United States: Defendants In Default: Motions For Default Judgment Must Demonstrate Infringement

Order Staying Case In Part And Denying Motion For Default Judgement Without Prejudice. e. Digital Corp. v. Ivideon LLC, et al. Case No. 15-cv-00691-JST (Judge Jon S. Tigar)

In a recent opinion, Judge Jon Tigar sua sponte stayed the vast majority of a patent infringement case pending the outcome of inter partes review proceedings, and also denied a motion for default judgment that was predicated upon the Defendants' alleged infringement of two claims not subject to the ongoing proceedings before the Patent Trial and Appeal Board ("PTAB"). The opinion underscores that plaintiffs do not get a "free pass" in proving infringement, but rather must fully establish the predicate bases of a patent claim, even where a defendant has failed to make an appearance.

In e.Digital Corp. v. Ivideon LLC, et al., 15-cv-00691, the five patents-in-suit were the subject of inter partes review, and the Court had already stayed another patent infringement action in which the Plaintiff had asserted the same five patents against another defendant. Judge Tigar ordered e.Digital to show cause why the Ivideon case should not be stayed as well. In response, e.Digital noted that two claims of a single patent were not subject to the IPR. Judge Tigar agreed not to stay the case with respect to those two claims, but he stayed the rest of the case. He concluded that the possibility of the claims being invalidated weighed in favor of a stay.

Judge Tigar's order also addressed e.Digital's motion for a default judgment on its patent infringement claims. Specifically, he analyzed the two claims not subject to the litigation stay. He found that neither the complaint nor the motion for default judgment adequately explained how the claims read on the accused products. The complaint, for example, directed the Court to the Defendants' websites for information about the alleged infringement. Judge Tigar denied e.Digital's motion without prejudice, giving it the option to submit another motion with more in-depth analysis.

As this Order makes clear, victory is not the default outcome even where the other side doesn't show up to contest infringement. On the contrary, patentees in the Northern District should be prepared at all times to provide details regarding the accused products and how the accused products allegedly infringe.

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