Please join us for the SoCal IP Institute meeting, Monday, November 22 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following:

A123 Sys. V. Hydro-Quebec, No. 10-1059 (Fed. Cir. Nov. 10, 2010) (case attached) In plaintiff’s suit seeking a declaration of noninfringement and invalidity of two patents related to a genus of lithium based cathode materials, district court’s denial of plaintiff’s motion to reopen and dismissal of the declaratory judgment action is affirmed where: 1) because the defendant had acquired less than all substantial rights in the patents in suit, University of Texas (UT) is a necessary party to plaintiff’s declaratory judgment action; 2) UT’s waiver of Eleventh Amendment immunity in a patent infringement suit in the Northern District of Texas did not result in a waiver of immunity in this separate infringement action, and absent such a waiver, UT cannot be joined; and 3) because three of the four Rule 19(b) factors weigh in favor of holding UT to be an indispensable party, UT was not only a necessary party, but also and indispensable party, making dismissal appropriate.

Finjan v. Secure Computing, No. 09-1576  (Fed. Cir. Nov. 4, 2010) (case attached) In a patent infringement suit involving “proactive scanning” technology for computer security, a jury verdict in favor of the plaintiff and district court’s award of damages and an entry of permanent injunction against the defendants is affirmed in part, reversed in part and remanded where: 1) district court’s denial of defendants’ motion for JMOL or new trial on infringement of plaintiff’s system and storage medium claims is affirmed as the jury’s infringement verdict on the system and media claims was based on a legally sufficient evidentiary basis and consistent with the weight of the evidence; 2) district court’s denial of defendants’ motions for JMOL of noninfringement of the method claims is reversed as no reasonable jury could have concluded that defendants infringed the method claims; 3) district court’s denial of defendants’ motions for JMOL or new trial on damages is affirmed; and 4) the matter is remanded for the district court to assess post-judgment and pre-judgment damages.