EDTX & NDTX Monthly Wrap-Up — August 2020

This post summarizes some of the significant developments in the Northern District of Texas and the Eastern District of Texas for the month of August 2020.

GREE, Inc. v. Supercell Oy, No. 2:19-cv-00070-JRG-RSP (E.D. Tex. Aug. 5, 2020) (M.J., Payne): Motion to Strike Expert Report Regarding Improper Claim Construction.

In GREE, Plaintiff moved to strike a portion of Defendant's expert reports, arguing that the experts interpreted several claim terms in a manner contradictory to the Court's Claim Construction order. The Court granted the motion in part, finding that an incorrect understanding of the Court's claim construction order must be struck. Specifically, the Court found that the claim term limitations "touch operation" and the "Order of Operations" were "contradictory to the Court’s construction and shall be struck."

The Court denied the motion for the remaining claim limitations, finding that GREE did "not identify any inconsistency" with the Claim Construction order, and thus exclusion of the expert report "on this basis is improper."

Vocalife LLC v. Amazon.com, Inc., No. 2:19-CV-00123-JRG (E.D. Tex. Aug. 14, 2020) (J., Gilstrap): Motion for Summary Judgment of No Pre-Reissue Damages and Absolute Intervening Rights Pursuant to 35 U.S.C. § 252.

In Vocalife, Judge Gilstrap granted Defendant's partial motion for summary judgment seeking preclusion of acts that occurred prior to the issuance and re-issuance of the patent-in-suit. Additionally, the Court found that damages were barred at least in part because of absolute intervening rights.

The Court found that the reissued patent resulted in "substantively changed" scope of the claim limitations. As such, Plaintiff "has no rights to enforce prior to the date of reissue." The Court explained that the first paragraph of § 252 "makes clear that if the claims in the original and reissued patents are 'identical,' the reissued patent is deemed to have effect from the date of the original patent. If not, then the patentee has no rights to enforce before the date of the reissue because the original patent was surrendered and is dead" (quoting Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 978 (Fed. Cir. 1986)).

Additionally, the Court found that intervening rights apply in this case. Plaintiff contended that intervening rights are reserved for products that infringe "apparatus claims, not method claims." The Court disagreed, finding Judge Bryson’s opinion in Sonos, Inc. v. D&M Holdings, Inc instructive: "'[t]he statutory protection offered by absolute intervening rights does not depend on whether the claims at issue are apparatus or method claims' and that 'absolute intervening rights extend only to those "specific" things in existence before the reissuance or reexamination . . . .'" The Court concluded that "absolute intervening rights are not so limited . . . and as such, absolute intervening rights for the alleged infringement of method claims may apply to the accused products manufactured prior to" the reissue date.

The Court, in response to Plaintiff's argument that the Defendant failed to identify the "specific things" that would be protected by such rights, found that "it is clear that the identification of a date alone allows the parties to determine which products are subject to intervening rights." The Court concluded that the Defendant has "carried its burden to identify the products subject to intervening rights."

LSP Prods. Grp. v. Oatey Co., Civil Action No. 3:19-cv-00642-M (N.D. Tex. Aug. 20, 2020) (C.J., Lynn): Motion for Leave to Amend Preliminary Invalidity Contentions.

The Court granted-in-part and denied-in-part Defendant's Motion for Leave to Amend Preliminary Invalidity Contentions. The amendments concerned two categories of prior art: 1) prior art identified by Defendant in Defendant’s Preliminary Invalidity Contentions, but not charted; and 2) prior art not identified by the Defendant in Defendant's Preliminary Invalidity Contentions.

The Court explained that once invalidity contentions become final, a Defendant "must show good cause" to amend. The Court considered the "four factors to determine whether good cause exists: (1) diligence by the party seeking to amend, (2) the importance of the amendment, (3) the danger of unfair prejudice, and (4) the availability of a continuance" (citing CommScope Techs., LLC v. Dali Wireless, Inc., No. 3:16-cv-00477-M, 2018 WL 4566130, at *2 (N.D. Tex. Sept. 21, 2018)), with diligence considered "the most important factor."

The Court found that the Defendant was diligent with respect to the identified prior art in Defendant's Preliminary Invalidity Contentions. Despite a four-month delay in charting this prior art reference, Defendant provided an explanation that the reference "required further technical analysis as well as investigation." The opposite was true for the remaining prior art references. The Court found that "Defendant has not shown good cause for its delay in identifying these references," concluding that there was "no reasonable explanation for the almost six-month delay between the date when Defendant submitted its Preliminary Invalidity Contentions and when it allegedly found these two secondary references." The Court, in the unfair prejudice prong analysis, additionally explained, "Plaintiff should not have to bear any burden created by Defendant’s delay, given that the delay has not been sufficiently explained."

Author: Adil Shaikh