Friday, February 12, 2016

Products Covered by Patents Other Than The Currently Asserted Patent May be Considered Non-Infringing Substitutes

The court denied plaintiff's motion to strike the updated report of defendant's damages expert regarding his opinion that five defendant phones not subject to the upcoming retrial were noninfringing alternatives. "[The five phones at issue] were all accused of infringing the [one] patent at the [original] trial. At the [original] trial, the jury found that all five phones did not infringe [that] patent but did infringe other [plaintiff] patents. . . . The Federal Circuit did not hold, as [plaintiff] urges the Court to do in the instant case, that products covered by patents other than the one for which damages are sought cannot, as a matter of law, be evidence of available non-infringing alternatives. . . . Because an acceptable non-infringing alternative need not be a product that was actually on the market at the time of infringement, the fact that the [defendant's] products infringed some of [plaintiff's] patents does not preclude [defendant] from arguing that the non-infringing aspects of these products provide evidence that [defendant] could have offered a fully non-infringing product that would have been an acceptable non-infringing alternative."

Apple Inc. v. Samsung Electronics Co. Ltd., et al, 5-11-cv-01846 (CAND February 10, 2016, Order) (Koh, J.)

Thursday, February 11, 2016

Disclaimed Financial-Related Claims Disregarded in Determining Whether Non-Overlapping Claims Qualify for CBM Review

Following the patent owner's disclaimer of certain challenged claims, the Board denied institution of covered business method review of a patent directed to electronic commerce because the petitioner did not show that the patent was a covered business method patent under § 18(d)(1) of the AIA. "Petitioner challenges claims 1–20 of the ’177 patent, of which claims 1–10 have been disclaimed. . . . [F]or the purposes of whether or not to institute a covered business method patent review, we treat claims 1–10 as never having existed. . . . We acknowledge that other panels of the Board have taken the caveat that an otherwise statutorily disclaimed dependent claim, which includes finance-related subject matter, may still be considered, to the extent that the still pending independent claim from which it depends may include claim limitations that encompass the finance-related subject matter of that dependent claim. . . . Petitioner has identified little relevant overlap between claims 1–10 and claims 11–20, in that the more overt finance-related subject matter of claims 1–10 identified by Petitioner – 'selection client' of claims 2 and 6, and 'retrieval client' of claim 7 – are not recited in claims 11–20. Accordingly, we determine that in this proceeding, a proper analysis as to whether the ’177 patent is a covered business method patent should focus exclusively on claims 11–20."

Petition for Covered Business Method Patent Review by Bitco Corp., CBM2015-00171 (PTAB February 9, 2016, Order) (Kim, APJ)

Wednesday, February 10, 2016

Witness Advocate Rule Does Not Require Disqualification of Plaintiff’s Former In-House Attorney

The court denied defendants' motion to disqualify one of plaintiff's attorneys who previously acted as in-house counsel for a company related to plaintiff on the basis that defendants intended to call the attorney as a witness. "Defendants argues that [the attorney] should be disqualified because they intend to call him as a witness on a variety of topics. . . . Defendants have failed to demonstrate that any testimony by [the attorney] would be sufficiently adverse to [plaintiff]. Accordingly, as Plaintiff does not intend to call [him] to testify on its behalf and as Defendants have not met their burden of showing that [his] testimony would be adverse to Plaintiff, the Court will not disqualify [the attorney] on the basis of [the Florida Advocate Witness Rule]."

JLIP, LLC v. Stratospheric Industries Inc. et al, 0-14-cv-61798 (FLSD February 8, 2016, Order) (Seltzer, M.J.)

Tuesday, February 9, 2016

Cloud Computing Patent Invalid Under 35 U.S.C. § 101

The magistrate judge recommended granting in part defendants' motion to dismiss because certain asserted claims of plaintiff’s cloud computing patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The Court concludes that 'setting up and managing a cloud computing environment' does, in fact, amount to an abstract idea. The concept implicates an idea 'having no particular concrete or tangible form' and that is 'devoid of a concrete or tangible application.'. . . Plaintiff's position here seems to be that '[m]anagement of cloud computing environments [have] only recently emerged as a technological innovation[,]' and are not as 'longstanding' a commercial practice as other forms of computing system or resource management. But nowhere have courts concluded that a patent claim cannot be directed to an abstract idea if the claim relates to a field that is of somewhat recent vintage."

Kaavo Inc. v. Cognizant Technology Solutions Corporation, 1-14-cv-01192 (DED February 5, 2016, Order) (Burke, M.J.)

Website Digital Labelling Patents Not Invalid Under 35 U.S.C. § 101

The magistrate judge recommended denying defendant's motion for summary judgment that plaintiff's website digital labelling patents were invalid for lack of patentable subject matter and found that the claims were not directed toward an abstract idea. "'Gathering' data may describe an abstract idea, but 'producing' a 'label' based on that data does not describe an abstract idea. . . . Processing gathered data to 'produce' 'something symbolic' does not describe an abstract idea because that process is a specific and concrete implementation of data storage. . . . The 'responding' limitation may describe the somewhat abstract idea of reacting to information from a source. The 'guiding' limitation, however, describes a more specific and concrete way of processing information."

Gonzalez v. InfoStream Group, Inc., 2-14-cv-00906 (TXED February 6, 2016, Order) (Payne, M.J.)

Monday, February 8, 2016

NPE Plaintiff’s Communications With Inventors Prior to Acquiring Patent Rights Not Subject to Common Interest Privilege

The court granted defendant's motion to compel communications between an NPE plaintiff and its counsel that plaintiff disclosed to the named inventors before plaintiff acquired the exclusive option to purchase the patent-in-suit and rejected plaintiff's work product argument. "Before [plaintiff] acquired an exclusive option to purchase the patent, it lacked a common legal interest with the named inventors. At that point, [plaintiff's] interest was in pitching the value of a business partnership to the named inventors and possibly in highlighting concerns about invalidity and title in order to drive down the price. Any discussion of litigation at that stage remained hypothetical and incidental to the arms length evaluation of the prospect of a business relationship. . . . The presence of a non-disclosure agreement covering these disclosures weighs in favor of finding a common legal interest, but it is not conclusive. [Plaintiff] may not extend the scope of work-product immunity by asserting that a common legal interest existed according to a contract where one does not otherwise exist under the law."

Rembrandt Patent Innovations, LLC et al v. Apple, Inc., 3-14-cv-05094 (CAND February 4, 2016, Order) (Alsup, J.)

Friday, February 5, 2016

Settlement Alone Does Not Justify Vacatur of Invalidity Finding

The court denied the parties' motion to vacate the court's earlier order granting defendant's motion for judgment on the pleadings that plaintiff's data processing patent was invalid because the parties had settled. "[T]he parties do not address any element of Rule 60(b). Rather, they simply indicate that vacatur is proper because it would 'serve the public interest since it facilitates a resolution of all the litigation between the parties and the dispute regarding this particular issue.' In other words, the public interest is served by the settlement of this action. This is insufficient. . . . The parties do not point to any 'extraordinary circumstance' that would warrant vacatur."

DATATRAK International, Inc. v. Medidata Solutions, Inc., 1-11-cv-00458 (OHND February 3, 2016, Order) (Gaughan, J.)