Judge Refuses To Halt Lucent Trial V. Microsoft, Dell

By Ron Zapata

Law360, New York (December 06, 2007, 12:00 AM ET) -- A California federal court judge has rejected href="http://www.law360.com/companies/microsoft-corporation">Microsoft Corp.'s request to delay the start of a trial in which

In her decision, Judge Huff said the balance of considerations did not support a stay - citing the Supreme Court's decision in Colorado River Water Conservation District v. United States, which described limited circumstances in which a federal court should dismiss a proceeding based on related state court litigation.

“The Supreme Court indicated that a stay under Colorado River should involve a conclusion that the parallel state proceeding would provide a complete resolution of the issues,” Judge Huff said. “Here, the plaintiff in the newly filed state court case is not a party to this patent litigation, and the state court would not resolve all of the pending issues in this case.”

In the Delaware case filed in October,

Multimedia Patent Trust, which was formed by Lucent Technologies Inc. in November 2006 and assigned the two video coding patents, argued that a stay would not foster judicial economy.

“Instead, a delay of this federal patent case so close to trial would significantly prejudice MPT, as would having to relitigate issues in Delaware that are already settled in this case,” MPT said.

Alternatively, Microsoft, Dell and Gateway sought to sever the patents from the February 2008 trial and instead consolidate them with another case the MPT has filed against the companies.

Judge Huff denied that relief as well.

“The court has weighed all appropriate factors, such as the need for judicial economy and any potential for prejudice to the parties, and concludes that severance of these patents is not warranted here,” Judge Huff said.

Microsoft, Dell and Gateway had wanted to move the two patents to MPT's recently filed suit against the companies which alleged infringement of three other video coding patents. A trial in that case is scheduled for March 31, 2009 – which the technology companies said would give the Delaware court enough time to render a decision in the MPEG LA case.

Judge Huff's order means that the February trial is set to include infringement claims on five patents – the two disputed video coding patents as well as patents related to a form entry system, algorithms for gesture recognition and commands to select video display modes.

Lucent, which merged with Alcatel in 2006, originally sued Gateway and Dell over 12 different patents in 2003, but Microsoft stepped into the case on their behalf to file a motion for declaratory action.

Lucent claimed that many of the computers made by Gateway and Dell infringed on its patents by using Microsoft programs such as Outlook and Quicken, and by applying certain types of digital display and interfacing technologies.

The patent claims in the case were eventually split up into different trials, generally separated by technology type. The February 2008 trial would mark the second case to go before a jury.

Last February, a San Diego jury found that Microsoft Corp. infringed on MP3 patents held by Alcatel-Lucent and should pay more than $1.5 billion, the largest award of its kind, to its rival.

However, Judge Rudi Brewster overturned the verdict in August 2007 after ruling that Microsoft did not infringe one of the two patents at issue, and that Lucent did not have legal standing to bring suit over the second patent since it was not the sole owner.

The patents in asserted for the February 2008 trial are U.S. Patent Numbers href="http://www.law360.com/patents/4383272">4,383,272; href="http://www.law360.com/patents/5347295">5,347,295; and href="http://www.law360.com/firms/kirkland-ellis">Kirkland & Ellis LLP.

Gateway is represented by Howrey LLP, href="http://www.law360.com/firms/dewey-leboeuf">Dewey & LeBoeuf LLP and href="http://www.law360.com/firms/arnold-porter">Arnold & Porter LLP.

Microsoft Corp. is represented by http://www.law360.com/firms/fish-richardson" href="http://www.law360.com/firms/fish-richardson">Fish & Richardson PC.

The case is Lucent Technologies Inc. and Multimedia Patent Trust v. Gateway In. et al., case number 07-cv-2000 in the U.S. District Court for the Southern District of California.