Seiko Epson Corporation et al v. E-Babylon, Inc. et al

Filing 313

Order regarding October 3, 2011 Continued Hearing on Motions for Summary Judgment and Ninestar's Motion to Amend its Answer. Signed on 10/26/2011 by Judge Anna J. Brown. (bb)

David W. Axelrod, OSB #75023
E-mail: [e-mail]
Devon Zastrow Newman, OSB #014627
E-mail: [e-mail]
Schwabe, Williamson & Wyatt, P.C.
Pacwest Center
1211 SW 5th Ave., Suite 1500-2000
Portland, OR 97204
Telephone [phone]
Fax [phone]
Harold A. Barza, admitted pro hac vice
E-mail: [e-mail]
Tigran Guledjian, udmitted pro huc vice
E-mail: [e-mail]
Quinn Emanuel Urquhart & Sullivan, LLP
865 South Figueroa Street, 10th Floor
Los Angeles, CA 90017
Telephone [phone]
Fax [phone]
Attorneys for Plaintiffs/Counter-Defendants Seiko Epson
COIporation, Epson America, Inc., and Epson Portland Inc., and
Counter-Defendant Herbert W. Seitz

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
PORTLAND DIVISION

SEIKO EPSON CORPORATION,
a Japan corporation; EPSON AMERICA,
INC., a California corporation; and EPSON
PORTLAND INC., an Oregon corporation,
Plaintiffs,

v.

Civil No. 06-236-BR
{PRePOSEDT

~

ORDER REGARDING OCTOBER 3, 2011
CONTINUED HEARING ON MOTIONS
FOR SUMMARY JUDGMENT AND
NINESTAR'S MOTION TO AMEND IrS
ANSWER

GLORY SOUTH SOFTWARE
MANUFACTURING INC., a California
corporation; BUTTERFLY PRINT IMAGE
CORP. LTD; a Hong Kong company; INK
Page i-ORDER REGARDING OCTOBER 3, 2011 SUMMARY JUDGMENT
HEARINGS AND NINESTAR'S MOTION TO AMEND ITS ANSWER

LAB (H.K.) CO. LTD, a Hong Kong
company; NECTRON INTERNATIONAL,
LTD., a Texas company; MIPO
INTERNATIONAL LTD., a Hong Kong
company; MIPO AMERICA, LTD., a
Florida company; NINE STAR IMAGE CO.
LTD, a China company; now known as
NINESTAR TECHNOLOGY CO., LTD., a
China company; NINE STAR
TECHNOLOGY COMPANY, LTD., a
California company; TOWN SKY INC., a
California corporation; ZHUHAI GREE
MAGNETO-ELECTRIC CO. LTD., a
China company; MMC CONSUMABLES
INC., a California company; TUl:LY
IMAGING SUPPLIES LTD., a Hong Kong
company; INKJETWAREHOUSE.COM
INC., a Connecticut corporation; WELLINK
TRADING CO., LTD., a China company;
RIBBON TREE (MACAO) TRADING
CO., LTD., a China company; RIBBON
TREE (USA) INC., dba CANA-PACIFIC
RIBBONS INC., a Washington company;
APEX DISTRIBUTING INC., a Washington
company; ARTECH GMBH, a German
company; INK TEC CO. LTD., a Korea
company; INK TEC AMERICA
CORPORATION, a Maryland company;
DATAPRODUCTS USA LLC, a California
limited liability corporation; GERALD
CHAMALES CORP., dba RHINOTEK
COMPUTER PRODUCTS, a California
corporation; MASTER INK CO., LTD., a
Hong Kong company; ACUJET U.S.A.,
INC., a California company; RHINOTEK
COMPUTER PRODUCTS, INC., a
Delaware corporation,
Defendants.

SEIKO EPSON CORPORATION,
a Japan corporation; EPSON AMERICA,
INC., a California corporation; and EPSON
PORTLAND INC., an Oregon corporation,
Plaintiffs,

Civil No. 06-477-BR

Page ii - ORDER REGARDING OCTOBER 3, 2011 SUMMARY JUDGMENT
HEARINGS AND NINESTAR'S MOTION TO AMEND ITS ANSWER

v.
GLORY SOUTH SOFTWARE
MANUFACTURING INC., a California
corporation; BUTTERFLY PRINT IMAGE
CORP. LTD; a Hong Kong company; INK
LAB (H.K.) CO. LTD, a Hong Kong
company; NECTRON INTERNATIONAL,
LTD., a Texas company; MIPO
INTERNATIONAL LTD., a Hong Kong
company; MIPO AMERICA, LTD., a
Florida company; NINE STAR IMAGE CO.
LTD, a China company; now known as
NINESTAR TECHNOLOGY CO. LTD., a
China company; NINE STAR
TECHNOLOGY COMPANY, LTD., a
California company; TOWN SKY INC., a
California corporation; ZHUHAI GREE
JVIAGNETO-ELECTRIC CO. LTD., a
China company; MMC CONSUMABLES
INC., a California company; TULLY
IMAGING SUPPLIES LTD., a Hong Kong
company; INKJETWAREHOUSE.COM
INC., a COl1l1ecticllt corporation; WELLINK
TRADING CO., LTD., a China company;
RIBBON TREE (MACAO) TRADING
CO., LTD., a China company; RIBBON
TREE (USA) INC., dba CANA-PACIFIC
RIBBONS INC., a Washington company;
APEX DISTRIBUTING INC., a Washington
company; ARTECH GMBH, a German
company; INK TEC CO. LTD., a Korea
company; INK TEC AMERICA
CORPORATION, a Maryland company;
DATAPRODUCTS USA LLC, a California
limited liability corporation; GERALD
CHAMALES CORP., dba RHINOTEK
COMPUTER PRODUCTS, a California
corporation; MASTER INK CO., LTD., a
Hong Kong company; ACUJET U.S.A.,
INC., a California company; RHINOTEK
COMPUTER PRODUCTS, INC., a
Delaware corporation,
Defendants.
SEIKO EPSON CORPORATION,
Civil No. 07-896-BR
Page iii - ORDER REGARDING OCTOBER 3, 2011 SUMlVIARY JUDGMENT
HEARINGS AND NINESTAR'S MOTION TO AMEND ITS ANSWER

a Japan corporation; EPSON AMERICA,
INC., a California corporation; and EPSON
PORTLAND INC., an Oregon corporation,
Plaintiffs,

v.
E-BABYLON, INC., dba
123INKJETS.COM, a California
corporation; LINKYO CORP., dba
SUPERMEDIASTORE.COM, a California
corporation; CARTRIDGES ARE US, INC.,
a Michigan corporation; PRINTPAL, INC.,
an Oregon corporation,
Defendants.

SEIKO EPSON CORPORATION, a Japan
corporation; EPSON AMERICA, INC., a
California corporation; and EPSON
PORTLAND INC., an Oregon corporation,

Civil No. 08-04S2-BR

Plaintiffs,
v.
INKJETMADNESS.COM, INC. dba
INKGRABBER.COM, a California
corporation; ACECOM INC - SAN
ANTONIO, dba INKSELL.COM, a Texas
corporation; COMPTREE INC., dba
MERITLINE.COM, a California
cOlporation; MEDIA STREET INC., dba
MEDIASTREET.COM, a New York
cOlporation,
Defendants.

SEIKO EPSON CORPORATION,
a Japan corporation; EPSON AMERICA,
INC., a California corporation; and EPSON
PORTLAND INC., an Oregon corporation,

Civil No. 09-477-BR

Plaintiffs,
Page iv - ORDER REGARDING OCTOBER 3, 2011 SUMMARY JUDGMENT
HEARINGS AND NINESTAR'S MOTION TO AMEND ITS ANSWER

v.
ABACUS 24-7 LLC, an Arizona limited
liability company; EFORCITY
CORPORATION, dba EFORCITY.COM,
a California corporation; R&L IMAGING
GROUP, INC., formerly known as IEM
CONSUMABLES, INC., a California
corporation; XP SOLUTIONS, LLC, dba
CLICKINKS.COM, a Florida limited
liability company; CLICKINKS.COM,
LLC, a Florida limited liability company;
GLOBAL BUSINESS SUPPORT
SYSTEMS, INC., dba
PRINTCOUNTRY.COM, a Delaware
corporation; GREEN PROJECT, INC., a
California corporation; and JOSEPH WU, an
individual,
Defendants.

GREEN PROJECT, INC., a California
corporation; and JOSEPH WU, an individual,
Counterclaimants,

v.
SEIKO EPSON CORPORATION,
a Japan corporation; EPSON AMERICA,
INC., a California corporation; and EPSON
PORTLAND INC., an Oregon corporation;
and HERBERT W. SEITZ, an individual,
Counter Defendants.

Page v - ORDER REGARDING OCTOBER 3, 2011 SUMMARY JUDGMENT
HEARINGS AND NINESTAR'S MOTION TO AMEND ITS ANSWER

For the reasons set fOlih at the hearings held on October 3, 20 II, the COUli enters the
following rulings:
I.

Ninestar Defendants' Motion for Leave to Amend Answer and Counterclaim to Add
Defense of Patent Exhanstion
06-236 Case (Docket No. 459): DENIED.
06-477 Case (Docket No. 397): DENIED.
07-896 Case (Docket No. 293): DENIED.
08-452 Case (Docket No. 266): DENIED.
09-477 Case (Docket No. 353): DENIED.

2.

Ninestar Defendants' Motion for Summary Judgment ofInvalidity of U.S. Patent
Nos. 6.502,917 and 7,008,053
06-236 Case (Docket No. 360): DENIED with respect to '917 patent ('053 patent
previously decided)
06-477 Case (Docket No. 323): DENIED with respect to '917 patent ('053 patent
previously decided)
07-896 Case (Docket No. 191: DENIED with respect to '917 patent ('053 patent
previously decided).
08-452 Case (Docket No. 165): DENIED with respect to '917 patent ('053 patent
previously decided).
09-477 Case (Docket No. 245): DENIED with respect to '917 patent ('053 patent
previously decided).

3.

Ninestar's Motion rOi' Summary Judgment ofUnenrorceability of U.S. Patent
Nos. 6,502,917 and 6,550,902 for Inequitable Conduct
06-236 Case (Docket No. 351): DENIED.
06-477 Case (Docl{et No. 311): DENIED.
07-896 Case (Docket No. 179): DENIED.

Page 1 - ORDER REGARDING OCTOBER 3, 2011 SUMMARY JUDGMENT
HEARINGS AND NINESTAR MOTION TO AMEND ANSWER HEARING

08-452 Case (DocI<et No. 153): DENIED.
09-477 Case (Docket No. 234): DENIED.
4.

Enson's Motion for Partial SummalY Judgment of No Inequitable Conduct 01'
Walker Process Fraud
06-236 Case (Docket No. 370): Motion taken under advisement with leave granted for
Epson to file a 10-page supplemental memorandum on or before noon on October 11,
2011 and for Ninestar to file a 10-page supplemental opposition on or before noon
October 18,2011, for the Court's further consideration.
06-477 Case (Docket No. 326): Motion taken under advisement with leave granted for
Epson to file a 10-page supplemental memorandum on or before noon on October 11,
2011 and for Ninestar to file a lO-page supplemental opposition on or before noon
October 18,2011, for the Court's further consideration.
07-896 Case (Docket No. 204): Motion taken under advisement with leave granted for
Epson to file a 10-page supplemental memorandum on or before noon on October II,
20 II and for Ninestar to file a lO-page supplemental opposition on or before noon
October 18, 2011, for the Court's fUtiher consideration.
08-452 Case (Docket No. 179): Motion taken under advisement with leave granted for
Epson to file a 10-page supplemental memorandum on or before noon on October II,
2011 and for Ninestar to file a 10-page supplemental opposition on or before noon
October 18, 2011, for the Court's fUtiher consideration.
09-477 Case (Docket No. 252): Motion taken under advisement with leave granted for
Epson to file a lO-page supplemental memorandum on or before noon on October 11,
2011 and for Ninestar to file a 10-page supplemental opposition on or before noon
October 18,2011, for the CoUti's fUtiher consideration n.

5.

Construction of "com pressingly contained" in the asserted claims of U.S. Patent
No. 5,158,377
The Court hereby defers construction of the term "compressingly contained" in the
asselied claims of U.S. Patent. Nos. 5,158,377 until after the patiies have briefed their
respective positions in or with the expert repOlis due on November 4, 20 II, and deposed
the opposing experts on this issue. See CoUti Rec. 265. The CoUti will set a hearing date
for construction of this term, and may request briefing from the parties on this issue.

Page 2 - ORDER REGARDING OCTOBER 3,2011 SUMMARY JUDGMENT
HEARINGS AND NINESTAR MOTION TO AMEND ANSWER HEARING

6.

Case Management Schedule
The Court hereby orders the patties to file a joiut case management schedule on 01' before
October 24,2011. The Court will thereafter finalize the case management schedule at the
conclnsion of a telephonic conference with the patties on October 26, 20 II at 9:00 a.m.
Jury trial shall be held March 26 through April 13, 2012. Phase I of the trial will regard
infringement of the '377 patent. Phase II, to the same jury, will be on validity of the
'377, '053 and '917 patents, and the issues of damages and willfulness of any
infringement found by the jury with respect to the '377 patent, as well as the issues of
damages and willfulness of the infringement of the '053 and '917 patents. The pretrial
conference is set for March 19-20,2012, with pretrial filings due February 29,2012.

7.

Epson's Motion to Exclude Certain Opinions and Testimony of Ross N. Mills, Ph.D.
06-236 Case (Docket No. 357): DENIED as premature with leave to renew at the
pretrial conference. Plaintiff is directed to file a summary prior to or at the time of the
pretrial conference restating its position, with a reference back to Plaintiff's original
filing.
06-477 Case (Docket No. 317): DENIED as premature with leave to renew at the
pretrial conference. Plaintiff is directed to file a summary prior to or at the time of the
pretrial conference restating its position, with a reference back to Plaintiff's original
filing.
07-896 Case (Docket No. 185): DENIED as premature with leave to renew at the
pretrial conference. Plaintiff is directed to file a summaty prior to or at the time of the
pretrial conference restating its position, with a reference back to Plaintiff's original
filing.
08-452 Case (Docket No. 159): DENIED as premature with leave to renew at the
pretrial conference. Plaintiff is directed to file a summary prior to or at the time of the
pretrial conference restating its position, with a reference back to PlaintifI's original
filing.
09-477 Case (Docket No. 238): DENIED as premature with leave to renew at the
pretrial conference. Plaintiff is directed to file a summary prior to or at the time of the
pretrial conference restating its position, with a reference back to Plaintiff's original
filing.

8.

Epson's Motion to Exclude Opinions and Testimony of Dr. Adrienne Lavine
06-236 Case (Docket No. 366): DENIED as premature with leave to renew at the
pretrial conference. Plaintiff is directed to file a summary prior to or at the time of the
pretrial conference restating its position, with a reference back to Plaintiff's original
filing.

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HEARINGS AND NINESTAR MOTION TO AMEND ANSWER HEARING

07-896 Case (Docket No. 196): DENIED as premature with leave to renew at the
pretrial conference. Plaintiff is directed to file a summary prior to or at the time of the
pretrial conference restating its position, with a reference back to Plaintiffs original
filing.
08-452 Case (Docket No. 168): DENIED as premature with leave to renew at the
pretrial conference. Plaintiff is directed to file a summary prior to or at the time of the
pretrial conference restating its position, with a reference back to Plaintiffs original
filing.
09-477 Case (Docket No. 247): DENIED as premature with leave to renew at the
pretrial conference. Plaintiff is directed to file a summary prior to or at the time of the
pretrial conference restating its position, with a reference back to Plaintiffs original
filing.
IT IS SO ORDERED.

/IA

Dated this

2»

day of

O()rIX/

, 20 II.

United States District Judge

Page 4 - ORDER REGARDING OCTOBER 3; 2011 SUMMARY JUDGMENT
HEARINGS AND NINESTAR MOTION TO AMEND ANSWER HEARING