As reported in Docket Navigator, when one party voluntarily dismisses an action, that does not prevent the same or similar action from being heard by the original court.

The case, ClearCorrect, Inc. vs. Align Technologies, Inc., was heard before the US District Court, Southern District of Texas, Houston Division. The case dates back to February 2009, when ClearCorrect sought a declaratory judgment stating that it did not infringe on Align Technology’s patents for a clear aligner therapy system (“invisible braces”). Align then moved to dismiss that case for lack of subject matter jurisdiction, claiming that it “never asserted any claim of any kind against ClearCorrect, never threatened it with suit and, indeed, never engaged in any conduct whatsoever directed against it.” In response, ClearCorrect filed a notice of dismissal and the case was dismissed in April 2009.

In a recent case reported in Docket Navigator, the US District Court for the District of New Mexico found that the theory of “Accelerated Market Entry” (AME) damages does not apply to royalty payments.

The AME theory awards damages for compensation for lost sales after the patent’s expiration based on a defendant’s entry into “the market at a level accelerated by its earlier infringement.”

The case, STC.UNM vs. Intel Corp., involved five patents for a process called “double patterning,” which allows for smaller, more powerful computer processing chips.” STC.UNM does not manufacture the chips, but licenses its patents to manufacturers and receives royalties. Thus the infringement remedy to STC.UNM would be limited to damages to its royalty payments, which do not extend beyond the life of the patent. 

As reported in Docket Navigator, the US District Court for the District of Delaware has ruled that two key justifications for transfer of venue requests – location of witnesses and discovery documentation – are largely “irrelevant” in this age of electronic technology.

The case, XPRT Ventures, LLC vs. eBay Inc. et al., involves a transfer of venue request by the defendants from Delaware to the Northern District of California. All of the parties to this suit are incorporated in Delaware, but none has its principle place of business there. Rather four of the five defendants have a principle place of business in California and one in Maryland. The plaintiff’s principle place of business is in Connecticut.

The defendants argued for a change of venue to California for several reasons, including:

•    The location of the defendants’ principle places of business
•    The fact that the plaintiff’s choice of venue is not its “home turf” •    Some of the events giving rise to the suit occurred in California
•    “Potentially” important non-party witnesses who reside in California
•    The Delaware Court is more congested than the California one

The plaintiffs argued that the choice of venue is proper since all parties are incorporated in Delaware, defendants have not met their burden to compel a transfer and “the court should defer to XPRT’s forum decision as Delaware is known for its expertise in patent litigation.”

The court argued that the plaintiff always gets deference in its choice of venue as long as the forum was selected for legitimate reasons. This deference does not change simply because the plaintiff did not select its “home turf.” It is the defendant’s burden to show strong cause why a change of venue request is justified.  

In the end, the Court found for the plaintiff, noting:

“In this electronic age, there are no substantial burdens associated with discovery or witness availability that supports the need for transfer. With respect to discovery, documents generally are stored, transferred and reviewed electronically. … With respect to witnesses, generally the parties agree to take depositions where the witnesses are located (or the court can so order). Moreover, for those cases that get to trial, only a handful of witnesses testify live, and only a very small proportion of those documents produced during discovery are used as trial exhibits. Given these realities, this factor is outdated, irrelevant and should be given little weight, if any, expect for those rare exceptions where truly regional defendants are litigating.

[The Delaware judge agreed that her court was more congested than the California one, but argued that its rare that the court can’t accommodate the trial dates restrictions of either party.]

In summary, the court noted that all of the defendants are Delaware Corporations so “they have no reason to complain about being sued in Delaware.

On June 6, 2011, the US Supreme Court held in a 7-2 vote that the University and Small-Business Patent Procedures Act of 1980 (Bayh-Dole Act) did not change the long-stating law that awards patent rights to inventors rather then their employers. 

As reported in Docket Navigator, baseless claims for sanctions can backfire, leading to sanctions against the party which made the baseless claims.