This post is the first in what will be a monthly summary of patent litigation in the District of Minnesota, including a review of new cases filed each month and a short summary of substantive orders issued in pending cases.
In January 2017, there were five new patent infringement actions filed in the District of Minnesota, and five substantive decisions or orders for pending cases.
Commscope Techs. LLC v. Clearfield, Inc. (filed 1/31/17)
S. Patent Nos. 7,233,731; 8,811,791; 7,198,409; 7,809,233; 9,201,206; 7,809,234; 7,816,602; 8,263,861, 9,122,021; 8,705,929; 8,938,147; RE 42,258; 7,397,997
Ecolab USA Inc. v. Terminix Co Inc. et al. (filed 1/23/17)
Insect extermination products
S. Patent No. 9,226,489 (“Heat System for Killing Pests”)
Air Quality Engineering, Inc. v. Tri-Dim Filter Corp. (filed 1/19/17)
Air cleaning products
S. Patent No. 6,428,611 (“Apparatus for Removing Mist, Smoke, and Particles Generated by Machine Tools”)
Graco Inc. v. Lazy Linder USA, Inc. (filed 1/17/17)
Ride-on accessories for line stripers
S. Patent No. 6,883,633 (“Dual Pedal Foot Control for Hydrostatic Drive”)
Additional claims: unfair competition and false advertising
Feradyne Outdoors, LLC v. Truglo, Inc. (filed 1/9/17)
Archery targeting products
S. Patent Nos. 7,814,668; 7,921,570; 8,186,068; 8,661,696
Entrust Datacard Corp. v. Atlantic Zeiser GmbH et al., No. 15-cv-4260 (JNE/FLN) – Grant of motion to dismiss for lack of personal jurisdiction
On January 19, 2017, Judge Ericksen granted Defendants’ Motion to Dismiss for lack of personal jurisdiction.
Defendant AZG is a foreign corporation with a headquarters in Germany and a subsidiary in New Jersey. AZG sold six “Persomaster” integrated circuit programming modules in the United States, none of which was purchased by a customer in Minnesota or delivered to Minnesota.
Plaintiff contended that AZG was subject to general jurisdiction in Minnesota pursuant to Rule 4(k)(2), as it was not subject to jurisdiction in any particular state. The Court rejected Plaintiff’s argument, finding that AZG would have been subject to jurisdiction in Florida, where five of the six alleged infringing products were sold.
Plaintiff also contended that AZG was subject to specific jurisdiction in Minnesota based on its website and sales activities in Minnesota, including sending emails to potential Minnesota customers and employing a service technician who resides in Minnesota. The Court held that nothing about AZG’s website specifically targeted Minnesota, so it could not serve as a basis for personal jurisdiction. The Court rejected Plaintiff’s allegations as to AZG’s other sales activities as they took place after the filing of the complaint or had too tenuous of a connection to the accused Persomaster products.
Regents of the Univ. of Minn. v. AT&T Mobility LLC et al., Nos. 14-cv-4666, 14-cv-1669, 14-cv-1671, 14-cv-4672 (JRT/TNL) – Denial of motion to reduce asserted claims
On January 10, 2017, Judge Tunheim adopted Magistrate Judge Leung’s Report and Recommendation denying Defendants’ Motion to Reduce Asserted Claims.
Judge Tunheim adopted Judge Leung’s recommendation that Plaintiff’s proposal of a reduction to 45 asserted claims before claim construction and to no more than 20 claims shortly after the close of fact discovery or after the Court issues its claim construction order (whichever is later) be adopted.
Solutran, Inc. v. U.S. Bancorp et al., No. 13-cv-2637 (SRN/BRT) – Denial of motion to amend to add willfulness allegations
On January 10, 2017, Judge Nelson adopted Magistrate Judge Thorson’s recommendation that Plaintiff’s Motion for Leave to Amend to add willful infringement claims be denied.
Solutran’s original Complaint, filed in September, 2013 alleged that Defendants had actual knowledge of the patent in suit (U.S. Patent No. 8,311,945) as of the date of the Complaint, but did not assert willful infringement claims. After conducting discovery, Solutran filed a motion to amend its complaint to add willful infringement allegations, contending that Defendants were aware of Solutran’s patent application prior to the filing of Solutran’s Complaint. Judge Thorson denied Solutran’s motion to amend on the grounds that it was filed more than seven months after the deadline to amend pleadings.
Judge Nelson adopted Judge Thorson’s recommendation, noting that 1) Solutran had only alleged knowledge of its patent application, which the Court explained “cannot be construed as knowledge of the patent itself, and thus cannot support a willfulness claim” and 2) that Solutran had failed to show good cause for filing its motion seven months after the deadline.
Boston Scientific Corp. v. Mackin Medical, Inc., No. 16-cv-3041 (WMW/HB) – Denial of motion to stay discovery in view of pending motion to dismiss
On January 11, 2017, in a text-only order, Magistrate Judge Hildy Bowbeer denied Defendants’ Motion for Stay of Discovery and Other Proceedings while the Court considered Defendants’ pending motion to dismiss.
Spineology, Inc. v. Wright Medical Tech., Inc., No. 15-cv-180 (JNF/FLN) – Grant of motion to stay execution of discovery order
On January 12, 2017, Judge Ericksen granted Defendants’ motion to stay the execution of an order compelling various discovery until such a time that the Court considered Defendants’ objections to the discovery order.
Conrad Gosen is an Associate in the Twin Cities office of Fish & Richardson. Mr. Gosen was a judicial extern for the Honorable Judge Lucy Koh of the Northern District of California. He was also a Summer Associate at Fish in 2012.
John Adkisson is a principal in the Twin Cities office of Fish & Richardson and is an elected member of the firm’s Management Committee. Mr. Adkisson specializes in patent infringement litigation, pharmaceutical litigation, and biosimilar litigation. In...