Canon, Hp And Epson Denied Motion To Toss Infringement Claim

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Canon, Hp And Epson Denied Motion To Toss Infringement Claim

 news 2015-06-30 at 1:14:10 pm Views: 264
  • #42886

    Canon, Hp And Epson Denied Motion To Toss Infringement Claim
    Memory Card Patent Suit Survives 'Kessler' Attack

    By Vanessa Blum

    SAN FRANCISCO — An effort by a group of technology companies to short-circuit patent litigation in the Northern District of California using a recently resuscitated patent law doctrine was turned back on Thursday.

    U.S. District Judge Claudia Wilken denied a motion to toss infringement claims against Canon Inc., Hewlett-Packard Co., Newegg Inc. and Seiko Epson Corp., finding their earlier victory before the U.S. International Trade Commission (ITC) doesn't trigger the so-called Kessler doctrine.

    The doctrine, established by the U.S. Supreme Court in 1907, bars the relitigation of patent claims that have already been resolved in favor of an accused infringer. Lawyers have embraced the defense following a 2014 ruling from the U.S. Court of Appeals for the Federal Circuit in Brain Life v. Elekta, which invoked the doctrine for the first time in decades. U.S. District Judge Phyllis Hamilton of the Northern District of California followed suit, granting summary judgment for defendants in 2014 under the Kessler doctrine in litigation over Internet search patents.

    But Wilken ruled in Technology Properties v. Hewlett Packard, 14-3643, that the Kessler doctrine doesn't apply to decisions from the ITC, which evolved from an agency created nine years after the Supreme Court's ruling.

    "There is no possibility that the Supreme Court had ITC judgments in mind when it decided Kessler," Wilken wrote. More importantly, she wrote, Congress has indicated that ITC decisions on patent issues have no binding effect on federal courts.

    Technology Properties Ltd., a patent-assertion entity based in Cupertino, filed a complaint with the ITC in 2012 against Canon, HP, Newegg and Seiko Epson, alleging the companies imported and sold products that violated its patents for memory card readers. The following day, Technology Properties sued the companies in the Eastern District of Texas.

    The district court litigation was stayed pending the ITC investigation, and following a four-day evidentiary hearing in 2013, the administrative law judge ruled the defendants' products did not infringe. After lifting the stays, the federal cases were transferred to the Northern District of California in August 2014.

    Hewlett-Packard, represented by Megan Olesek and Cy Walker of Kenyon & Kenyon and Marcia Sundeen of Goodwin Procter, led the charge in arguing the Kessler doctrine prohibited Technology Properties from pursuing "a do-over" in the district court after losing before the ITC.

    "In the ITC proceeding, [Technology Properties] had every incentive to—and in fact did—make its very best arguments for infringement," the defense lawyers wrote in a motion for judgment on the pleadings. "Accordingly, this case is nothing more than a second attempt by [Technology Properties] to pursue claims on which it already failed in another forum and to force defendants to defend themselves again after being forced to expend substantial sums in defending themselves before the ITC."

    Wilken denied the motion, citing the "obvious impediment … that defendant's judgment came from the ITC and not a state or federal court."

    Technology Properties is represented by the Simon Law Firm in St. Louis and Bunsow De Mory Smith & Allison in Redwood City.