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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.
Eastern District of arkansas (Little Rock)
Chief District Judge D.P. Marshall, Jr.
Jager Pro, LLC v. Bull Creek Welding and Fabrication, Inc. – The U.S. District Court for the Eastern District of Arkansas in Little Rock denied defendant’s request to extend the “stay” until an ongoing inter partes review of two the patents involved in the case is completed. The Court noted that it had canceled the trial date and suspended the Scheduling Order due to the COVID-19 pandemic, and to afford the Court time to decide the parties' dispositive motions, but it didn't enter a stay. It found that there were not compelling reasons to halt things now, in part because the case “is far along” and “the inter partes review features different defendants, prior arts, and invalidity arguments.” In referring certain items to the Magistrate Judge to “keep the case moving forward, the Court indicated it “is running behind in addressing the parties' voluminous motions on the merits . . . . [and] this is shaping up as a summer of jury trials, including a three-week criminal case.” (Case No. 4:19-cv-00107; July 6, 2021).
Central District of California (Southern Division—Santa Ana)
District Judge Stanley Blumenfeld Jr.
Sterno Home Inc. v. Shenzhen Liown Electronics Company, Ltd. et al. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana granted defendants' motions to stay the matter pending inter partes review, after considering the factors relevant to the determination. In considering the other factors that may impact the totality of the circumstances, the Court indicated that it is “mindful of COVID-19’s potential impact on parties’ ability to litigate . . . [but] is also aware that much of litigation can proceed—and has been proceeding—despite the pandemic.” (Case No. 8:20-cv-00912; October 30, 2020).
District Judge James V. Selna
Broadcom Corporation et al v. Netflix, Inc. – The U.S. District Court for the Central District of California in Santa Ana granted defendant's motion to transfer venue to the Northern District of California pursuant to 28 U.S.C. § 1404(a), finding that the pertinent Jones factors favor transfer. As part of its analysis, the Court found that the inconvenience of third-party witnesses favored transfer, because “w]hile the Court can only speculate as to pandemic related travel restrictions at the time of trial, the Court agrees that [defendant’s] identified third-party witnesses would face inconvenience due to travel, lodging, and missed work were trial to be held in the Central District.” (Case No. 8:20-cv-00529; July 10, 2020).
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. On July 6, 2020, the Court continued the Claim Construction Hearing from July 21, 2020 to September 22, 2020, at 9:00 a.m., because of “the Court’s preference to hold claim construction hearings in person, and the congestion of the Court’s calendar.” The Court modified the case schedule, on August 3, 2020, based on the parties joint Stipulation Regarding Modification Of The Pretrial Scheduling Order, “in order to have the benefit of the Court’s Claim Construction Ruling during the fact discovery period, as well as for expert reports and during expert discovery.” On January 20, 2021, the Court denied Defendant’s Motion To Stay pending inter partes review proceedings, and directed the parties to meet and confer and submit proposed dates for a claim construction hearing. The parties were advised that, on January 6, 2021, the Chief Judge issued General Order 20-002, extending the Central District’s Continuity of Operations Plan, which suspended all in-person hearings in civil matters, through at least January 29, 2021; and that the status of in-person hearings beyond January remains uncertain due to the ongoing COVID-19 pandemic so the parties should be prepared to conduct the claim construction hearing, and present any visual materials, by Zoom. (Case No. 8:19-cv-01335; April 16, 2020, July 6, 2020, August 3, 2020 and January 20, 2021).
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 Andre Birotte, Jr.
Guy A. Shaked Investments, Ltd. et al v. Trade Box, LLC – The U.S. District Court for the Central District of California in Los Angeles granted defendant’s Motion For Stay Pending Inter Partes Review. As part of its analysis of the factor related to potential prejudice and tactical disadvantage, the Court noted that in light of the COVID-19 pandemic the current trial date would not stick in any event. (Case No. 2:19-cv-10593; November 18, 2020).
Philips North America LLC f/k/a Philips Electronics North America Corporation v. Garmin International, Inc. et al. – The U.S. District Court for the Central District of California in Los Angeles granted defendant’s Motion To Modify the Scheduling Order Until After the PTAB’s Final Decision with respect to one of the asserted patents, concluding that a limited stay is warranted after balancing the relevant factors and considering the totality of the circumstances. As part of its analysis of the stage of proceedings factor, the Court noted that a trial date has been set but further indicated that “considering the COVID-19 pandemic and the standing order suspending civil jury trials in this District, it is unlikely that the current trial date would be feasible.” The Court stayed the case until ten days after the expected PTAB decision date, i.e., until November 10, 2021. (Case No. 2:19-cv-06301; February 25, 2021).
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).
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 Int'l, 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 George H. Wu.
Realtime Adaptive Streaming LLC v. Netflix, Inc. et al. – The U.S. District Court for the Central District of California in Los Angeles granted defendants’ Motion for Award of Attorney Fees, subject to confirmation of the fees incurred in preparing for the hearing on the motion. As part of its analysis with respect to the determination that the requested amount was an appropriate lodestar amount, the Court disagreed with the argument that the inclusion of certain time spent after the closing of briefing were “not reasonably necessary to support” the motion. The Court did acknowledge, however, that plaintiff “may have been unlucky in the timing of the hearing on this motion,” since it agreed to a request for a continuance in February 2020 but then “several other continuances (one caused in part due to the onset of the COVID-19 pandemic)” delayed the hearing until September. (Case No. 2:19-cv-06361; September 21, 2020).
Northern District of California (Oakland)
District Judge Yvonne Gonzalez Rogers
Impinj, Inc. v. NXP USA, Inc. – The U.S. District Court for the Northern District of California in Oakland rejected plaintiff’s proposal to lift a stay of the litigation pending inter partes review by the U.S. Patent and Trademark Office of the patents-in-suit. The Court indicated it “is willing to approve an accelerated schedule to reduce any potential prejudice once the IPR proceedings are concluded . . . [but noted that] due to COVID-19, the District may be backlogged on jury trials and a continuance may be unavoidable.” (Case No. 4:19-cv-03161; October 22, 2020).
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
Northern District of California (San Francisco Division)
District Judge Susan Illston
Varian Medical Systems, Inc. v. ViewRay, Inc. – The U.S. District Court for the Northern District of California’s San Francisco Division denied defendants' motion to stay pending inter partes review (“IPR”), without prejudice to renewal in the event the IPRs are instituted. The Court believed “the better course is to proceed with this case and to allow defendants to renew their request for a stay in the event the PTAB institutes the IPRs”, given that it has set an August 2021 trial date, as well as a pretrial schedule for fact and expert discovery and motion practice. The Court did acknowledge that it was “not unsympathetic to the concerns raised by defendants about engaging in time-consuming and expensive litigation while waiting for the PTAB’s decision, as well as the fact that COVID-19 may make those endeavors more complicated and burdensome.” (Case No. 3:19-cv-05697; September 9, 2020).
Chief District Judge Richard G. Seeborg
X Commerce, Inc. d/b/a Magento, Inc. v. Express Mobile, Inc. – The U.S. District Court for the Northern District of California in San Francisco granted in part plaintiff’s motion for stay pending reexamination, finding that a “confluence of circumstances” support a temporary stay through November 30, 2021 but that “it would be premature at this juncture to enter a stay expressly extending through final conclusion of those reexamination proceedings.” The Court noted that “the advanced stage of the litigation ordinarily might weigh against a stay, there is no undue prejudice to the patent holder in this instance, particularly where it remains uncertain when a jury trial could commence.” (Case No. 3:17-cv-02605; March 5, 2021).
Southern District of California (San Diego)
District Judge Cynthia Bashant
Echologics, LLC et al v. Orbis Intelligent Systems, Inc. – The U.S. District Court for the Southern District of California in San Diego denied defendant’s Motion To Transfer Venue to the District of Delaware pursuant to 28 U.S.C. § 1404(a), finding that defendant failed to meet its burden to show the balance of factors favor transfer. As part of its analysis of the convenience of witness factor, the Court considered, among other witnesses, the convenience to the founder and CTO of the defendant who typically resides in San Diego but has been “spending most of his time in England during the pandemic.” Although the plaintiff speculated that “the pandemic’s negative influence on travel plans will lessen during [the] litigation and . . . [the witness] is likely to return to San Diego permanently during [the] litigation”, the Court found that the defendant was in a better position to identify his residency. With respect to the relative congestion and time to trial factor, the Court found the factor neutral since “all courts are experiencing some degree of congestion due to the ongoing pandemic.” (Case No. 3:21-cv-01147; November 9, 2021).
Masimo Corporation v. Sotera Wireless, Inc. et al. – The U.S. District Court for the Southern District of California in San Diego granted defendant’s Motion To Stay Proceedings pending Inter Partes Review (IPR) with the Patent and Trial Appeal Board (“PTAB”) for each of the nine asserted patents. As part of its analysis of the Court found that the stage of the proceedings factor weighed in favor of a stay. The Court indicated that it “cannot disregard the continued impact of the COVID-19 pandemic on the ability of counsel and this Court to pursue an expeditious resolution of this case.” It further noted that even after regular court proceedings resume, trial in this and other civil cases may be further postponed because of “the priority that will necessarily be given to criminal trials.” (Case No. 3:19-cv-01100; February 1, 2021).
District Judge Cathy Ann Bencivengo
Impact Engine, Inc. v. Google LLC – The U.S. District Court for the Southern District of California in San Diego issued a Minute Order continuing a follow-on claim construction hearing from December 8, 2020 until January 5, 2021 at 9:30 a.m. (PST), due to the COVID-19 pandemic emergency in San Diego County. Pursuant to an off-record conference with counsel, the Claim Construction Hearing was reset for January 14, 2021 at 9:30 a.m. (PST). In an Order issued on January 8, 2021, the Court indicated it will proceed remotely with the January 14, 2021 Claim Construction Hearing, due to ongoing and escalating health concerns related to the COVID-19 pandemic in San Diego County, and in light of Chief Judge Order No. 52-B. (Case No. 3:19-cv-01301; December 7, 2020 and January 8, 2021).
District of connecticut (Hartford)
District Judge Alfred V. Covello
Document Dynamics, LLC v. Xerox Corporation – The U.S. District Court for the District of Connecticut in Hartford granted defendant's motion to transfer venue to the Western District of New York pursuant to 28 U.S.C.§ 1404(a), finding that the pertinent factors weigh strongly in favor of transfer. As part of its analysis, the Court found that transfer will “not negatively impact the trial efficiency or the interests of justice”, in part because discovery is still on going as reflected by the recently filed May 26, 2020 joint motion for the modification of the case schedule, “due to the COVID-19 pandemic and its effect on the review of the source code and the ability to conduct fact depositions of the party witnesses.” (Case No. 3:18-cv-00411; July 2, 2020).
District of Delaware (Wilmington)
District Judge Richard G. Andrews
Express Mobile, Inc. v. Web.Com Group, Inc. – The U.S. District Court for the District of Delaware in Wilmington granted defendant's motion to transfer venue to the Middle District of Florida, Jacksonville Division pursuant to 28 U.S.C. § 1404(a), finding that the balance of the relevant factors favor transfer and outweigh plaintiff’s forum preference. As part of its analysis, the Court considered the impact of the ongoing COVID-19 pandemic which “has highlighted that there can be risks associated with travel . . . [making some people] reluctant to travel.” In particular, the Court believed it “appropriate to give slightly greater weight to the possibility of less risk associated with less travel, which would favor the Florida venue.” (Case No. 1:19-cv-01936; July 14, 2020).
TC Technology LLC v. Sprint Corporation et al. – The U.S. District Court for the District of Delaware in Wilmington granted defendants’ Motion to Stay Pending Ex Parte Reexamination, staying all further proceedings in the matter are stayed and vacating the scheduling order for upcoming proceedings in the case. As part of its analysis of the state of the proceedings, the court indicated that it cannot ignore the potential health risk from the ongoing COVID-19 pandemic to the parties, counsel, witnesses, court staff, jurors. The Court noted that Delaware transitioned to phase 3 of its COVID-19 protocol in May 2021, and recently resumed jury trials although at a reduced pace. It further indicated that, while appropriate precautions can be taken to increase the safety of the trial proceedings for those involved, the Court “must be mindful of the risks and uncertainties associated with planning to hold an in-person trial when it is difficult to predict what the likely status of the pandemic will be two months from now.” Indeed it is possible that “even without taking the reexamination proceeding into account, the uncertainties associated with the course of the pandemic could require a further postponement of the trial.” Given these considerations, the Court found the “imminence” of the jury trial date – currently set for November 15, 2021 – to be “a less significant factor than it might be in more normal times.” (Case No. 1:16-cv-00153; October 4, 2021).
Circuit Judge William C. Bryson
British Telecommunications PLC v. IAC/InteractiveCorp., et al. – The U.S. District Court for the District of Delaware granted defendants' motion to stay pending reexamination by the Patent & Trademark Office. As part of its analysis, the Court found that the delay factor would not “constitute undue prejudice” noting that “while the COVID-19 pandemic adds an additional layer of uncertainty to predicting the amount of delay that would result from a stay, any postponement of the trial caused by the pandemic would mean the period of delay resulting from a stay would be less than under normal circumstances.” Although claim construction and fact discovery is complete and the trial date has been set for November 30, 2020, the Court noted that “it seems highly unlikely that the present schedule will hold” due to the COVID-19 pandemic. In particular, “when the court transitions to ‘phase 2,’ it will begin conducting jury trials, but at a significantly reduced rate from normal, holding no more than one jury trial at a time. Furthermore, the court has announced that for jury trials held in phase two, criminal cases will be given precedence. And once trials resume, the district court will be faced with the challenge of dealing with the backlog of civil cases that has built up during the past five months.” As such, the Court indicated it was unlikely that the trial could be conducted before the end of this calendar year. (Case No. 1:18-cv-00366; September 11, 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 ordered the parties to submit a joint letter regarding the September 21, 2020 preliminary injunction hearing, among other things, indicating “their views regarding how the hearing should work from a logistical perspective in the event that it must be converted to a videoconference hearing using the Skype for Business platform in light of the COVID−19 pandemic.” (Case No. 1:19-cv-01343, presiding before District Judge Richard G. Andrews; August 3, 2020).
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. The Court ordered that the July 28, 2020 Markman hearing will be held via videoconference using the Skype for Business platform. After reviewing the letter submitted by the parties, the Court ordered that the preliminary injunction hearing will be held via videoconference using the Skype for Business platform. (Case No. 1:19-cv-01343, presiding before District Judge Richard G. Andrews; August 3, 2020 and September 1, 2020).
District Judge Colm F. Connolly
ChromaDex, Inc. et al v. Elysium Health, Inc. – The U.S. District Court for the District of Delaware in Wilmington denied the parties request to hold the claim construction hearing via videoconference, instead ordering that the “Markman hearing will be held by telephone.” The Markman hearing is currently scheduled to be held on December 17, 2020. (Case No. 1:18-cv-01434; December 1, 2020).
District Judge Maryellen Noreika
Best Medical International, Inc. v. Varian Medical Systems, Inc. et al. – The U.S. District Court for the District of Delaware in Wilmington sua sponte ordered that the Markman Hearing will be held via videoconference June 26, 2020 and that the public will be provided access to attend. 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 (as modified May 17, 2020). Interested members of the public may obtain the access information for the Markman Hearing by contacting Chambers at 302-573-6470. (Case No. 1:18-cv-01599; June 24, 2020).
PureWick Corporation v. Sage Products LLC – The U.S. District Court for the District of Delaware in Wilmington denied defendant’s Motion for Partial Stay Pending Instituted Inter Partes Review, in which the defendant argued, in part, that the case was in a relatively early stage with trial “still more than a year away, even assuming there will be no delays due to the ongoing Covid-19 pandemic.” The defendant further argued that the pandemic will “likely” cause trial dates to be extended. (Case No. 1:19-cv-01508; May 4, 2021).
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
Cirba, Inc. d/b/a Densify, et al. v. VMware, Inc. – The U.S. District Court for the District of Delaware in Wilmington Ordered that the Markman hearing, scheduled for July 31, 2020, be rescheduled for August 7, 2020 beginning at 1:00 p.m. The Court further ordered that the hearing will proceed by video, after the parties requested that “the hearing be converted from in-person to teleconference/videoconference with VMware.” (Case No. 1:19-cv-00742; July 24, 2020).
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
Vytacera Bio, LLC v. CytomX Therapeutics, Inc. – The U.S. District Court for the District of Delaware in Wilmington Ordered that the August 23, 2021 Markman hearing will no longer be held in−person, but it will instead be held virtually over videoconference using the Microsoft Teams platform, in light of the parties' request submitted to the Court by e−mail indicating that one party would prefer to hold the Markman hearing “virtually due to concerns with COVID−19 and the current state of affairs regarding the pandemic.” (Case No. 1:20-cv-00333; August 12, 2021).
District Judge Joshua D. Wolson
MED-EL Elektromedizinische Gerate GmbH et al v. Advanced Bionics, LLC – The U.S. District Court for the District of Delaware in Wilmington denied defendant’s Motion for Partial Stay Pending Resolution of Inter Partes Review, after considering the relevant factors and the particular facts of the case. As part of its analysis, the Court found that the prejudice factor weighed against a partial stay of the matter noting that, due to the COVID-19 pandemic-related restrictions, the defendant will be prejudiced if “a window of opportunity arises to depose [plaintiff’s] Austrian-based witnesses (perhaps in the spring and summer months), and it cannot question them about patents subject to a stay.” In addition to the “uncertainty about when another deposition opportunity would arise (given the ever evolving nature of COVID-19 restrictions)”, the defendant would also have to depose the same witnesses a second time. On July 30, 2021 the Court granted in part and denied in part plaintiffs’ Motion for Partial Stays, ruling that at the conclusion of fact discovery, all claims concerning three of the asserted patents are stayed. The plaintiffs had requested that the parties complete fact discovery before partially staying the case to ensure that defendants will not experience any undue prejudice relating to its ability to depose plaintiffs’ fact witnesses based in Austria in light of the ever-evolving nature of the COVID-19 pandemic restrictions. (Case No. 1:18-cv-01530; March 1, 2021 and July 30, 2021).
Middle District of Florida (Jacksonville)
District Judge Harvey E. Schlesinger
Depuy Synthes Products, Inc. v. Veterinary Orthopedic Implants, Inc. – The U.S. District Court for the Middle District of Florida in Jacksonville denied Veterinary Orthopedic Implants, Inc.’s motion to modify the June 26, 2020 Order Regarding the Markham Hearing Currently Scheduled for September 2, 2020, instead postponing the Markham hearing and scheduling a telephonic status conference for the same date, September 2nd, at which time the parties Court will reschedule the Markman hearing for early 2021 in which an in-person hearing may be held. Notably, the Court reserved the right to change the in-person hearing to a video conference, taking into consideration the uncertainties regarding “future containment, vaccinations, and treatments for COVID-19.” The Court further stated that, if required, it would rule based solely on the briefs, but is not inclined to do so at this time. In a September 4, 2020 Order, the Court set the Markman hearing for February 17, 2021 at 9:00 a.m. (EST). The Court indicated that its preference is for an in-person hearing, however that “is subject to change due to the serious health concerns presented by the COVID-19 pandemic.” On September 17, 2020, the Court issued an order regarding the parties’ Joint Motion to Modify Case Management and Scheduling Order modifying other case deadlines in light of the postponement of the Markman hearing by 168 days, including resetting the final pretrial conference from August 11, 2021 to February 2, 2022 and the trial from October 4, 2021 to April 4, 2022. In an Order issued on January 21, 2021, the Court rescheduled the Markman hearing for June 30, 2021 at 10:30 (EDT), after the parties conferred and agreed “that it would be in the best interests of all parties to further postpone the Hearing in hopes that vaccination will make an in-person hearing possible this summer.” The Court further indicated that if either party is unable to proceed with an in-person hearing on June 30, 2021 due to concerns about the COVID-19 pandemic, they must notify the Court at the earliest time practicable. (Case No. 3:18-cv-01342; August 18, 2020, September 4, 2020, September 21, 2020 and January 21, 2021).
Middle District of Florida (Orlando)
District Judge Wendy W. Berger
Bell Semiconductor, LLC v. Renesas Electronics Corporation et al. – The U.S. District Court for the Middle District of Florida in Orlando granted the parties' motion to continue a technology tutorial, but denied their request to conduct the tutorial via videoconference because of the COVID-19 pandemic. The Court continued the Technology Tutorial Hearing to December 3, 2020, a date closer to the Claim Construction Hearing. Although the Court was “sympathetic to the disruptions the pandemic has caused,” it found the request to appear by video to be premature, and without good cause, particularly since the hearing is still three months away. (Case No. 6:19-cv-02196; September 15, 2020).
District Judge Gregory A Presnell
ED3D Technologies, Inc. f/k/a D3D Enterprises, LLC v. Microsoft Corporation – The U.S. District Court for the Middle District of Florida in Orlando denied defendant's motion to transfer venue to the Western District of Washington pursuant to 28 U.S.C. § 1404(a), finding that some factors weigh in favor of transfer but the overall balance requires the Court to honor the “strong presumption” supporting the plaintiff’s choice of forum. As part of its analysis, the Court considered the risks associated with travel during the ongoing COVID-19 pandemic but noted “[w]hether the case remains in Florida or is transferred to Washington, one of the parties will necessarily be bearing this burden of travel during the pandemic and that will present a risk to anyone.” The Court declined to weigh the fact of pandemic travel in favor of or against transfer, because it was reluctant to make generalized assumptions about which party would face more risk. (Case No. 6:20-cv-01699; February 4, 2021).
Southern District of Florida (Miami)
District Judge Paul C. Huck
Xiamen Baby Pretty Products Co., Ltd. v. Talbot's Pharmaceuticals Family Products, LLC – The U.S. District Court for the Southern District of Florida in Miami granted defendant's motion to transfer venue from the Southern District of Florida to the Western District of Louisiana pursuant to 28 U.S.C. § 1404, finding that the private and public factors weigh in favor of transfer. As part of its analysis, the Court found that the convenience of the witnesses factor slightly favored transfer, in part, because if transferred defendant’s witnesses, especially those over the age of sixty, would not have to travel to Florida during the COVID-19 pandemic “and their personal and professional responsibilities would not be as disrupted if [the] case is transferred closer to where they live.” The Court also indicated that the jury trial date is set for August 16, 2021, but indicated that “given the circumstances due to the COVID-19 pandemic, that is not a realistic date for jury trials to resume in this District.” (Case No. 1:20-cv-25010; February 17, 2021).
Northern District of Georgia (Atlanta Division)
District Judge Mark H. Cohen
Epic Tech, LLC vs. Pen-Tech Associates, Inc. – The U.S. District Court for the Northern District of Georgia in Atlanta granted defendant’s Motion for Stay seeking a stay of the litigation pending inter partes review by the U.S. Patent and Trademark Office of the patent-in-suit. The Court noted that the parties did not raise it, but “the coronavirus pandemic is also a relevant consideration” under stage of litigation factor. In particular, the Court recognized that the guidance and restrictions that have occurred due to the COVID-19 pandemic have disrupted the normal process of civil discovery, including the taking of depositions, and the relatively short period of time remaining for the PTAB to determine whether to institute IPR proceedings will not significantly delay the case, particularly given these concerns. (Case No. 2:20-cv-02428; September 28, 2020).
Northern District of Illinois (Eastern Division—Chicago)
District Judge John Robert Blakey
Norix Group, Inc. v. Correctional Technologies, Inc. d/b/a Cortech USA et al. – The U.S. District Court for the Northern District of Illinois in Chicago granted defendant’s Motion To Stay Proceedings Pending Final Disposition Of The Reexamination of the patent-in-suit, finding a stay of the litigation appropriate, in part, because it was “not inclined to expend additional judicial resources on a claim that may not proceed . . [nor] should the parties be compelled to pursue discovery on a claim that may fall away.” As part of its argument, the defendant argued that “the fact that this case is advanced in the litigation proceedings should be given limited weight, if any,” noting that due to delays in all court proceedings caused by the COVID-19 pandemic the scheduling of civil jury trials “may take some time, as criminal trials and civil jury trials that had trial dates scheduled prior to the pandemic will likely proceed before civil jury trials that did not have trial dates scheduled prior to the pandemic.” (Case No. 1:17-cv-07914; February 25, 2021).
Magistrate Judge Gabriel A. Fuentes
Ellenby Technologies, Inc. v. FireKing Security Group et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago issued a Memorandum Opinion And Order denying defendants' motion to reconsider an earlier order denying without prejudice defendants' motion to stay pending their petition for inter partes review. As part of its analysis, the Court found that discovery should proceed given plaintiff’s interest in moving the matter closer to a determination of patent rights, despite the possibility that IPR may be instituted in August 2021, and “even though a trial date has yet to be set during pandemic conditions in which civil trial dates are commonly not set as promptly as they were before the pandemic.” (Case No. 1:20-cv-02253, presiding before District Judge Steven C. Seeger; April 13, 2021).
District Judge John Z. Lee
Beckman Coulter Inc. v. Sysmex America Inc. et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago requested that the parties try again to arrive at dates for the Markman hearing after the parties reported that they could not come to an agreement during the prior meet and confer process. The Court indicated it was hard to believe that the parties could not accomplish the “rather noncontroversial task”, admonishing the parties that during these uncertain times “it is not too much to expect the parties and their counsel to exercise a modicum of professional courtesy to agree on dates.” Finally, if the parties fail to agree on dates, the Court stated it will simply pick dates that work best with its schedule. In a June 17 Minute Entry Order, the Court ordered parties to appear in person in the Judge's courtroom on June 23, 2020 at 9:30 and “to bring with them a calendar noting the availability of their respective experts over the next three months.” The Court further instructed Counsel to review the Northern District's order regarding COVID−19 safety precautions at the courthouse. The Markman hearing is set for September 10th and 11th and will proceed via video. Members of the public and media will be able to call in to listen to the hearing. (Case No. 1:18-cv-06563; June 9, 2020, June 17, 2020 and September 4, 2020).
Southern District of Indiana (Indianapolis)
District Judge Tanya Walton Pratt
Somero Enterprises, Inc. v. Ligchine International Corporation – The U.S. District Court for the Southern District of Indiana’s Indianapolis Division granted defendant's motion to transfer venue from the Indianapolis Division to the New Albany Division of the Southern District of Indiana pursuant to 28 U.S.C. § 1404(a), finding that the location of material events, witness convenience, and the interest of justice favored transfer. As part of its analysis the Court noted that rather than demonstrating the burden that transfer would have on the witnesses— other than noting the 1.5-hour drive time difference—plaintiff argued that transfer to the New Albany Division would negatively impact counsel because he will need to drive approximately two hours more each way which would likely require counsel to fly and possibly stay overnight at a hotel, thus increasing his exposure to COVID-19. The Court indicated, however, that it may only consider the convenience of the parties and witnesses—not the convenience of counsel. (Case No. 1:20-cv-02356; February 10, 2021).
Northern District of Iowa (Western Division—Cedar Rapids)
District Judge C.J. Williams
Guntert & Zimmerman Const. Div., Inc. v. GOMACO Corporation – The U.S. District Court for the Northern District of Iowa’s Western Division in Cedar Rapids denied plaintiff’s motion for a preliminary injunction prohibiting the sale of the accused product, in part based on its finding that the plaintiff failed to establish irreparable harm and the public interest factor slightly weighs in favor of denying an injunction. Although the Court was sympathetic that plaintiff, like most other businesses, is now forced to adjust its operations to account for the economic disruption caused by the COVID-19 pandemic, it found that such unanticipated adjustments do not warrant a preliminary injunction. The Court stated that a “patentee cannot treat a patent infringement claim like an ace up its sleeve that it can lay down once economic downturn arises . . . [suggesting] not urgency, but rather, business strategy.” (Case No. 5:20-cv-04007; October 14, 2020).
District of Maryland (Baltimore)
Magistrate Judge Stephanie A. Gallagher
Paice LLC et al v. Bayerische Motoren Werke AG et al. – The U.S. District Court for the District of Maryland in Baltimore granted defendant’s Motion To Stay Pending Inter Partes Review, however it found “a more limited stay” was warranted than had been sought. Despite the case being near the close of discovery, the Court noted that the COVID-19 pandemic was “creating public health dangers throughout the world” and indicated that it was not “inclined to require persons to travel from one European country to another or to jeopardize the health of any participants in order to adhere to the originally set schedule.” A brief stay through February 26, 2021 was ordered to foster “compliance with all public health restrictions . . . [and afford the] Court the benefit of ascertaining the decisions the Patent Trial and Appeal Board (“PTAB”) will make regarding [defendants’] remaining petitions for inter partes review.” The parties were also instructed to provide a joint report, on or before that date, summarizing the status of COVID-19 related restrictions in the relevant European countries and any decisions received from the PTAB. (Case No. 1:19-cv-03348; November 25, 2020).
District Judge George Levi Russell, III
Capella Photonics, Inc. v. Ciena Corporation – The U.S. District Court for the District of Maryland in Baltimore granted defendant's motion to transfer venue to the Northern District of California pursuant to 28 U.S.C. § 1404(a). As part of its analysis of the relevant factors, the Court found that transferring the action to the Northern District of California will not significantly inconvenience parties or witnesses noting that “considerations of convenience cannot augur as strongly against transfer as they once might have.” The Court further stated that “this is even more true in our pandemic-stricken present, in which litigants across the country have by necessity become adept at conducting litigation remotely.” (Case No. 1:20-cv-00702; December 1, 2020).
District of Maryland (Greenbelt)
District Judge George Jarrod Hazel
FrenchPorte, LLC et al v. C.H.I. Overhead Doors, Inc. – The U.S. District Court for the District of Maryland in Greenbelt granted defendant's motion to transfer venue to the Central District of Illinois pursuant to 28 U.S.C. § 1406. The Court declined to dismiss the action, in response to plaintiff’s alternative argument that was based in part “on the delay that would be caused by having to re-file in Illinois, which would be in addition to the delay already caused by Covid-19.” (Case No. 8:20-cv-00467; January 25, 2021).
District of Massachusetts (Boston)
Chief Judge F. Dennis Saylor, IV
Singular Computing LLC v. Google LLC – The U.S. District Court for the District of Massachusetts in Boston denied, without prejudice, defendant’s Motion To Stay Pending Inter Partes Review, as premature because the Patent Trial and Appeal Board has not yet made a determination as to whether to institute the multiple petitions filed by defendant. As part of its argument, defendant stated that the ongoing COVID-19 pandemic “effectively places this case even earlier in its timeline, as any future trial will almost certainly occur later than it otherwise would, given the backlog of criminal and civil trials—in this district and across the country—arising from the pandemic.” In addition, it noted that “the PTAB has been able to maintain its normal pace . . . [and] has made clear that it is proceeding as usual during the pandemic.” Although the Court said it may revisit the issue, as appropriate if an IPR is instituted, it found that “[u]nder the circumstances, the balance of competing interests weighs in favor of denying the stay and permitting discovery to continue.” On June 10, 2021, the Court granted defendant’s Renewed Motion To Stay Pending Inter Partes Review after holding a Hearing by video. The case was stayed through May 12, 2022 except for the completion of fact discovery by July 23, 2021, unless extended. The Markman hearing to be discussed at the next status conference set for July 12, 2021 at 4:30 PM by remote proceeding, which will be made available to the public. (Case No. 1:19-cv-12551; December 3, 2020 and June 10, 2021).
District Judge Indira Talwani
Big Beings USA Pty. Ltd., et al. v. Nested Bean, Inc. – The U.S. District Court for the District of Massachusetts in Boston granted the parties Joint Motion to Amend Scheduling Order to Prioritize Claim Construction, Expedite Hearing and Stay Discovery. The Court rescheduled the Markman hearing from December 16, 2020 to September 2, 2020 at 10 a.m. (EDT), and ordered that “upon stipulation and agreement of the parties, absent material change in the health safety concerns raised by Covid, the hearing will proceed via video-conference.” (Case No. 1:20-cv-10101; July 24, 2020).
Attachment:
Big Beings USA Pty. Ltd., et al. v. Nested Bean, Inc - 1:20-cv-10101-IT - July 23, 2020
SoClean, Inc. v. Sunset Healthcare Solutions, Inc. – The U.S. District Court for the District of Massachusetts in Boston granted the parties’ Joint Motion to Continue Markman Hearing, resetting the Markman hearing, which was originally set for July 21, 2020, to August 3, 2020 at 2:30 p.m. The Court further indicated that the hearing will be conducted by video conference. The Markman Hearing set for August 3, 2020 was reset for July 29, 2020 as 10:00 a.m. (EDT). (Case No. 1:20-cv-10351; June 17, 2020 and July 2, 2020).
In order to gain public access to the Markman Hearing, sign up at the following address:
www.public.mad.uscourts.gov/seating−signup.html.
Eastern District of Michigan (Detroit)
District Judge Linda V. Parker
Schwendimann f/k/a Dalvey et al v. Stahls', Inc. – The U.S. District Court for the Eastern District of Michigan in Detroit granted defendant’s Motion To Stay Pending Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board. As part of its three factor analysis, the Court noted that the case was “not in its infancy” and a Markman hearing has been scheduled, however the Court further considered that the Markman hearing “is likely to be rescheduled in light of the continuing COVID-19 pandemic” and the trial date has not been set. (Case No. 2:19-cv-10525; January 19, 2021).
Western District of Michigan (Grand Rapids)
Chief Judge Robert J. Jonker
Magna Mirrors of America, Inc. v. Samvardhana Motherson Reflectec Grp. Holdings Ltd., 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).
District of Minnesota (St. Paul)
Magistrate Judge Hildy Bowbeer
Oxygenator Water Technologies, Inc. v. Tennant Company – The U.S. District Court for the District of Minnesota in St. Paul granted in part and denied in part defendant’s Motion To Stay until the PTAB issued a final written decision on the Inter Partes Review (IPR), staying all expert discovery, dispositive motion practice, and trial-related proceedings in the case, but not staying fact discovery and related motions that are not otherwise barred by the current scheduling order. In finding that the potential undue prejudice and tactical advantage factor favored a stay, the Court was not persuaded that the timing of the IPR petition arose from “dilatory [or tactical] purpose” noting that “the need to recreate devices from prior art references, test the devices, analyze the results, and prepare IPR petitions would have taken time under ordinary conditions, and undoubtedly was further delayed because of the COVID pandemic.” With respect to the stage of litigation factor, the Court considered that “the District has made some important advances in its readiness to try complex civil cases” pointing to the development and refinement of protocols for both virtual and in-person civil jury trials citing to General Order In re: Updated Guidance to Court Operations Under the Exigent Circumstances Created by Covid-19, issued on September 3, 2021. However, the Court noted that there is no firm trial date and between now and there lie “the challenges of scheduling lengthy civil trials (notwithstanding the protocols that have been developed) when there is a backlog of criminal trials that must take priority, older civil cases that are backed up for trial behind those, and a health and safety environment that is far from predictable.” (Case No. 0:20-cv-00358, presiding before District Judge Eric C. Tostrud; October 7, 2021).
