Patent Specific Hearings/Motions

Various district courts issued orders in patent cases regarding hearings that show an interest in moving forward but an understanding that some aspects of hearings related to claim construction, Daubert motions, and sanctions require in-person presentations that cannot be duplicated via conferencing technology. In addition to considering the interests of the parties, the interest of the public’s right to access all public in-court proceedings has also been considered when ordering that dial-information be made publicly available to access the hearing.

Central District of California (Southern Division—Santa Ana)

District Judge Josephine L. Staton

MicroVention, Inc. v. Balt USA, LLC. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana sua sponte continued the Markman hearing scheduled for May 5, 2020 to July 21, 2020, “in response to the unforeseeable global pandemic involving the disease coronavirus 2019 (“COVID-19”), caused by the virus SARS-CoV-2[.]” The order was issued in accordance with the Central District of California’s Continuity of Operations Plan (“COOP”), dated March 23, 2020 and effective through and including June 1, 2020, which suspends hearings in civil cases, except for emergency time-sensitive matters, such as requests for temporary restraining orders and preliminary injunctions, as ordered by the assigned District Judge. With respect to a technology tutorial, the parties were instructed to meet and confer and electronically submit a joint technology presentation that is “no more than an hour and may include PowerPoint slides and/or experts.” The court indicated it will independently view the technology tutorial, which the parties were directed to electronically submit no later than May 25, 2020, by saving it using a cloud storage provider of their choice (e.g., Dropbox) and then sending a shared link to the presentation to Chambers. (Case No. 8:19-cv-01335; April 16, 2020).

Straumann USA, LLC v. TruAbutment Inc. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana sua sponte continued the Markman hearing scheduled for April 14, 2020 to June 9, 2020, “in response to the unforeseeable global pandemic involving the disease coronavirus 2019 (“COVID-19”), caused by the virus SARS-CoV-2[.]” The order was issued in accordance with the Central District of California’s Continuity of Operations Plan (“COOP”), dated March 19, 2020 and effective through and including May 1, 2020, which suspends hearings in civil cases, except for emergency time-sensitive matters, such as requests for temporary restraining orders and preliminary injunctions, as ordered by the assigned District Judge, as well as other measures. (Case No. 8:19-cv-00878; April 1, 2020).

Rembrandt Wireless Techs., LP v. Qualcomm, Inc. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana continued the Markman hearing to June 9, 2020, “in response to the unforeseeable global pandemic involving the disease coronavirus 2019 (“COVID-19”)[.]” The order was issued in accordance with the Central District of California’s Continuity of Operations Plan (“COOP”), dated March 19, 2020 and effective through and including May 1, 2020, which suspends hearings in civil cases, except for emergency time-sensitive matters, such as requests for temporary restraining orders and preliminary injunctions, as ordered by the assigned District Judge, as well as other measures. (Case No. 8:19-cv-00705; March 23, 2020).

Central District of California (Western Division—Los Angeles)

District Judge Philip S. Gutierrez

DivX, LLC v. Netflix, Inc. – The U.S. District Court for the Central District of California’s Western Division in Los Angeles granted defendants' motions to stay the matter pending inter partes review, in part because the Court found that the COVID-19 pandemic was a relevant consideration under the  first factor (stage of the proceedings). In particular, the Court noted that defendants stated that the pandemic hindered the ability to meet certain deadlines and plaintiff recognized that “the Court, parties, and counsel face unprecedented challenges from COVID-19 and the corresponding guidance and restrictions that have disrupted everyday life and routines.” Further, the Court indicated that “if these cases were to proceed on their current schedule, hearings and trial would be subject to delays, particularly because criminal matters will take priority over these patent infringement actions.” (Case No. 2:19-cv-01602; May 11, 2020).

District Judge John A. Kronstadt

Voice International, Inc. et al v. Oppenheimer Cine Rentals LLC et al. – The U.S. District Court for the Central District of California’s Western Division in Los Angeles stayed the matter pending ex parte reexamination of the asserted claims of the asserted patent by the U.S. Patent and Trademark Office.  In weighing the relevant factors in making this determination, the Court considered among many things the fact no trial date has been set, “[n]or could a trial date be set in the near term in light of the coronavirus pandemic.”  (Case No. 2:15-cv-08830; April 15, 2020).

District Judge Michael W. Fitzgerald

GCP Applied Techs., Inc. v. AVM Industries, Inc. – On April 2, 2020, the U.S. District Court for the Central District of California’s Western Division in Los Angeles entered an order on defendant’s motion to dismiss. Having read and considered the papers, the court deemed the matter appropriate for decision without oral argument and vacated the February 3, 2020 hearing. The court subsequently considered setting a hearing on another date, but declined to do so because of the court’s Continuity of Operations Plan (“COOP”) arising from the COVID-19 emergency. Thus, on the papers alone, the court denied defendant’s motion as to its arguments regarding claim construction, indicating that the court could not determine claim construction at this stage in the litigation, and granted with leave to amend defendant’s motion to dismiss plaintiff’s willful infringement and indirect infringement claims because plaintiff “must do more than allege former [GCP] sales associates now work at AVM.” The court stated that plaintiff may file a Second Amended Complaint to remedy its willful infringement claims, but “[w]hile there may be a Second Amended Complaint, there will be no Third” and “[a]ny future successful motion to dismiss will be granted without leave to amend.” (Case No. 2:19-cv-07475; April 2, 2020).

Northern District of California (Oakland)

District Judge Yvonne Gonzalez Rogers

VTT Technical Research Centre of Finland Ltd. v. SiTime Corp. – The U.S. District Court for the Northern District of California in Oakland issued a Notice from the Clerk changing the date of the parties’ Markman hearing to May 15, 2020 and vacating the May 18th hearing date. Further, the notice indicates that the hearing “will be held by Zoom platform so that the [c]ourt and counsel can share the screen for presentations” and that counsel will be provided with the Zoom link and telephone number as needed in advance of the hearing. The Court issued a follow on Notice from the Clerk indicating that the Tutorial set in the case, scheduled to be held on May 12, 2020 will be held by Zoom Webinar at 9:15 a.m. (Case No. 4:19-cv-01174; May 5, and May 8 2020)

Public Access Information For Markman Hearing Zoom webinar:

https://us02web.zoom.us/j/93847936617?pwd=Uk0vOWZIOHBnc05qWkRSU2dUQ2dnQT09
Password: 722399

Or go to: [https://zoom.us/join]
Webinar ID: 938 4793 6617
Password: 722399

By Telephone
+1 346 248 7799
Webinar ID: 938 4793 6617
Password: 722399

Attachment:
Clerks Notice - May 5, 2020

District of Delaware (Wilmington)

District Judge Maryellen Noreika

Chugai Pharmaceutical Co., Ltd. a/k/a Cugai Seiyaku Kabushiki Kaisha v. Alexion Pharmaceuticals, Inc. – The U.S. District Court for the District of Delaware in Wilmington sua sponte issued an order allowing the public to access the April 3, 2020 Markman hearing teleconference. The order was issued in accordance with and pursuant to the court’s March 18, 2020 Standing Order In re: Court Operations Under the Exigent Circumstances Created by COVID-19. Interested members of the public may obtain the teleconference dial-information by contacting Chambers directly. (Case No. 1:18-cv-01802; April 2, 2020).

Chief Judge Leonard P. Stark

IPA Technologies Inc. v. Amazon.com, Inc. et al. – The U.S. District Court for the District of Delaware denied the defendant’s request to postpone the Markman hearing scheduled for May 14, 2020, indicating that the hearing will be held on the originally scheduled date at 11 a.m. using Skype for business. In a joint letter submitted by the parties on April 29, 2020 to address the impact of the COVID-19 pandemic and “shelter-in-place restrictions imposed by many states” on the Markman, the defendant requested that this “key event in a patent case” be rescheduled to a later date so the parties can attend in person. The defendant expressed concern that proceeding with the hearing telephonically would significantly impede efforts to explain the complex technology associated with the asserted patents and it would “not be conducive to using detailed animated demonstratives necessary to convey the concepts underlying the disputed claim terms.” (Case No. 1:16-cv-01266; May 4, 2020).

Attachment:
IPA Technologies Inc. v. Amazon.com, Inc. et al. Markman Letter - April 29, 2020

Citrix Systems, Inc. v. Workspot, Inc. – The U.S. District Court for the District of Delaware in Wilmington ordered that the Markman Hearing scheduled for June 5, 2020 will be a videoconference hearing to be arranged by counsel, with public access required, after receiving correspondence seeking guidance due to ongoing concerns surrounding in-person hearings and travel. The Court expressed no preference with respect to the particular videoconference format.  Any party wishing to refer to slides or other materials were instructed to provide a copy to the Court no later than 4:00 p.m. on June 4, 2020. In light of the COVID-19 pandemic, the Court had previously ordered a continuance of the Markman hearing, but denied continuance for arguments on a sanctions motion which shall be heard via teleconference. (Case No. 1:18-cv-00588; March 27, 2020 and May 21, 2020).

Attachment:
Citrix Systems, Inc. v. Workspot, Inc. Letter - May 15, 2020

Magistrate Judge  Christopher J. Burke

Shure Incorporated et al v. ClearOne, Inc. – The U.S. District Court for the District of Delaware in Wilmington recommended denying plaintiff's motion for a Temporary Restraining Order (TRO) prohibiting defendant from making any commercial shipments of one of the accused products because plaintiff failed to establish irreparable harm, in part because “it seems likely that the pandemic will negatively affect sales of products in this market for many months to come.” The Court stated that it “cannot ignore that this country is in the midst of the global COVID-19 pandemic” even if there was evidence suggesting that the launch of the accused product in May 2020 would spark significant sales in normal times. In particular noting that the nation is in a state of emergency, people are working remotely from home, and the defendant explained that its sales representatives are not currently able to perform demonstrations. (Case No. 1:19-cv-01343, presiding before District Judge Richard G. Andrews; May 1, 2020).

Western District of Michigan (grand rapids)

Chief Judge Robert J. Jonker

Magna Mirrors of America, Inc. v. Samvardhana Motherson Reflectec Group Holdings Limited et. al.  – The U.S. District Court for the Western District of Michigan in Grand Rapids held an in-person summary judgment motions hearing with respect to infringement, induced infringement, lost profits and convoyed sales, inequitable conduct, a license defense and a prior art date issue. The Court had previously ruled, in a May 1, 2020 order, that the hearing would proceed in-person as scheduled, and at that time the Court encouraged the parties to consider sensible accommodations that would limit risk of exposure to Covid-19. In particular, the Court noted that maybe “not all lawyers who have appeared and worked on the case need to come to the hearing . . . [m]aybe local counsel will be able to carry more of the argument load than they normally would so that less travel is needed . . . [a]nd to the extent travel is necessary, maybe counsel can consider an old fashioned road trip instead of airline travel.” (Case No. 1:17-cv-00077; May 1, 2020 and May 21, 2020).

Western District of Missouri (Kansas City)

Senior District Judge Nanette Kay Laughrey

Wastow Enterprises, LLC v. TruckMovers.com, Inc., et al. – The U.S. District Court for the Western District of Missouri in Kansas City sua sponte ordered the April 7, 2020 Markman hearing be held via teleconference “without the need for visual representations other than those previously made available by the parties in the related patents and briefing.” (Case No. 4:19-cv-00249; March 16, 2020).

Western District of New York (Rochester)

District Judge Elizabeth A. Wolford

Midwest Athletics and Sports Alliance LLC v. Xerox Corp. – The U.S. District Court for the Western District of New York in Rochester denied the parties motion to conduct the Markman hearing through a video/telephonic process to be held in late May or early June, during the COVID-19 viral outbreak. The Court indicated its preference to conduct the claim construction hearing in person “once the Court is able to resume more normal operations,” as opposed to the present situation in which “the Court and its staff are currently teleworking and primarily conducting proceedings remotely with a focus on criminal matters.”   Based on its current schedule and “the current projections concerning the anticipated course of the pandemic” the Court requested the parties to provide a list of mutually available dates in August 2020 for the claim construction hearing, before the Court set the Markman Hearing date for August 11, 2020 in a May 7, 2020 Order. (Case No. 6:19-cv-06036; April 28, 2020 and May 7, 2020).

Attachement:
Midwest Athletics and Sports Alliance LLC v. Xerox Corp. Order - May 7, 2020

Northern District of Ohio (Akron)

Special Master Michael M. Vary

ASK Chemicals, LLC v. Novis Works, LLC – In accordance with Amended General Order 2020-5 ordering all Federal Courthouses in the Northern District of Ohio closed until May 1, 2020, Special Master Michael W. Vary sua sponte ordered the April 8, 2020 Markman hearing “go forward in electronic format ‘Zoom Meeting’, or its equivalent,” with a technically capable court reporter. In addition, plaintiff’s Daubert motion is held in abeyance pending the conclusion of the hearing. (Case No. 5:19-cv-01585, presiding before District Judge Benita Y. Pearson; March 31, 2020).

Southern District of Ohio (Dayton)

District Judge Thomas M. Rose

Sherwood Sensing Solutions LLC v. Henny Penny Corp. – The U.S. District Court for the Southern District of Ohio at Dayton granted defendant’s Motion to Stay the Action Pending Resolution of Inter Partes Review at the PTO.  As part of its analysis, the court rejected plaintiff’s assertion that the COVID-19 pandemic will unnecessarily delay proceedings in the PTO, indicating that “[t]here is no reason to think this Court will be affected any less than the PTO.” (Case No. 3:19-cv-00366; April 28, 2020).

Eastern District of Texas (Marshall Division)

Chief District Judge J. Rodney Gilstrap

Infernal Tech., LLC v. Sony Interactive Entertainment America, LLC – The U.S. District Court for the Eastern District of Texas’s Marshall Division denied a motion to extend all post-Markman deadlines by six (6) months due to the COVID-19 outbreak, reasoning that it is “hopeful that things will have generally improved before” June 15, 2020, the current deadline for fact discovery. (Case No. 2:19-cv-00248; March 27, 2020).

Quest NetTech Corp. v. Apple Inc. – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted the parties’ joint motion to continue the Markman hearing scheduled for March 16, 2020 due to travel restrictions imposed in response to the coronavirus outbreak and further indicating that the parties were scheduled for telephonic mediation on March 20, 2020. The court rescheduled the Markman hearing for April 9, 2020. (Case No. 2:19-cv-00118; March 12, 2020).

Eastern District of Texas (Texarkana Division)

Magistrate Judge Caroline M. Craven

Maxell, Ltd. v. Apple Inc. – The U.S. District Court for the Eastern District of Texas’s Texarkana Division ordered that a motion to compel be decided on the papers with additional briefing ordered, and deferred to a later date its decision on whether an in-person hearing on a sanctions motion is warranted. (Case No. 5:19-cv-00036; March 19, 2020).

Western District of Texas (El Paso)

District Judge Frank Montalvo

Small Axe Enterprises, Inc. v. Helen of Troy Limited – The U.S. District Court for the Western District of Texas in EL Paso granted an unopposed motion to stay the proceedings pending resolution of an ex parte reexamination of the asserted patent at the U.S. Patent and Trademark Office (“PTO”).  As part of its analysis of the undue prejudice factor relevant to deciding whether to stay a case pending a reexamination, the Court acknowledged that it is “presently operating at a reduced level and continuing proceedings as a result of the national health emergency declared by the President” while conversely noting that “the PTO has stated its reexamination process will be unaffected.”  (Case No. 3:20-cv-00042; April 20, 2020).

Western District of Texas (Waco)

District Judge Alan D. Albright

EROAD Ltd., et al v. PerDiemCo LLC – The U.S. District Court for the Western District of Texas in Waco sua sponte ordered all Markman hearings scheduled between April 9, 2020 and May 1, 2020 shall inform the court by April 13, 2020 whether the wish to maintain their current hearing date or postpone it to the week of May 11, 2020.  The court will still provide its preliminary constructions by 5 p.m. the day before the Markman hearing is currently scheduled, even if the parties choose to postpone.  IF the parties postpone the hearing, they should meet-and-confer within 48 hours of receiving the court’s preliminary constructions to determine which claim terms still need to be raised at the Markman hearing and file a joint notice describing the accepted claim constructions and those they wish to hold arguments on.  (Case No. 6-19-cv-00026, presiding before District Judge Alan D. Albright; April 9, 2020).

Far North Patents, LLC v. ADVA Optical Networking SE – The U.S. District Court for the Western District of Texas in Waco sua sponte ordered all scheduled civil hearings to be conducted telephonically. With respect to Markman hearings, parties who wish to use PowerPoint presentation slides during the hearing are ordered to email said slides to the court within six (6) hours of receiving preliminary constructions from the court. With respect to non-Markman hearings, parties are ordered to email to the court the slides they wish to use at least two (2) hours before the hearing. This order was issued in accordance with Chief District Judge Orlando Luis Garcia’s Amended Order Regarding Court Operations Under the Exigent Circumstances Created by the COVID-19 Pandemic dated March 24, 2020. (Case No. 6:20-cv-00218; March 24, 2020).

The Standing Order has been docketed in the following patent cases before U.S. District Court for the Western District of Texas in Waco:

  • Brian Blazer v. Lowe's Companies, Inc., Case No. 6:20-cv-00276, presiding before District Judge Alan D. Albright; March 24, 2020;

  • Far North Patents, LLC v. Microchip Technology Inc., Case No. 6:20-cv-00221, presiding before District Judge Alan D. Albright; March 24, 2020;
  • Far North Patents, LLC v. NXP USA, Inc., et al., Case No. 1:20-cv-00397 (Waco), presiding before District Judge Alan D. Albright; March 24, 2020;
  • Ikorongo Texas LLC v. Bumble Trading Inc., Case No. 6:20-cv-00256, presiding before District Judge Alan D. Albright; March 24, 2020.

  • Sable Networks, Inc., et al. v. Cisco Systems, Inc., Case No. 6:20-cv-00288, presiding before District Judge Alan D. Albright; March 24, 2020;

  • VOIP-PAL.COM, INC. v. Facebook, Inc., et al., Case No. 6:20-cv-00267, presiding before District Judge Alan D. Albright; March 24, 2020.

STC.UNM v. Apple Inc. – The U.S. District Court for the Western District of Texas in Waco denied Apple’s motion to transfer the case to the Northern District of California but granted its alternative motion to transfer the case to the Austin Division of the Western District of Texas. Notably, the court found “any arguments relying on the impact of the COVID-19 virus too speculative at this time to weigh either for or against transfer. It was noted that the virus has had a substantially greater impact and has significantly slowed down the dockets in the NDCA, while conversely it was noted that the virus could also discourage air-travel from California to the WDTX. Because these factors look too far forward and speculate as to the uncertain impact of the virus, the Court declines to find that they weigh either for or against transfer when analyzing this factor.” (Case No. 6:19-cv-00428; April 1, 2020).

District of Utah (Central Division—Salt Lake City)

Senior District Judge Dee Benson

CAO Group v. GE Lighting, et. al. – The U.S. District Court for the District of Utah’s Central Division in Salt Lake City issued an Amended Order denying Plaintiff’s Motion to Reopen the Case and Lift Stay on the written submissions alone, “[g]iven the unique circumstances and social gathering restrictions brought about by the current global pandemic.” The court went further and dismissed the action in its entirety, without prejudice, due to lack of venue under the United States Supreme Court’s TC Heartland decision. (Case No. 2:11-cv-00426; May 12, 2020).

Attachement:
CAO Group v. GE Lighting, et. al. Amended Order - May 12, 2020

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