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Canon wins Rule 36 affirmance of summary judgment and attorneys' fees in flash memory card patent case

April 2018

Jones Day once again successfully defended Canon Inc. and Canon U.S.A., Inc. against claims of patent infringement relating to flash memory card readers. Plaintiffs, Technology Properties Limited and MCM Portfolio LLC, originally sued Canon and several other defendants in E.D. Texas in March 2012. The Texas case was stayed pending a parallel ITC investigation (337-TA-841). Jones Day represented Canon in the ITC investigation and prevailed on non-infringement. After the Commission's Final Determination, the plaintiffs lifted the stay in the Texas case in 2014. Jones Day successfully moved to transfer the case to the Northern District of California where the parties engaged in discovery and claim construction. After claim construction, Canon moved for summary judgment of non-infringement in July 2016 and argued the motion in August 2016. On September 16, 2016, Judge Wilken issued an order finding that none of Canon's accused products containing the accused card readers infringe any of the 12 asserted claims of the two patents asserted against Canon. On January 26, 2017, Judge Wilken granted Canon's motion for attorneys' fees, finding the case to be exceptional under 35 U.S.C. § 285. On April 12, 2017, Judge Wilken issued an order granting Canon just under $1.8 million in attorneys' fees. On April 11, 2018, the Federal Circuit issued a Rule 36 affirmance of the district court’s non-infringement ruling and fees award, without opinion.

Technology Properties Limited LLC, et al. v. Canon Inc., et al., Appeal Nos. 2017-1063, -1536 (Federal Circuit); Technology Properties Limited LLC, et al., v. Canon Inc., et al., Case No. 4:14-cv-03640 (N.D. Cal.); Technology Properties Limited, LLC v. Canon Inc. and Canon USA, Inc., No. 6:12-cv-00202 (E.D. Tex.); In the Matter of Certain Computers and Computer Peripheral Devices and Components Thereof and Products Containing the Same, ITC Inv. No. 337-TA-841

For additional information about this matter, please contact: Calvin P. Griffith, David M. Maiorana

Client(s): Canon Inc.