed on the device” limitations of claim 1.
At trial, WhereverTV argued that a user “added (or deleted) [a] channel” when the user “subscribes (or unsubscribes) to a particular channel.” The court considered whether “subscribing” is literally “adding” and whether “unsubscribing” is literally “deleting” under the claims because WhereverTV asserted only literal infringement, not infringement under the doctrine of equivalents.
The court first found that the terms “adding” and “deleting” are “not used idiosyncratically,” “do not have discrete, technical meanings within the field of art,” and should be given their plain and ordinary meaning. The court next found that subscribing or unsubscribing to a channel did not meet either term because all of the applications are always and remain available on the accused product irrespective of whether the user has subscribed or unsubscribed to them. Accordingly, the court found that WhereverTV failed to show that this claim element was literally met.
At trial, WhereverTV argued that an “XRE receiver” installed on the accused set-top box is an interactive program guide (“IPG”) application. The court found that the claim language requires “a client-server architecture in which the interactive program guide application is installed on the device, i.e., the set-top box, and descriptive program data resides on a server.” Here, the parties’ witnesses agreed that the XRE receiver is a “thin client” that operates as a signaling device and does not execute application logic. Instead, an “XRE guide application” running on remote servers in the cloud performs all application logic of the IPG. Thus, the court found that, although the XRE receiver “may be an ‘application installed on the [accused set-top box],’” it did not constitute an “interactive program guide application installed on the device” as understood by a person of ordinary skill in the art. Accordingly, the court found no direct infringement of the ’431 patent as a matter of law.
In North Atlantic Imports, LLC v. A&J Manufacturing LLC, No. 1:22-cv-02436-VMC (N.D. Ga. July 3, 2023), Judge Calvert found that the disputed claims of U.S. Patent No. 11,116,361 (“’361 patent”) are not indefinite.
The ’361 patent is directed to a safety feature having a cooking station (10) and a side shelf (12) with a set-back (72) between the side shelf and the main body of the cooking station (1), as shown in Figure 2 below. The patent also depicts a heat zone (16) within the set-back area.
A&J Manufacturing, LLC argued that certain claims of the ’361 patent were indefinite because the term “set-back” is a subjective “term of degree.” According to A&J, the ’361 patent provides “no guidance as to the length” or “extent” of the set-back, other than suggesting that the purpose of the set-back is a “safety feature” to keep objects away from the griddle. A&J also argued that the term “heat zone” is “entirely subjective” because the boundaries of heat zone are “entirely undefined.” According to A&J, different items are “safe” at different distances away from the heat zone, so the claimed heat zone is also not ascertainable with reasonable certainty.
The court disagreed with A&J and found that within the context of the ’361 patent, the terms “set-back” and “heat zone” are not indefinite. First, the court observed that no issues were raised with these terms during prosecution. Second, the court found that A&J’s concerns about the “subjective judgment of the person weighing the risk” appeared to be “based on a consumer’s perspective, not a [person skilled in the art],” because A&J acknowledged that radiant heat from the griddle drops off with distance, which provides an objective method of determining where the heat zone “substantially” ends. Lastly, the court found that some variation does not mean a skilled person, “relying on normal human senses, could not determine the boundaries of the heat zone, and therefore the size of the set-back to the required level of certainty.” Accordingly, the court found that the claims are not indefinite.
In The Trustees of Purdue University v. Wolfspeed, Inc., No. 1:21-cv-00840 (M.D.N.C.), Magistrate Judge Auld issued two orders regarding Wolfspeed’s motions for protective order: a July 3, 2023 order denying the motion for a protective order from Purdue’s third-party subpoenas to eleven financial analysts who covered Wolfspeed’s financial press, and a July 17, 2023 order granting Wolfspeed’s motion to preclude the deposition of its chief executive officer.
In the July 3, 2023 order denying Wolfspeed’s motion for a protective order, the court first found that Wolfspeed did not assert any personal right or privilege in the materials sought from the third parties and, therefore, the court held that it lacked jurisdiction and Wolfspeed had no standing to address the disputes under Federal Rule of Civil Procedure 45.
The court next addressed whether a party could move for protective order against a third-party subpoena under Federal Rule of Civil Procedure 26(c)(1), even if it lacked standing under Rule 45. The court found that Rule 26 requires that the movant seek “personal relief,” not relief for some third party that has not made a similar plea, but Wolfspeed had not shown its own “annoyance, embarrassment, oppression, or undue burden or expense” under Rule 26. For “annoyance and/or embarrassment,” the court found that Wolfspeed had not adequately demonstrated that any annoyance experienced by the financial analysts would harm Wolfspeed, particularly when none of the subpoenaed analysts complained or moved to quash the subpoenas and at least one analyst had already produced the documents in response. For “undue burden,” the court found that the record evidence reflects no burden on Wolfspeed because the burden must derive from compliance with a discovery requests, not from Wolfspeed disputing them.
Lastly, the court addressed whether it could, on its own, limit the extent or frequency of discovery under Federal Rule of Civil Procedure 26(b)(2)(c) because it is outside the permitted scope. Wolfspeed argued that the documents sought by Purdue’s subpoenas were irrelevant because they did not relate to determining a reasonable royalty rate determined by hypothetical negotiations between the parties. The court, however, disagreed because (1) the bar for relevance is low and (2) hypothetical negotiation, while a common way to determine a reasonable royalty rate, is not the only accepted reliable method. The court found that the information sought by Purdue’s subpoenas could be used in evaluating a reasonable royalty rate. Additionally, the court did not find that the discovery had to be limited in scope because the subpoenas target additional information and analysts other than that Wolfspeed may have produced already. Thus, the court did not find Wolfspeed’s motion for protective order.
In the July 17, 2023 order granting Wolfspeed’s motion to preclude a deposition of its CEO because Wolfspeed’s CEO did possess personal knowledge sufficient to justify his deposition. The court first considered arguments regarding the “Apex doctrine” but declined to address this issue because the Fourth Circuit has neither accepted nor rejected the doctrine. Instead, the court considered whether the deposition is “unreasonably cumulative or duplicative” under the proportionality principles of Rule 26(b)(2)(c).
Under these proportionality principles, the court did not find that Purdue’s deposition of Wolfspeed’s CEO was justified. For example, the court found that Purdue’s cited statements made by the CEO to highlight his specialized personal knowledge were merely general statements, not specialized knowledge. Additionally, the court determined that the CEO’s cited statements from earnings calls predated Purdue’s notice letter to Wolfspeed about the asserted patent and, thus, as a matter of law, could not serve as evidence of Wolfspeed’s knowledge to establish induced infringement. The court further noted that Purdue had already deposed several of Wolfspeed’s corporate representatives and had not yet completed the depositions of other representatives, and there was no indication that those representatives were unable to testify about information sought. Absent such an indication, the court asserted that deposing Wolfspeed’s CEO would be repetitive.
Finally, the court rejected Purdue’s assertion that Wolfspeed’s CEO used political influence to affect Wolfspeed’s IPR proceeding. The court found that the chain of events Purdue suggested as a showing of political collusion was “highly speculative” and “does not bear scrutiny.” The court found that the assertion that President Biden and Wolfspeed’s CEO would have “privately engaged with Lowe about a very technical matter involving an obscure federal office (the USPTO), agreed to influence the Director of the USPTO in exchange for unspecified support, subsequently communicated (or caused someone else to communicate) with the USPTO Director, and compelled her to pen a 10-page order, all within the span of 48 hours” was not “sufficiently plausible to support [the CEO’s] deposition.” Thus, the court found that Wolfspeed had established good cause for a protective order prohibiting a deposition of its CEO under Rule 26(b)(2)(C).
In Supercooler Technologies, Inc. v. The Coca Cola Company, No. 6:23-cv-187-CEM-RMN (M.D. Fla. July 17, 2023), Magistrate Judge Norway denied The Coca Cola Company’s motion to disqualify The Paul Hastings Law Firm from representing SuperCooler Technologies, Inc.
In 2021, Coca-Cola engaged a partner at Paul Hastings in connection with international human rights work in the Democratic Republic of Congo. At that time, Coca-Cola and Paul Hastings entered an engagement agreement with a provision waiving future conflicts of interest, including litigation “not substantially related to a matter in which” Paul Hastings represented Coca-Cola.
In 2022, SuperCooler retained several attorneys from Cahill Gordon & Reindel, LLP, for pre-litigation work against Coca-Cola. This team filed a complaint in the Middle District of Florida, asserting several claims against Coca-Cola. During that litigation, SuperCooler’s attorneys left their firm and joined Paul Hastings. SuperCooler elected to maintain its same attorneys after this move to Paul Hastings. In-house counsel for Coca-Cola then contacted Paul Hastings to discuss the conflicts issue, and Paul Hastings communicated that, based on the waiver in the engagement letter, Paul Hastings could represent SuperCooler against Coca-Cola. Coca-Cola then moved to disqualify SuperCooler’s counsel and Paul Hastings.
The court first determined that the Florida Rules of Professional Conduct and federal common law apply to the ethical issues raised in Coca-Cola’s motion. The court rejected Coca-Cola’s argument that Georgia’s ethical rules should apply, finding that Coca-Cola “waited too long” to raise this argument because it was first presented in a supplemental brief. The court also found that the court’s local rules and federal common law dictate the law that applies to ethical issue arising in litigation, which, in this case, require those practicing before the court to be bound by the Florida Rules of Professional Conduct.
Next, the court determined that Paul Hastings’ representation of SuperCooler against Coca-Cola was a conflict of interest under Florida Rule 4-1.7 because Coca-Cola was a current client of Paul Hastings
The court considered whether Coca-Cola waived future conflicts with Paul Hastings in its engagement letter. The court found that Coca-Cola had waived such conflicts and that Paul Hastings did not violate the Florida Rules of Professional Conduct. The court found that Coca-Cola gave informed consent to the conflict at issue because the engagement letter provided reasonably adequate information of potential future conflicts to Coca-Cola, including that Paul Hastings may represent clients in litigation in matters directly adverse to Coca-Cola. The court held that, while broad, the waiver provision in the engagement letter delineated an outer boundary and disclosed the types of other clients Paul Hastings might represent.
The court likened Coca-Cola to “the jaundiced-eyed vaudeville actor” “lurking just off the stage” of a magic show that, unlike others in the audience, “won’t be surprised” by the magician’s tricks. The court found that Coca-Cola is “an experienced, frequent, and sophisticated consumer of legal services” and Coca-Cola “understood and consented to Paul Hastings serving as counsel to an opposing party in future litigation matters.” The court therefore denied Coca-Cola’s motion to disqualify Paul Hastings.
In Aviation Clean Air, LLC v. Ionic Air Care, Inc., No. 3:21-cv-219-TCB, 2023 WL 3304813 (N.D. Ga. July 25, 2023), Judge Batten, Sr., issued a claim construction order construing certain claims of U.S. Patent Nos. 10,786,818; 10,974,256; 11,141,740; and 11,491,496.
All four patents are entitled “Aircraft Proactive Air and Surface Purification Component” and share the same background and summary. The patents are directed toward a component that ionizes and purifies air, specifically in aircraft.
The court construed the following five terms:
For “probe assembly,” the court rejected Ionic Air’s proposed construction that “probe assembly” requires “a probe seat,” “at least one probe sleeve,” and “a probe retention device” because it attempted to incorporate limitations from one disclosed embodiment. The court also rejected Aviation Clean Air’s proposed plain and ordinary meaning of “an assemblage of parts comprising a wire and an emissions portion, and, optionally, a probe seat, a probe sleeve, and/or a probe retention device.” The court found that both constructions would be inconsistent with the claim language because the claims recite various permutations of the required components. Thus, the court found the “plain and ordinary meaning” applies to this term and left it to a trier of fact to apply the term in its various uses.
For “probe sleeve,” the court rejected Ionic’s proposed construction requiring “a high voltage wire,” finding Ionic’s construction would read unrecited limitations into the claims. The court credited Aviation’s dictionary definitions and so determined the construction of “probe sleeve” is “the plain and ordinary meaning—i.e., a tubular part designed to fit around a probe.”
For “probe seat,” the court rejected Ionic’s proposed construction requiring the probe seat to be “attached to” the probe sleeves. Considering several dictionaries, the court found that “one cannot infer that two components are ‘attached’ solely because they are ‘engaged,’” and rejected Ionic’s proposed construction as requiring “too great a leap in logic based on the available terms in the specification.” Accordingly, the court determined plain and ordinary meaning applied.
For “selectively secured,” the court determined Ionic’s construction was based on a section of the specification that did not support Ionic’s construction. The court further found Aviation’s various dictionary definitions were not rebutted by Ionic and thus again determined plain and ordinary meaning applied.
For “probe retention device,” the court again determined Ionic’s construction would read limitations from the specification into the claims and thus rejected it. Instead, the court credited Aviation’s dictionary definitions and so determined the construction of “probe retention device” is “the plain and ordinary meaning, i.e., a device that holds a probe in a fixed state or condition.”
In Electrolysis Prevention Solutions LLC v. Daimler Truck North America LLC, No. 3:21-cv-00171-RJC-WCM (W.D.N.C. July 24, 2023), Magistrate Judge Metcalf granted in part Daimler Truck of North America LLC’s motion to compel discovery from Electrolysis Prevention Solutions LLC and denied in part non-party Lit-US Chisum 22-B LLC’s motion to quash subpoenas. On the same day, Magistrate Judge W. Carleton Metcalf also granted Daimler’s motions for leave to amend its invalidity contentions.
EPS sued Daimler for infringement of U.S. Reissue Patent No. RE47,494 (the “’494 patent”). EPS subsequently “entered into a litigation financing agreement” with Chisum. During discovery, Daimler sought “information regarding the Financing Arrangement” through both subpoenas to Chisum and a Motion to Compel to EPS. Chisum subsequently filed a Motion to Quash the Daimler subpoena alleging that the internal documents Daimler sought “are protected by the work product doctrine.”
Daimler sought “information regarding the Financing Agreement and Chisum’s interest in this litigation,” arguing that such information is relevant to “issues of standing, damages, and witness credibility, and to counter a potential ‘David vs. Goliath’ trial theme.”
For standing, the court found that broad discovery related to the Financing Arrangement is not proportional to the needs of the case, since EPS already provided unverified interrogatory responses, but the court ordered EPS to provide a verified supplemental interrogatory response regarding the ownership of the ’494 patent.
Regarding whether “information regarding the Financing Agreement may be relevant to the question of the value of the ’494 patent,” especially in the determination of a reasonable royalty, the court agreed and concluded that “statements and analysis regarding the value of the ’494 patent should be discoverable.” As to what material may be available for production, the court did not require production of documents that do not exist based on counsel for EPS and Chisum’s “represent[ation] that there were no communications between those parties about the value of the ’494 Patent.” The court, however, required that “to the extent Chisum has internal documents that reflect its valuation of ’494 Patent, such information should be produced.”
For witness credibility, the court rejected the assertion that information beyond valuation of the ’494 patent must be provided, including based on EPS’s counsel’s sworn declaration that there were no additional communications or undisclosed collateral by the named inventor, Mr. Frank Amidio Catalano.
Lastly, for trial themes, the court found that some limited discovery regarding the funding of this litigation is appropriate but rejected the request for broader discovery regarding the relationship between Chisum and other similarly named entities or Chisum’s other business interests.
Chisum filed a Motion to Quash Daimler’s subpoena asserting that its “internal documents are protected by the work product doctrine.” The court found that Chisum failed to meet its burden to show that the work product doctrine applies because it had not provided any details regarding the specific withheld documents nor had Chisum provided a privilege log describing the nature of any withheld documents. Because Chisum failed to establish that the work product doctrine applied, the court found that Chisum must respond to the subpoena to the extent it has documents that reflect a statement of the value of the ’494 patent.
Rule 3.6 of the Local Patent Rules for W.D.N.C. states that amendments to invalidity contentions may be allowed “if application is made in a timely fashion, for good cause, and without purpose of delay or undue prejudice to another party.” P.R. 3.6(B).
Daimler, in its original invalidity contentions, had previously identified a “2005 Freightliner Columbia Radiator (2005 Behr Radiator)” manufactured by Mahle Behr Charleston Inc. f/k/a Behr Heat Transfer Systems, Inc. During discovery, Daimler, however, determined that the specific 2005 Behr Radiator it found was not original to the 2005 Freightliner truck and thus was not prior art. Daimler then found that another model, the Paccar Mod8 made by Mahle Behr, is a potential prior art and sought to add the Paccar Mod8 to its invalidity contentions. Although the court found that Daimler knew that at least one radiator manufactured by Mahle Behr was prior art and was not persuaded that it was reasonable to identify the Paccar Mod8 late. Nonetheless, the court granted leave to add the Paccar Mod8 because Daimler had not acted in bad faith or with the intent to unduly delay the proceeding and because allowing the amendment would not have caused EPS undue prejudice.
Daimler next sought to add a commercial product (“Martin Accessory”) that is based on a patent included in Daimler’s initial invalidity contentions. Daimler contended that its defense counsel discovered the Martin Accessory by “happenstance” when the counsel visited Mr. Martin’s radiator shop. The court found that Daimler’s initial and amended invalidity contentions listed less than nine patents, and, in this particular case, Daimler had not sufficiently explained why researching the listed patents would have been unduly burdensome. Nonetheless, the court granted leave to add the Martin Accessory because it would not unduly prejudice EPS. Further, to ensure that EPS is not unduly prejudiced, the court revised the pretrial schedule to accommodate the late amendments.
In Sam’s West, Inc. v. BJ’s Wholesale Club Holdings, Inc., No. 6:22-cv-587-WWB-RMN (M.D. Fla. July 31, 2023), Magistrate Judge Norway denied Sam’s West, Inc.’s (“Sam’s”) motion to lift a previously entered stay pending inter partes review (“IPR”).
Sam’s sued BJ’s Wholesale Club Holdings, Inc. (“BJ’s”) for patent infringement of four patents. BJ’s filed seven petitions for IPR challenging the validity of all four patents at the Patent Trial and Appeal Board (“PTAB”). After filing its IPR petitions, but before the PTAB issued its institution decisions, BJ’s filed a motion to stay the district court case pending the IPRs. The court granted the motion to stay. The Board subsequently instituted five of the seven IPR petitions, resulting in three of Sam’s patents being under review.
Sam’s then moved to lift the stay for the one asserted patent that was not subject to IPR and another related asserted patent that was subject to IPR. Sam’s argued that it should be permitted to pursue its infringement claims for the one patent that was “free and clear” of PTAB review, that it would be prejudiced by further delay of the case, and that resolution of the IPRs would not meaningfully simplify the issues. BJ’s argued that it would be inefficient to lift the stay with respect to only some patents and that resolution of the IPRs would simplify the issues.
The court denied Sam’s motion and maintained the stay.
The court reasoned that the potential for simplification of the issues weighed “heavily in favor” of maintaining the stay. The court noted that between the three patents for which IPR was instituted, 59 claims were subject to review and that it was “reasonable to presume” that the outcome of the IPRs would affect the claims that would ultimately go to trial. The court also acknowledged that the PTAB could cancel all claims of one or more of the asserted patents, which would “greatly streamlin[e]” the issues. Even for the patent that was not subject to IPR, the court reasoned that it could be affected by the outcome of the instituted IPRs because it shared a specification with a patent under review.
The court also found that lifting the stay for some, but not all, of the asserted patents would introduce inefficiencies, including multiple discovery periods, multiple claim construction hearings, multiple summary judgment motions, and potentially multiple trials. Finally, the court determined that Sam’s had not established that it would be prejudiced by maintaining the stay and that any harm it may face in the marketplace could be addressed through final judgment.
†Bushra Haque and Michael Nielsen are Law Clerks at Finnegan.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.
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