Oregon Patent Litigation Tracker

Mentor Graphics Files Suit Against EVE-USA, Inc.

Jeff A. Woller — Thu, 02 Sep 2010 13:18:07 -0800

According to Mentor Graphics Corporation's complaint (PDF), this lawsuit follows EVE-USA, Inc.'s declining a March 2005 offer to license U.S. Patent No. 6,876,962 (PDF). EVE is the U.S. subsidiary of Emulation and Verification Engineering, SA (France).

The '962 patent claims a tool for designing and debugging complex integrated circuits that emulates multiple circuits concurrently. An advantage to such a tool is that emulating multiple circuits simultaneously is more efficient, from a computer resource viewpoint, than emulating integrated circuit designs one at a time. Mentor Graphics alleges EVE's ZeBu Server directly infringes the '962 patent and also induces and contributes to infringement of the '962 patent. Mentor Graphics seeks injunctive relief and treble damages for EVE's alleged use of the patented integrated circuit emulation and verification technology.

Videx, Inc. Locks on to Medeco Security's Alleged Infringement

Steven Klein — Wed, 01 Sep 2010 14:51:43 -0800

Videx, Inc., a Corvalis-based manufacturer of electronic access control products, has sued lock manufacturer Medeco Security Locks, Inc., for infringement of Videx’s U.S. Patent No. D457,051, entitled “Key for Electronic Lock.” However, Videx’s Complaint is short on details and does not specifically identify the allegedly infringing Medeco product(s). Rather, Videx alleges only that Medeco has made, used, imported, offered to sell, or sold “keys" embodying the patented invention.

What does the patented design look like? According to the drawings, like this:

In case you are having trouble visualizing what this might look like in practice, as I did, photos of Videx electronic key products that appear to embody the invention can be found on the Videx website here (under the “Keys” tab).

The case, Civ. No. 10-832-ST, has been assigned to the Hon. Janice M. Stewart.

Benchmade Knife Co., Inc. v. Benson d/b/a RoadsideImports, LLC

Jeff A. Woller — Wed, 18 Aug 2010 07:15:47 -0800

When things go wrong for Mr. Benson, they all go wrong.

After denying Mr. Benson’s motion to dismiss, Judge Haggerty denied Mr. Benson’s motion to transfer to Colorado. A scheduling order issued requiring each party to submit a letter indicating whether mediation should be undertaken. The June 11, 2010 deadline for such letters came and passed with only Benchmade Knife Co. and Mentor Group, LLC responding. Even though Plaintiffs conferred with Mr. Benson about a protective order and entering settlement discussions, Mr. Benson apparently did not feel obliged to submit a letter to the Court by June 11, 2010.

Judge Haggerty’s next order was for Mr. Benson to show cause in writing by June 30, 2010 why he should not be sanctioned for not complying with court orders. Mr. Benson was also ordered to explicitly state to what extent he would keep settlement discussions confidential. Mr. Benson responded on June 21, 2010 with a mediation request stating this lawsuit is driving him into bankruptcy, that he unknowingly sold knives covered by Benchmade’s patents, and offering to testify on Benchmade’s behalf in other lawsuits. Even though timely, such a response was not what the Court wanted.

Because of Mr. Benson’s non-compliance with Judge Haggerty’s orders, an award of sanctions followed. Plaintiffs were ordered to file a proposed Order providing the sanctions and the grounds for awarding them by July 30, 2010. Plaintiff’s proposal requested $2,000 for Mr. Benson’s “persistent disregard for court rules, orders, and deadlines.” Plaintiff’s proposed Order states that settlement negotiations have been hindered by “Mr. Benson’s practice” of posting lawsuit matters with his comments on the Internet, and that a monetary sanction is appropriate to show Mr. Benson “that he cannot thwart Plaintiff’s effort to litigate, or otherwise resolve this dispute, by ignoring the responsibilities of a litigant or ‘playing dumb.’” Mr. Benson has until tomorrow to respond to the proposed Order. After August 19, 2010 a sanctions Order should issue and, possibly a Judgment for Plaintiffs without oral argument. What will Mr. Benson do next?

Dino-Lite Put Under the Microscope

Tyler Overall — Tue, 17 Aug 2010 07:53:41 -0800

Computer Stores Northwest, Inc. (CSNW), based in Oregon, and Scalar Corporation (Scalar), a Japanese corporation, have sued Dunwell Tech, Inc. (Dunwell) for infringing U.S. Patent No. 5,442,489 [PDF] (the ’489 patent). The amended complaint [PDF] identifies Scalar as the owner of the ’489 patent and CSNW as the exclusive licensee.

The ’489 patent is directed to a magnifying observation device that captures an image of an object and displays the image on a monitor. CSNW and Scalar claim that the “Dino-Lite” series microscopes sold by Dunwell infringe the ’489 patent.

Reexamination

As noted in CSNW and Scalar’s amended complaint, eight claims the ’489 patent underwent reexamination at the request of Scalar in view of prior art references that surfaced during examination of Korean and Japanese counterpart patent applications. In the reexamination proceeding, the U.S. Patent and Trademark Office confirmed the patentability of one independent claim, and Scalar amended the remaining seven claims and added 18 new claims. The reexamination certificate issued on March 30, 2010, 14 days after the original complaint [PDF] was filed. In its answer to the amended complaint [PDF], Dunwell alleges that it has preclusive rights, intervening rights, or both under 35 U.S.C. §§ 252 and 307.

Parties Proceed with Markman Briefing in Epson Inkjet cases

John A. Rafter, Jr. — Mon, 02 Aug 2010 17:28:31 -0800

The parties have filed their Markman briefs and supporting declarations in each of the five pending Epson Inkjet Cartridge cases. The briefs in each of the cases are essentially all the same. Though initially Epson asserted as many as 18 patents against the various defendants, these lawsuits have been "phased" meaning that the cases will proceed in different phases with the first phase being directed to Epson's assertion of just four patents: U.S. Patent Nos. 5,622,439 ("the '439 patent"), 5,158,377 ("the '377 patent"), 6,502,917 ("the '917 patent"), and 7,008, 053 ("the '053 patent"). In its briefs, Epson asserts in similar claim construction that it obtained in the ITC proceeding (see earlier post).

Technically, though as Epson has argued, the District Court can find the ITC persuasive and follow the rulings and claim constructions of the ITC proceeding, it need not. The defendants are indeed taking different tacts than did NineStar in the ITC proceeding and the parties are far apart on claim construction issues. One of the defendants goes so far to assert "No one, in his right mind, would read the claim in the manner argued by Epson."

Markman hearing took place July 29-30, so more to follow.

Long-Awaited Bilski Decision Handed Down By The Supreme Court

John A. Rafter, Jr. — Tue, 29 Jun 2010 12:14:08 -0800

The long-awaited Bilski decision came down yesterday from the Supreme Court, affirming the Federal Circuit's judgment.

The Court ruled that business methods are eligible subject matter for a patent but declined to accept the Federal Circuit's machine-transformation test as the exclusive test for what is eligible subject matter for a patent under 35 U.S.C. § 101. The Court also rejected the contention that business methods are categorically excluded from patentability. Per Justice Kennedy writing for the majority:

"The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea,just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea."

"This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible 'process.' "

The Court's rationale was in part based upon the progression of technology from the industrial age to the current information age:

"The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age -- for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age."

The take away from the case is what we've known all along -- stay away from claims that merely claim abstract ideas or are solely directed to mathematical algorithms. And look forward to more guidance from the Federal Circuit in future cases.

See Court opinion (pdf).

The Bilski patent application (see U.S. Appl. No. US2004/0122764.pdf) sought protection for a claimed invention that explains how commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price changes. The key claims are claim 1, which describes a series of steps instructing how to hedge risk, and claim 4, which places the claim 1 concept into a simple mathematical formula. The remaining claims explain how claims 1 and 4 can be applied to allow energy suppliers and consumers to minimize the risks resulting from fluctuations in market demand.

Digimarc and Shazam Settle

Matthew C. Phillips — Wed, 16 Jun 2010 20:00:00 -0800

Today Digimarc filed a notice of voluntary dismissal [PDF], ending its brief lawsuit against Shazam. Digimarc had alleged that Shazam's cell-phone-based song identification service infringes six Digimarc patents. Because Shazam had not yet filed an answer, the dismissal was filed under FRCP 41(a)(1)(A)(i). No details of the settlement are known.

It's a lawsuit!

Jeff A. Woller — Fri, 11 Jun 2010 07:23:12 -0800

Aaron Sternberg and Borer's Nest, Inc. announced the arrival of a new lawsuit against Griffin International Companies, Inc. The suit weighed one asserted patent, U.S. Patent No. 7,582,017 (PDF), and was five counts long at filing. The lawsuit brings demands for damages and preliminary and permanent injunctions to stop Griffin from selling foam rubber video game controllers. The new suit is also demanding attorney's fees and is expected to keep everyone quite busy.

Marshall, Schmarshall! Bring Your Patent Cases to Portland

Matthew C. Phillips — Sun, 16 May 2010 15:07:26 -0800

Or Eugene, Medford or Pendleton -- the four divisions of the U.S. District Court for the District of Oregon. The Eastern District of Texas has become a tremendously popular venue for patent owners wishing to bring suit, but, surprisingly, it is not the district where patent owners have the greatest percentage of prevailing.

As reported by Patently-O, a draft paper entitled "Where to File Your Patent Case" by Stanford Professor Mark A. Lemley reports that the patentee win rate in the Eastern District of Texas is 40.3%, whereas it is 45.3% in the District of Oregon. That puts the District of Oregon in an approximate tie for the second best patent win rate (a four-way near tie with Nevada, Middle Florida, and Delaware) among districts with a statistically significant number of patent cases. Only the Northern District of Texas had an appreciably higher patentee win rate (55.1%).

So why file your patent infringement case in Marshall, Texas, when you are likely to fare better in Portland, or Eugene, or Medford, or Pendleton?

Of course, there is more to choosing a venue than just the odds of prevailing. A couple other important factors are (1) the size of jury verdicts and (2) the likelihood of a stay pending reexamination

Large Jury Verdicts in Oregon.

Texas jurors are famous -- some would say infamous -- for handing out large verdicts . . . like it was somebody else's money. Well, there have been large verdicts in Oregon too. Although this has nothing to do with patent law, a Portland jury very recently handed out an $18.4 million punitive award against Boy Scouts of America in a sexual abuse case, as reported in the Oregonian. That was the largest verdict -- by far -- of that type against the Boy Scouts.

Another largest-of-its-kind verdict was the $304.6 million verdict that a Portland jury awarded to Adidas two years ago in its trademark infringement case against Payless Shoes. (Reported here by the Oregonian).

Back in the patent world, there have certainly been some large verdicts against infringers in Oregon. For example, Translogic won a verdict of about $86 million a few years ago, although that was reversed on appeal because a parallel reexamination killed the patent (which the Portland jury had upheld in view of the same prior art).

Stays Pending Reexamination

Speaking of reexamination, it is becoming increasingly common for a defendant to request reexamination and then seek a stay of the district court litigation. According to LegalMetric's "Stay Pending Reexamination" Reports (which is an invaluable resource, by the way), defendants' win rate for contested stay motions in the District of Oregon are less than the nationwide average, with some judges in the district granting those motions sparingly or never.

As I said, Marshall schmarshall. Patent owners would be wise to at least consider bringing their patent cases in Oregon.

Trolling Along: Floodgates Continue to Open for Patent False Marking Claims

John A. Rafter, Jr. — Thu, 13 May 2010 08:14:35 -0800

As reported previously (see Floodgates), there has been a wave of false patent marking lawsuits filed in recent months following the Federal Circuit ruling in Forest Group Inc. v. Bon Tool Co., 590 F.3d. 1295 (Fed. Cir. 2009), mostly by a new brand of patent troll. The Bon Tool case was sent back to the District Court for calculation of the "fine." On remand, the District Court found that the trial recrd established that Forest sold the falsely-marked S2 model stilts in a price range of $103 to $180 and then found that "the appropriate fine in this case is $180.00 per article, the highest point of the price range. This will deprive Forest of more than it received for the falsely-marked stilts, fulfilling the deterrent goal of § 292’s fine provision." Fortunately for Forest, the Court found that Forest only sold 38 falsely-marked stilts and thus imposed a fine of $6,840. To read the entire order, see Order (pdf).

Gambaro Posts Video of his Infringement Contentions

Matthew C. Phillips — Wed, 12 May 2010 04:00:00 -0800

Recently filed documents in this case reveal that Thomas L. Gambaro, one of the defendants and the inventor of the patent at issue, has posted a YouTube video setting forth the details of his infringement contentions against FLIR. In the video, Mr. Gambaro speaks to viewers as "Internet jury members" and invites them to cast a vote whether they agree with his infringement analysis.

FLIR Moves to Strike Answer

Matthew C. Phillips — Sat, 08 May 2010 16:05:57 -0800

This case began when FLIR brought a declaratory judgment action against Thomas L. Gambaro and Motionless Keyboard Co. (MKC), who had demanded payment from FLIR, alleging that certain FLIR handheld thermal imagers infringed U.S. Patent No. 5,332,322 (reported here).

Acting pro se, Gambaro filed an answer [PDF] on behalf of himself, MKC and a third company called Patent Enforcement Co., which was not named in the complaint. Because Gambaro is not an attorney, FLIR filed a short motion to strike the answer [PDF], arguing that Gambaro, as a non-attorney, cannot answer on behalf of either MKC or Patent Enforcement Co. FLIR's motion seems like a no-brainer. It is well settled hornbook law that corporations must be represented in court by counsel.

FLIR's motion is set for oral argument before Judge Anna J. Brown at the same time as the Rule 16 Conference on June 24, 2010 at 1:30 PM ,

Digimarc Adds Three More Patents to Case Against Shazam

Matthew C. Phillips — Mon, 03 May 2010 17:09:23 -0800

Digimarc has filed a Second Amended and First Supplemental Complaint [PDF] in its case against Shazam. Compared to the original complaint, this latest complaint adds three new patents to the case: U.S. Patent Nos. 6,829,368 [PDF]; 7,562,392 [PDF]; and 7,693,965 [PDF].

Why is it an amended and supplemental complaint? The answer traces back to the Federal Rules of Civil Procedure (FRCP). FRCP 15(a) governs amendments to the pleadings and does not restrict the nature of the amendment. FRCP 15(d) governs supplemental pleadings, which are for "transactions or occurences or events which have happened since the date of the pleading to be supplemented." In this case, U.S. Pat. No. 7,693,965 issued April 6, 2010 -- after the original complaint (but one day before the First Amended Complaint was filed). Thus, the addition of the '965 patent in the most recent complaint is a "supplement" to the original complaint.

Another common situation in patent litigation that calls for a supplemental, rather than an amended, pleading is reexamination. When a patent in suit is subject to reexamination, and a reexamination certificate issues during the pendency of the lawsuit, then the proper way to allege causes of actions or defenses based on the reexamination is by supplemental amendment under FRCP 15(d), as I teach in my reexamination course for Patent Resources Group.

Benchmade Knife Co., Inc. v. Benson d/b/a RoadsideImports, LLC

Jeff A. Woller — Tue, 27 Apr 2010 07:31:45 -0800

In denying Jonathan Benson’s motion to dismiss for lack of personal jurisdiction, in an order reading like a model exam answer, Judge Haggerty provides useful guidance for law students and businesses.

For the aspiring lawyer, your Civ Pro answer for the personal jurisdiction question (and there will be one) should read much like Judge Haggerty’s March 15, 2010 Order [PDF]. My Civ Pro professor, W. Burlette Carter, would give props to the analysis of whether hauling Mr. Benson into the District of Oregon offends traditional notions of fair play and substantial justice under the International Shoe standard. If you’re taking her class, at least make sure that’s in there.

For the small business hoping to avoid court outside its home state, don’t sell over the Internet! OK, maybe that’s bad business advice – so, lessen the risk of a court asserting personal jurisdiction over you while selling over the Internet by not (1) posting public acknowledgments of sales in states where you don’t want to go to court, (2) criticizing businesses in states where you don’t want to go to court, and (3) advocating boycotts of businesses in states where you don’t want to go to court. Mr. Benson did all three, and they were the primary reasons Judge Haggerty found it fair to keep him in court in Oregon. While there’s no guarantee that abstaining from these three activities will prevent a court from keeping you there to defend a lawsuit, you can bolster the argument that it’s not fair or substantially just.

Photo courtesy of : www.freeimages.co.uk

False Marking Lawsuits -- Have the Floodgates Opened?

John A. Rafter, Jr. — Thu, 08 Apr 2010 14:45:00 -0800

In recent months commencing with the decision in Forest Group Inc. v. Bon Tool Co., 590 F.3d. 1295 (Fed. Cir. 2009), prospective plaintiffs have commenced filing lawsuits against patent holders for improperly marking product with false or expired patent numbers. Pundits have predicted that there would be a flood of patent false marking suits. Indeed, in the past month or so, this wave of lawsuits hit the District of Oregon when Oregon-based Lightspeed Aviation sued Bose Corp. (see, Expired Patents and False Marking) .

Though some of these lawsuits appear to be filed by current litigants in related patent litigation, some of these suits are brought by attorneys and political action groups seeking reward or looking to force action on the patent holders. It is the "policing" activity of such third parties unrelated to the market of the patented products that has prompted some pundits to dub these plaintiffs as a new breed of patent troll -- "false marking trolls."

Many of these cases assert that marking an expired patent number on a product constitutes false marking under the theory that the patent owner is clearly acting with the requisite intent to deceive because they know that patent is expired. Personally, rather than being deceiving, I find it useful for a product to be marked by an expired patent number. If you see a product marked with patent numbers, it is a simple matter to determine those patents are expired, much easier than seeing an unmarked product and trying to searching the patent records to find any patents of the manufacturer covering the product. Thus if a product contains marking of one or more patent numbers, and all those patents have expired, there should be a high degree of confidence that all the owner's patent rights have expired.

Fortunately, there is some recent activity in bills proposed in both the U.S. Senate and the House of Representatives seeking to head off this "flood" of patent false marking cases. So until the courts or Congress clarifies the situation, it's probably prudent for patent holders to check their product marking for incorrect or expired patents and make the necessary corrections.

Google v. Traffic Information Will Remain in Oregon

Matthew C. Phillips — Sun, 28 Mar 2010 05:50:11 -0800

Judge King affirmed Magistrate Judge Hubel's recommendation denying Traffic's motion to dismiss or alternatively transfer the case to the Eastern District of Texas. Order [PDF]

Google Responds to Traffic's Objections

Matthew C. Phillips — Thu, 18 Mar 2010 07:23:09 -0800

Google has filed a 41-page response [PDF] to Traffic's objections to Magistrate Judge Hubel's recommendation to deny Traffic's motion to dismiss or transfer this case to the Eastern District of Texas. Google argues that this district, its chosen forum, is more convenient to the parties and witnesses than Eastern Texas, notwithstanding Traffic's other cases (against Google's customers) there. The objections will be decided by Judge Garr M. King.

Traffic Gets a Settlement in Texas

Matthew C. Phillips — Wed, 10 Mar 2010 11:07:28 -0800

Traffic Information has settled with Garmin and Best Buy, defendants in its parallel Texas case. Traffic is both the defendant in a declaratory judgment case here in Oregon and the plaintiff in cases in the Eastern District of Texas. All cases involve the same pair of patents. Terms of the settlement were not divulged. Here is the Texas court's order of dismissal [PDF] of Garmin.

Meanwhile, Traffic tried to transfer the Oregon case to Texas, but Magistrate Judge Hubel recommended against transfer. Traffic has filed an objection to the recommendation.

FLIR Brings DJ Action Against Motionless Keyboard

Matthew C. Phillips — Wed, 10 Mar 2010 10:01:55 -0800

Motionless Keyboard Co. (MKC) owns U.S. Patent No. 5,332,322 [PDF], entitled "Ergonomic Thumb-Actuable Keyboard for a Hand-Grippable Device." MKC's principal and the inventor of the '322 Patent is Portland resident Thomas L. Gambaro.

Several years ago MKC tried to enforce the '322 patent against Microsoft, but the Oregon district court granted summary judgment of noninfringement (case No. Civ. 04-180-AA), and the Federal Circuit affirmed. Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007).

More recently, MKC tried to convince Wilsonville-based FLIR Systems, Inc. to take a license to the '322 Patent, but FLIR refused, arguing noninfringement based on the claim construction from the prior litigation. In his last letter to FLIR, Gambaro said he was "An Army Of One," and asked "Does FLIR and the Board of Directors want to be at war with 'An Army of One'?" FLIR answered in the affirmative by filing a complaint [PDF] asserting the following DJ claims:

Noninfringement
Invalidity
Patent Misuse

The case is No. 3:10-cv-00231-BR, assigned to Judge Anna J. Brown.

Traffic Files Objection to Magistrate's Recommendation

Matthew C. Phillips — Tue, 09 Mar 2010 15:03:02 -0800

Traffic has filed an objection [PDF] to Magistrate Judge Hubel's findings and recommendation [PDF] that the court deny Traffic's motion to dismiss and transfer [PDF]. Traffic argues again that this case belongs in deep in the heart of Texas (eastern Texas, that is -- Marshall), where Traffic has other pending lawsuits asserting its same patents that are the subject of this declaratory judgment action in Oregon. Traffic's principal argument in its objection is that a transfer would be in the best interest of judicial economy. Traffic argues that "the existence of multiple lawsuits involving the same issues is a paramount consideration when determining whether a transfer is in the interest of justice." (quoting In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) (emphasis added by Traffic)).