Brilliant Instruments, Inc. v. GuideTech, Inc.

Filing 338

ORDER ON MOTIONS FOR JMOL, NEW TRIAL OR ADMINISTRATIVE RELIEF, TO STRIKE, FOR PRELIMINARY INJUNCTION, AND TO SEAL by Judge Claudia Wilken denying 322 Administrative Motion to File Under Seal; denying 324 Motion for Judgment as a Matter of Law; finding as moot 331 Motion to Strike; denying 330 Motion for new trial or administrative relief (cwlc2, COURT STAFF) (Filed on 8/22/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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GUIDETECH, INC.,

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No. C 09-5517 CW

Plaintiff,

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United States District Court
For the Northern District of California

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v.
BRILLIANT INSTRUMENTS, INC.,
Defendant.
________________________________/

ORDER ON MOTIONS
FOR JMOL, NEW
TRIAL OR
ADMINISTRATIVE
RELIEF, TO STRIKE,
FOR PRELIMINARY
INJUNCTION, AND TO
SEAL
(Docket Nos. 322,
324, 330, 331)

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After a trial held from March 31, 2014 to April 7, 2014, the

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jury determined that Defendant Brilliant Instruments, Inc.’s

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products infringe Plaintiff GuideTech, Inc.’s patent.

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Brilliant renews its motion for judgment as a matter of law

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(JMOL).

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Brilliant.

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asking the Court to grant a new trial on infringement of the

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BI221, or to grant “administrative relief” and alter the jury’s

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verdict on that product.

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hearing.

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counsel, the Court DENIES Brilliant’s renewed motion for JMOL,

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DENIES GuideTech’s motion for new trial or administrative relief,

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DENIES as moot Brilliant’s motion to strike, DENIES GuideTech’s

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motion for preliminary injunction, and DENIES GuideTech’s motion

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to seal.

Now,

GuideTech moves for a permanent injunction against
After briefing was completed, GuideTech filed a reply

On July 3, 2014, the Court held a

Having considered the papers and the arguments of

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BACKGROUND
A.

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Brief Background of the Patent and the Accused Products
In 1998, Shalom Kattan founded Guide Technology, Inc., the

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predecessor entity to GuideTech, which is in the business of

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manufacturing and selling precision time and frequency measurement

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instruments.

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inventor for several patents asserted in this litigation.

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Decl., Exs. 1-3, 12.

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establish Brilliant, a one-man company comprised of Mr. Kattan

Docket No. 35 ¶ 3.

Mr. Kattan is the sole named
Chin

In 2004, Mr. Kattan left GuideTech to

United States District Court
For the Northern District of California

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himself.

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manufactures and sells measurement instruments.

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4.

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the patents at issue, to Ronen Sigura, who then founded GuideTech.

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Chin Decl., Ex. 24.

Id. at 42:12-25; Chin Decl., Ex. 9.

Brilliant also
Docket No. 39 ¶

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On May 23, 2008, Guide Technology sold its assets, including

On November 20, 2009, Brilliant initiated this suit seeking

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declaratory judgment that its accused products, including BI200

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and BI220, do not infringe GuideTech’s patents.

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concern time interval analyzers, testing instruments used in the

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semiconductor industry to detect timing errors in integrated

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circuits.

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judgment of non-infringement and GuideTech filed a motion for

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summary adjudication on the issue of assignor estoppel.

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granted Brilliant’s motion for summary judgment, finding

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Brilliant’s products did not infringe the patents-in-suit, and

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denied GuideTech’s motion on assignor estoppel as moot.

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Docket No. 137.

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the Federal Circuit from the summary judgment order.

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166.

The patents

In early 2011, Brilliant filed a motion for summary

The Court

See

On October 4, 2011, GuideTech filed an appeal to
Docket No.

The Federal Circuit reversed the Court’s summary judgment
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order and remanded, finding disputed issues as to whether

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Brilliant’s products infringe the patents-in-suit under the

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doctrine of equivalents.

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GuideTech, LLC, 707 F.3d 1342, 1348-49 (Fed. Cir. 2013).

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the case returned to the district court, the Court granted summary

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judgment on the issue of assignor estoppel, barring Brilliant’s

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invalidity case.

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its claims based on two of the patents-in-suit, leaving only U.S.

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Patent No. 6,226,231 (the ‘231 patent).

United States District Court
For the Northern District of California

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B.

Brilliant Instruments, Inc. v.
After

Shortly before trial began, GuideTech dropped

Pretrial Conference
On March 19, 2014, the Court held a pretrial conference and

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heard arguments on motions in limine and pretrial motions.

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pretrial conference, the Court required GuideTech to disclose to

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Brilliant its theory of damages, including a narrative or chart of

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the products for which profits were lost, when the profits were

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lost, and cites to the record so Brilliant could check the

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numbers.

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37:22-38:16.

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lost profits theory because, while GuideTech had no damages

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expert, it had disclosed at least some evidence in support of the

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theory.

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not the proper vehicle for challenging the sufficiency of the

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plaintiff’s case.

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563 F. Supp. 2d 508, 532 (D.N.J. 2008).

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GuideTech could “only present evidence it has disclosed to

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Brilliant and must cite before trial where such evidence was

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disclosed.”

At the

Docket No. 283 (Pretrial Conference Transcript) at
However, the Court declined to exclude GuideTech’s

Docket No. 276 at 1-2.

A motion in limine is generally

See Bowers v. Nat'l Collegiate Athletic Ass'n,

Docket No. 276 at 2.

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The Court ruled that

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C.

Trial - Infringement

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On March 31, 2014, before jury selection, it became apparent

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that GuideTech had failed pursuant to the Court’s pretrial orders

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to disclose to Brilliant a narrative or chart describing its

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damages calculations.

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at 6:8-7:21.

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chart.

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timely disclosed to Brilliant, the Court sought to minimize

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prejudice and costs to both sides by bifurcating the liability and

Docket No. 299 (March 31, 2014 Transcript)

At the Court’s request, GuideTech disclosed the

Id. at 8:7-9:14; 12:4-16:20.

Because the chart was not

United States District Court
For the Northern District of California

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damages portions of the trial, which would allow Brilliant to

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review GuideTech’s damages calculations.

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13.

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Id. at 18:11-15; 26:1-

The jury first heard evidence on liability.

After

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deliberating, the jury returned a verdict finding that the BI200

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and BI220 infringed claims 1, 2, 4, and 5, but could not agree on

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infringement of claim 3.

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BI221, the jury agreed that these products did not infringe any of

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the asserted claims.

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willful infringement.

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Court could accept the incomplete verdict.

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3, 2014 Transcript) at 466:10-14.

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D.

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Id.

Docket No. 300.

As for the BI201 and

The jury did not find induced or

GuideTech withdrew claim 3 so that the
Docket No. 310 (April

Trial - Damages
On the following day, April 4, 2014, the jury heard the

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parties’ respective positions on damages.

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an expert to testify as to lost profits, but relied on its CEO,

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Mr. Sigura, to testify as to lost sales and costs.

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(April 4, 2014 Transcript) at 500.

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through his experience managing GuideTech, he was familiar with
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GuideTech did not have

Docket No. 311

Mr. Sigura testified that,

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both the market and GuideTech’s own sales and costs.

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02.

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infringing products in the sum of $5,754,567.

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Brilliant likewise did not have a damages expert, but relied on

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its CEO, Mr. Kattan, to rebut Mr. Sigura’s testimony.

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Id. at 500-

Mr. Sigura concluded that GuideTech had been damaged by the
Id. at 523:8-9.

Id. at 540.

After the presentation on damages concluded, the jury began

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deliberations.

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lost profits based on GuideTech’s Femto 2000 and GT 568 products,

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or whether it could consider lost sales of other products, such as

The jury asked whether it was limited to awarding

United States District Court
For the Northern District of California

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the GT 4000 which replaced the Femto 2000.

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parties agreed that no evidence had been presented on the GT 4000,

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so it could not be considered.

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Court advised the jury that it was limited to the Femto 2000 and

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GT 658, and it could not include the loss of sales of other

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products in its calculation.

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couple of more hours of deliberation, the jury passed a note

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asking to speak to the Court.

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frustration that the jury could not “come up with a decision.”

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Id. at 596:5-9.

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continue deliberating, and advising that if there was a problem

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relating to the evidence, the jury should “study the jury

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instructions again” to see “what needs to be proved and by whom.”

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Id. at 596:12-22.

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about it over the weekend and reconvene on Monday to continue

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deliberations.

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Id. at 592.

Id. at 591:21-25.

The

Accordingly, the

Id. at 594:25-595:1-2.

After a

The jury foreperson expressed

The Court responded by asking the jury to

The Court further instructed the jury to think

Id. at 599:7-11.

On Monday, the jury reconvened to deliberate for about five
hours before delivering their damages verdict.

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The jury returned

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a verdict assessing damages for GuideTech and against Brilliant in

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the amount of $342,229.23.

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Docket No. 312, 605:6.

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DISCUSSION
A.

Judgment as a Matter of Law

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1.

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The standard for evaluating a motion for JMOL is similar to

Legal Standard

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that of a motion for summary judgment, albeit at a later stage of

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the proceeding.

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(9th Cir. 1981).

Lies v. Farrell Lines, Inc., 641 F.2d 765, 772
To prevail on a renewed motion for JMOL

United States District Court
For the Northern District of California

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following a jury verdict, the moving party “must show that the

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jury’s findings, presumed or express, are not supported by

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substantial evidence or, if they were, that the legal conclusions

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implied by the jury’s verdict cannot in law be supported by those

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findings.”

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1998).

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“to support the jury’s conclusion, even if it is also possible to

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draw a contrary conclusion.”

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F.3d 1010, 1021 (9th Cir. 2008).

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instructed and there is substantial evidence, then the court must

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sustain the jury’s verdict.

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as a whole, but disregard evidence favorable to the moving party

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that the jury is not required to believe.

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Valley Unified Sch. Dist., 251 F.3d 1222, 1227 (9th Cir. 2001).

Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir.

“Substantial evidence” means evidence that is sufficient

Harper v. City of Los Angeles, 533

Id.

If the jury was properly

The court must review the record

Johnson v. Paradise

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2.

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Brilliant contends that the jury’s verdict on infringement is

Infringement

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contrary to evidence that the BI200, BI201, BI220, and BI221 are

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all equivalent for purposes of infringement, and thus that a

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verdict that the BI200 and BI220 infringed is inconsistent with

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one that the BI201 and BI221 did not.

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As a preliminary matter, GuideTech argues that Brilliant

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waived this issue.

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Court gave both sides the opportunity to object to its proposed

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verdict form, which asked the jury to decide infringement as to

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each accused product, allowing them to find infringement of some

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products but not others.

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Transcript) at 369:14-21 (“THE COURT: Then I handed you that

On the second day of the liability phase, the

See Docket No. 303 (April 1, 2014

United States District Court
For the Northern District of California

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verdict form . . . It occurred to me that they could conceivably

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find that at least that the 221 didn’t infringe, even if the

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others did.”).

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proposed verdict form was proper.

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approved the verdict form, however, Brilliant did not know whether

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GuideTech would present sufficient evidence to support its

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allegations.

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preclude its argument at JMOL that GuideTech failed to present

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evidence showing that the two sets of products were distinct.

Both Brilliant and GuideTech agreed that the
At the time the parties

Brilliant’s assent to the verdict form does not

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GuideTech next maintains that Brilliant waived this argument

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because it failed to raise it in its initial JMOL motion at trial

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under Rule 50(a), and so it cannot renew the argument now under

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Rule 50(b).

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substantial evidence to support the jury's verdict is not before

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this court unless the appellant, at the close of the evidence or

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case, interposed a motion for directed verdict.”

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Slemons Imports, Inc., 803 F.2d 1488, 1493 (9th Cir. 1986)

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(internal punctuation omitted).

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contention is unavailing.

Fed. R. Civ. P. 50.

The “ground that there was not

Gilchrist v. Jim

GuideTech’s second waiver

The basis of this JMOL argument is
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GuideTech’s alleged failure to meet its burden of proof, which

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Brilliant raised in its initial JMOL.

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Docket No. 303, 265:2-9.

On the merits of the motion, GuideTech presents the testimony

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of Mr. Kattan, designer of the accused products, to show that the

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products are not distinct:

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United States District Court
For the Northern District of California

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Q: Couple of follow-up questions, Mr. Kattan. Do you know
what the difference is between the brilliant instruments BI
200 and BI 201?
A: The frequency range is lower on the 201.
Q: And what structurally, if anything, is different about
those products?
A: Well, I’ll make it short for you. For the purpose of this
discussion, it’s the same architecture.
Q: Okay. So for purposes of this discussion, and I want you
to be clear, this goes to the infringement analysis. Is the
BI 200 the same as the BI 201 for purposes of infringement?
A: It’s materially the same, yes.
Docket April 1, 2014 Transcript at 335:16-336:3.

When asked about

the BI220 and BI221, Mr. Kattan stated they were substantially
identical, but pointed out several differences, such as the use of
a PXI bus as opposed to a PCI bus, the range of frequency, the
components of the measurement circuit, a different prescaler,
additional clocks, and different reference voltages.
336:11-343:12.

Id. at

When asked if any of those differences would

affect infringement, he said he did not know for sure, but
“probably not.”

Id. at 341:24-342:1.

Dr. West, GuideTech’s own infringement expert, then testified
that the BI220 and BI221 were identical for purposes of
infringement.

Regarding Mr. Kattan’s testimony as to certain

differences between the BI220 and BI221, Dr. West stated, “The
very specific things that he mentioned, none of them would have
anything to do with those -- those claims.”

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Id. at 345:10-22.

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Even if GuideTech’s infringement expert testified that the

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products were identical for purposes of infringement, the jury

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could properly have found that GuideTech failed to meet its burden

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of proof of infringement by the BI201 and the BI221.

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specifically analyzed, limitation by limitation, infringement by

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the BI200 and BI220.

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his testimony was by his own admission speculative.

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acknowledged that he had not heard of the BI201 and BI221 at all

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before the trial:

United States District Court
For the Northern District of California

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Dr. West

Regarding the BI201 and the BI221, however,
He

Q: Now, Dr. West, have you heard of a -- Brilliant
Instruments’ BI221 product?
A: I hadn’t heard of it until this case -- this trial.
Q: Okay. What about the -- what about the BI201? Have you
heard of that?
A: Once again, I hadn’t heard of it until this trial.

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April 1, 2014 Transcript at 247:7-17.

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personal knowledge regarding the BI201 and BI221, and did not

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analyze the products limitation by limitation, the jury could have

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chosen to disregard his legal conclusion that the two sets of

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products are identical for purposes of non-infringement.

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Mr. Kattan pointed out several differences between the products,

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the jury could have chosen to disregard his statement that the

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products were identical, which was far from certain.

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jury could have reasonably concluded that while GuideTech met its

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burden of proving infringement by the BI200 and BI220, it failed

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Because Dr. West lacked

Because

Thus, the

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to do so for the BI201 and BI221.

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reconcilable on this point.1

The jury verdict is

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3.

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Brilliant challenges the jury’s verdict awarding damages

Damages

because GuideTech failed to prove lost profits.

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lost profits, GuideTech must prove that there is a reasonable

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probability that the patentee would have made the infringer’s

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sales “but for” the infringement.

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Ltd., 296 F. Supp. 2d 1140, 1148 (N.D. Cal. 2003) (citing State

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United States District Court
For the Northern District of California

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Indus., Inc. v. Mor–Flo Indus., Inc., 883 F.2d 1573, 1577 (Fed.

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Cir. 1989)).

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speculation, this court requires sound economic proof of the

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nature of the market and likely outcomes with infringement

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factored out of the economic picture.”

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Am. Maize-Products Co., 185 F.3d 1341, 1350 (Fed. Cir. 1999).

To be entitled to

DSU Med. Corp. v. JMS Co.,

“To prevent the hypothetical from lapsing into pure

Grain Processing Corp. v.

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For the same reason that Brilliant’s argument regarding
“identical” products is denied, GuideTech’s motion for new trial
is DENIED. GuideTech’s motion is based on a April 21, 2014
statement by Brilliant’s CEO Mr. Kattan to a customer that the
BI221 is identical to the BI220. GuideTech argues that this “new”
evidence warrants a new trial under Rule 59. While Rule 59
permits a new trial on certain issues if new evidence comes to
light, not any evidence will do. The movant must show (1) the
probability that the evidence would have changed the outcome of
the trial; (2) the evidence could not have been discovered earlier
had the moving party been diligent; and (3) the evidence is not
merely cumulative or impeaching. Advanced Display Systems, Inc.
v. Kent State University, 212 F.3d 1272, 1284 (Fed. Cir. 2000).
Here, Mr. Kattan’s statement is consistent with his testimony at
trial. GuideTech’s own expert, Dr. West, stated the same opinion,
although that opinion was ultimately not accepted by the jury.
Accordingly, this information does not warrant a new trial.
Brilliant’s request to strike this motion is DENIED as moot.
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The Federal Circuit has adopted a four-factor test, which is

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a useful but nonexclusive way for patentees to prove they are

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entitled to lost profits: (1) demand for the patented product; (2)

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absence of acceptable non-infringing substitutes; (3)

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manufacturing and marketing capability to exploit demand; and (4)

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the amount of profit that the patentee would have made.

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Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1545 (Fed. Cir. 1995)

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(citing Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d

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1152, 1156 (6th Cir. 1978)).

Rite-Hite

An alternative to the Panduit test

United States District Court
For the Northern District of California

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is the two-supplier market test.

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requires the patentee to show: (1) the relevant market contains

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only two suppliers; (2) the patentee has the marketing and

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manufacturing capacity to make the sales that were lost to the

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infringer; (3) the amount of profit that the patentee would have

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made.

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(Fed. Cir. 2003).

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collapses the first two Panduit factors into one ‘two suppliers in

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the relevant market’ factor.”

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The two-supplier market test

Micro Chem., Inc. v. Lextron, Inc., 318 F.3d 1119, 1124

a)

“In essence, the two-supplier market test

Id.

Absence of acceptable non-infringing substitutes;
two suppliers in the market

Brilliant contends that GuideTech did not conduct an analysis
of acceptable non-infringing substitutes.

However, GuideTech’s

CEO, Mr. Sigura, testified that in his years of experience in the
field, he observed that were only two competitors in the market of
high-frequency time interval analyzers -- Brilliant and GuideTech.
This is evidence that there were no acceptable non-infringing
substitutes and that the market consisted of only two suppliers.
Although Brilliant points out contrary evidence, the Court cannot
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weigh this against GuideTech’s evidence.

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substantial evidence to support the jury’s finding on this factor,

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the Court cannot substitute its judgment for the jury’s.

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b)

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Because there is

Manufacturing and marketing capability to exploit
the demand

In its damages case, GuideTech claimed that but for

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Brilliant’s infringement, it would have sold fifty-nine Femto 2000

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products in 2009 instead of the one Femto 2000 it did sell.

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4, 2014 Transcript at 527:1-12.

April

Brilliant argues that GuideTech

United States District Court
For the Northern District of California

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failed to present evidence to the jury showing it had both the

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manufacturing and marketing capacity to meet this demand.

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Brilliant continues that GuideTech conceded that it did not

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have enough employees to manufacture additional Femto 2000’s.

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Prior to the infringement, GuideTech’s final assembly and testing

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occurred in-house.

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at the time of the infringement, GuideTech had no full-time, in-

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house employees.

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Sigura did everything himself: the day-to-day management,

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production, sales and marketing, and shipping.

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501:1-3.

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been able to meet increased demand for Femto 2000’s.

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Id. at 499:6-15.

Id. at 500:21-25.

But Mr. Sigura admitted that

During this period, Mr.

Id. at 500:21-

Accordingly, Brilliant reasons GuideTech would not have

As Mr. Sigura explains, however, GuideTech was unable to pay

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full-time employees because of lack of business due to Brilliant’s

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infringement.

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infringement, GuideTech could have hired employees or contracted

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others to meet demand.

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have done so:

Id.

If it had not been for Brilliant’s

Mr. Sigura testified that GuideTech could

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Q: [. . .] Is it your -- Could GuideTech have made those
sales?
A: Absolutely.
Q: And why do you say that?
A: Because I can manufacture as many as -- as I get purchase
orders. I mean, we have a manufacturing plant 15 minutes
down the street, and they’ll be super happy if I give them an
order for a thousand unit. That’s their livelihood. That’s
our livelihood. So, yeah, I can make as many as -- there is
demand for.

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Id. at 512:25-513:8.

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support a finding that GuideTech would have had the manufacturing

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and marketing capacity if the infringement had not occurred.

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United States District Court
For the Northern District of California

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c)

Mr. Sigura’s testimony is sufficient to

Accounting of the profit that would have been made

Brilliant claims that GuideTech’s accounting is riddled with

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numerous fatal errors.

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“sound economic proof.”

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In particular, Brilliant takes issue with the fact that GuideTech

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used an average fixed cost of $368,760.00, computed from 2008 to

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2010 data, and assumed that these fixed costs would be enough to

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support the manufacture of fifty-nine Femto 2000’s instead of the

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one Femto 2000 GuideTech did sell.

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Calculations of damages must be based on
Grain Processing Corp., 185 F.3d at 1350.

Under the generally accepted incremental accounting approach,

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fixed costs, or “costs which do not vary with increases in

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production, such as management salaries, property taxes, and

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insurance,” are excluded when determining profits.

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Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 22

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(Fed. Cir. 1984).

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deducted from revenue to arrive at profit, but fixed costs need

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not be deducted.

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speculation or guess, it will be enough if the evidence shows the

Paper

Put another way, variable costs must be

While “the damages may not be determined by mere

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extent of the damages as a matter of just and reasonable

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inference, although the result be only approximate.”

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Id.

According to Mr. Sigura’s testimony, GuideTech deducted both

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fixed and incremental costs from revenue.

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Transcript at 517-520 (explaining that he first calculated average

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profit per product by subtracting incremental costs from revenue,

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then deducted average annual fixed costs).

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deducted more costs from revenue than was required by law, which

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cannot justify granting JMOL in favor of Brilliant.

United States District Court
For the Northern District of California

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April 4, 2014

GuideTech therefore

Brilliant also contends that GuideTech improperly used data

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from 2008 to 2010 to compute average fixed costs, ignoring data

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from 2011 and 2014.

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doing so:

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But Mr. Sigura explained his reasoning for

The actual fixed costs are a lot smaller because by that
time, I didn’t have employees, I lost my admin -- I lost my
one engineer that I had that I was paying measly salary, and
I didn’t have any money to pay anybody. So my costs were
down to nothing. We moved to a -- a low-cost facility . . .

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Id. at 522:9-15.

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2010 figure from his profit calculation, rather than the lower

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2011 to 2014 figure incurred while his company was producing less,

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in a low cost facility.

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and more accurately depicts what would have occurred if Brilliant

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had not infringed and GuideTech were able to produce more units to

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meet demand.

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is actually more favorable to Brilliant.

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suggestion that litigation costs incurred by GuideTech from 2011

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to 2014 should be deducted from revenue is unavailing because

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GuideTech would not have incurred those litigation costs had it

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not been for Brilliant’s infringement.

In other words, he deducted the higher 2008 to

This higher cost figure is conservative

Thus, the choice to use the 2011 to 2014 cost figure

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Separately, Brilliant’s

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Overall, GuideTech presented sufficient evidence to sustain

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the jury’s award of lost profits.

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$342,229.23, which is less than six percent of GuideTech’s

4

requested sum, the jury could have done so because it doubted

5

GuideTech would have made all of the sales that it claimed it lost

6

to Brilliant.

7

different and not perfect substitutes.

8

as eight channels that can measure pulse width simultaneously,

9

while Brilliant’s products have only two channel devices that can

Although the jury awarded

This is not surprising because the products are
The Femto 2000 has as many

United States District Court
For the Northern District of California

10

only make one pulse width measurement at a time.

11

The pricing of the two products is different.

12

The jury could have concluded that, because of the greater scale

13

and higher price of GuideTech’s products, only some of the demand

14

for Brilliant’s products would translate into demand for

15

GuideTech’s products.

16

B.

Id. at 498:6-11.

Id. at 518, 551.

Permanent Injunction

17

1.

18

A plaintiff seeking a permanent injunction barring patent

19

infringement must demonstrate that four factors are present before

20

the court may grant such relief: (1) it has suffered an

21

irreparable injury; (2) legal remedies, including monetary

22

damages, are inadequate; (3) the balance of the hardships between

23

the plaintiff and the defendant weighs in favor of granting an

24

injunction; and (4) the public interest would not be impacted

25

negatively by an injunction.

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547 U.S. 388, 391 (2006).

Legal Standard

eBay Inc. v. MercExchange, L.L.C.,

27
28
15

1

2.

2

The “issues of irreparable harm and the adequacy of remedies

Irreparable Injury and Inadequacy of Legal Remedies

3

at law are inextricably intertwined.”

4

v. Verizon Comms., Inc., 694 F.3d 1312, 1337 (Fed. Cir. 2012).

5

After eBay, there is no presumption of irreparable harm upon a

6

showing of patent infringement.

7

irreparable injury, a patentee must prove that (1) absent an

8

injunction, it will suffer irreparable harm and (2) there is a

9

sufficiently strong “causal nexus” connecting the alleged harm to

ActiveVideo Networks, Inc.

Id. at 1341.

United States District Court
For the Northern District of California

10

the alleged infringement.

11

To prove

Ltd., 735 F.3d 1352, 1360 (Fed. Cir. 2013).

12

Apple Inc. v. Samsung Electronics Co.,

As a preliminary matter, GuideTech conducts no analysis of

13

whether there is a causal nexus between the infringement and the

14

alleged irreparable harm.

15

must show “that the infringing feature drives consumer demand for

16

the accused product.”

17

a time interval analyzer, the infringing products might include

18

other popular benefits that contribute to demand.

19

To establish a causal nexus, GuideTech

Id. at 1364.

While the ‘231 patent covers

GuideTech argues that it will continue to lose good will,

20

market position, and revenue absent an injunction.

21

arguments in this regard are speculative because they offer little

22

more than attorney argument in support.

23

sales in the past, without more, is insufficient to show that

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GuideTech is likely to lose sales and market share due to

25

Brilliant’s infringing conduct in the future.

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that the opposite is true.

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selling the infringing products, instead focusing on the non-

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infringing ones.

GuideTech’s

Evidence of loss of some

There is evidence

Brilliant shows that it is no longer

GuideTech presents no compelling evidence
16

1

establishing otherwise.

2

market position to non-infringing products, then that harm is not

3

sufficiently tied to the infringement and does not justify

4

injunctive relief.

5

If GuideTech were to lose good will or

GuideTech also cannot argue that loss of exclusivity

6

justifies an injunction.

7

to a third party, TimeMetrics.

8

willingness to license indicates that legal remedies, such as

9

money damages, would be adequate to compensate GuideTech.

In 2011, GuideTech licensed its patents
Docket No. 235, 13:13-15.

This

United States District Court
For the Northern District of California

10

3.

11

The balance of the hardships involves the consideration of

Balance of the Hardships

12

“the relative effect of granting or denying an injunction on the

13

parties” with regards to the parties’ sizes, products, and revenue

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sources.

15

862 (Fed. Cir. 2010).

16

i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831,

GuideTech asserts that its patents cover the cornerstone of

17

the products it manufactures, and so its entire business rests on

18

this injunction.

19

injunction, other companies will likely be encouraged to infringe

20

GuideTech’s patents, causing it harm.

21

speculative and conclusory.

22

alleged to continue in the future is tied to Brilliant’s

23

infringing activity.

24

protecting GuideTech from any competition, regardless of whether

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it is infringing, solely because it may harm GuideTech’s business.

GuideTech also states that if it does not get an

These arguments are again

GuideTech has not shown that the harm

The Court cannot issue an injunction

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4.

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“The touchstone of the public interest factor is whether an

28

injunction, both in scope and effect, strikes a workable balance

Public Interest

17

1

between protecting the patentee's rights and protecting the public

2

from the injunction’s adverse effects.”

3

F.3d at 863.

4

i4i Ltd. Partnership, 598

GuideTech argues that consumers “need clear direction from

5

this Court so that they will not unwittingly purchase infringing

6

products.”

7

The public has already been notified by judgment entered in this

8

case.

9

Docket No. 322-5 at 10; see also Docket No. 327 at 22.

GuideTech further argues that, because GuideTech has the

United States District Court
For the Northern District of California

10

capability to serve the market even if Brilliant ceased to exist,

11

the public will still benefit from the technology embodied by the

12

‘231 patent.

13

provide differing utilities to the public.

14

shown that the public interest would be served by issuing an

15

injunction.

16

The two products are different, however, and may
GuideTech has not

In sum, GuideTech has not proved that any of the eBay factors

17

weigh in favor of granting a permanent injunction.

18

C.

19

Motions to Seal
GuideTech moves to seal portions of its motion for permanent

20

injunction and supporting exhibit, the deposition of Mr. Kattan.

21

GuideTech asserts they include information designated by Brilliant

22

as “Highly Confidential.”

23

filed a supporting declaration as required by Civil Local Rule

24

79-5(e).

25

See Docket No. 322.

Brilliant never

The motion to seal therefore must be DENIED.

If it is obvious that the information was accidentally

26

overdesignated and should not be sealed, as a matter of common

27

sense, the parties should confer before filing an unnecessary

28

motion to seal.

If the motion has already been filed, then the
18

1

designating party may file a declaration withdrawing its

2

designation for purposes of the motion.

3

parties the trouble of drafting an unnecessary motion and the

4

Court the trouble of reviewing it.

5
6

This would save the

CONCLUSION
Brilliant’s motion for JMOL (Docket No. 324) is DENIED

7

because the jury was properly instructed, there is sufficient

8

evidence to support the verdict, and the verdict is not

9

irreconcilably inconsistent.

United States District Court
For the Northern District of California

10

GuideTech’s motion for new trial or administrative relief

11

(Docket No. 330) is DENIED because the claimed new evidence is

12

cumulative.

13

(Docket No. 331) is DENIED as moot.

14
15

Brilliant’s motion to strike that motion as untimely

GuideTech’s motion for a permanent injunction (Docket No.
322) is DENIED for failure to show that the eBay factors are met.

16

GuideTech’s motion to seal (Docket No. 322) is DENIED.

17

GuideTech shall file unredacted versions in the public docket no

18

later than seven days after the issuance of this order.

19

IT IS SO ORDERED.

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Dated:

08/22/2014

CLAUDIA WILKEN
United States District Judge

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