Friday, November 17, 2017

Omission of Venue Challenge From First Rule 12(b) Motion Precludes Defendant From Invoking Intervening Change of Law to Excuse Waiver

The court denied defendant's motion to dismiss or transfer plaintiff's consolidated patent infringement actions for improper venue because defendant waived its venue defense. "It is well settled that an improper venue defense is waived if it is not included in 'a responsive pleading or in an amendment allowed by Rule 15(a)(1) as a matter of course.' [Defendant's] Motion to Dismiss the Complaint in [the first action] did not raise a defense of improper venue. The defense was therefore waived. . . . Even if the TC Heartland decision was an intervening change in law, the 'omission of improper venue from [a party]⁠'s first 12(b) motion constitutes a "procedural misstep,"' which precludes a party from '"invok[ing] intervening Supreme Court case law" in order to "correct" it.'. . . As to [defendant's] venue challenge in [the second action], [defendant] has already admitted that venue is proper. It may not now 'take back' this admission or otherwise seek to avoid its effects."

Nichia Corporation v. VIZIO, Inc., 2-16-cv-01453 (TXED November 15, 2017, Order) (Gilstrap, USDJ)

Thursday, November 16, 2017

In re Cray is Intervening Change of Law Excusing Waiver of Venue Challenge Through Participation in Litigation

The court granted defendant's motion to transfer for improper venue and rejected plaintiff's argument that defendant waived its venue defense. "⁠[P]laintiff argues alternatively that defendant waived its venue objection through participation in this case, which both implicitly and explicitly amounted to consent to venue. Normally, plaintiff would have a good argument. However, [In re Cray, Inc., 871 F.3d 1355 (Fed. Cir. 2017)] constitutes an intervening change of law, such that defendant could not have waived its objection to venue. Because In re Cray changed the standard for 'regular and established place of business,' and [defendant] acted promptly in filing the present motion, it was not unreasonable for defendant to object when it did."

Rotex Global, LLC v. Gerard Daniel Worldwide, Inc., 3-16-cv-00523 (WIWD November 14, 2017, Order) (Conley, USDJ)

Wednesday, November 15, 2017

Following the PTAB's Invalidation of Asserted Patent Claims, Oil States Does Not Justify Stay of Litigation

Following the PTAB's invalidation of all asserted claims during inter partes review, the court denied plaintiff's motion to stay pending the Supreme Court decision regarding the constitutionality of IPR proceedings in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, cert. granted in part, 137 S. Ct. 2239 (2017). "The PTAB ultimately invalidated all asserted claims in this case. Plaintiffs have exhausted appeals related to the PTAB's decision. Accordingly, this case is moot. Continuing the stay will only serve to prejudice Defendant by delaying final resolution of this case. . . . Even if the Supreme Court holds that IPRs are unconstitutional, it may choose not to apply the new rule retroactively. Even if the Supreme Court applies the new rule retroactively, it would seemingly only apply to cases still pending on direct review of the PTAB decision."

Leak Surveys, Inc. v. FLIR Systems, Inc., 3-13-cv-02897 (TXND November 13, 2017, Order) (Lynn, USDJ)

Tuesday, November 14, 2017

Written Description Requirement Applies Only to Literal Scope of Claims, Not Equivalents

The court granted plaintiffs' motion for summary judgment that their broadband patents were not invalid for lack of written description and rejected defendant's attempts to reargue the issue after plaintiffs amended their infringement theory. "Despite [defendant's] repeated attempts to broaden the court's claim construction, the court declines to re-cast its earlier constructions to encompass broad limitations to ATM technology to 'the invention' or 'the patents' or to add additional limitations, such as 'connection-oriented,' to the claims. . . . [Defendant] has not identified any case law that supports its contention that, after the written description requirement has been incorporated into the court's claim construction to narrow limitations of asserted claims, those same arguments and the written description requirement extend further to infringement under the doctrine of equivalents. 'This proposition not only has no authoritative support, but also runs counter to what the Supreme Court has said about the doctrine of equivalents.'"

Cox Communications Inc. et al v. Sprint Communications Company LP et al, 1-12-cv-00487 (DED November 9, 2017, Order) (Bataillon, USDJ)

Monday, November 13, 2017

Statement that Patents Are “Potentially Essential to a Standard” Does Not Create Substantial Controversy

The court granted defendant's motion to dismiss nine patents-in-suit added in plaintiff's first amended complaint for lack of subject matter jurisdiction. "[Defendant] has never accused [plaintiff] of infringing the Additional Patents-in-Suit. [Defendant] asserts that the 1,975 page list provided to [plaintiff] . . . is simply an identification of the universe of patents previously declared as potentially essential to a standard. [Defendant] has not stated that the Additional Patents-in-Suit are 'actually essential' to a standard practiced by [plaintiff]. . . . [Plaintiff] has not sufficiently pled that the nine Additional Patents-in-Suit were part of the 'hundreds' of claim charts prepared by [defendant] in the licensing negotiations. . . . [Defendant] may have participated in a similar 'palpable bravura' in suggesting to [plaintiff] to review its entire portfolio. Nonetheless . . . [defendant] has not made specific allegations of infringement as to the Additional Patents-in-Suit, nor has [it] presented claim charts relating to these patents."

Apple Inc. v. Qualcomm Incorporated, 3-17-cv-00108 (CASD November 8, 2017, Order) (Curiel, USDJ)

Thursday, November 9, 2017

Predictive Keyboard Patent Not Invalid Under 35 U.S.C. § 101 at Pleading Stage

The court denied defendant's motion to dismiss on the ground that plaintiff’s predictive keyboard application patent encompassed unpatentable subject matter because defendant failed to establish that the asserted claim was directed toward an abstract idea. "[Defendant] argues that claim 19 is directed to the abstract idea of listing word completion candidates based on partial information, analogizing the claim to the games Hangman and Wheel of Fortune. . . . [C]laim 19 does not automate a mental process previously practiced by humans. The court sees no reasonable scenario in which a mobile device user would type the first letter of a word she wishes to enter, then consult a list of possible completion candidates, then return to entering the text, for she would already know what her intended text was. . . . If less time is required to enter text, then less time is required to operate the device. Plaintiffs argue, therefore, that claim 19 improves the operation of the device. [Defendant] offers no compelling rebuttal. Accordingly, at this early stage of the proceedings, [defendant] has not met its burden to show that claim 19 is directed to an abstract idea."

WordLogic Corporation et al v. Fleksy, Inc., 1-16-cv-11714 (ILND November 7, 2017, Order) (Lefkow, USDJ)

Wednesday, November 8, 2017

Five Work-at-Home Employees Do Not Create Regular and Established Place of Business for Venue

The court granted defendant's motion to dismiss plaintiff's patent infringement action for improper venue because defendant did not have a regular and established place of business in the forum based on its five work-at-home employees in the district. "While these employees' homes are certainly physical places in this District and are in some sense connected to Defendant's business, none of them are a place 'of the defendant.'. . . Defendant does not own or lease these five employees' homes or contribute to their rent or mortgage payments. Nor does it require them to reside at particular locations or even to reside in this District. Defendant also does not publicly advertise or list the employees' homes as a place where it conducts business. . . . Listing an employee's home address on a workers' compensation policy does not show 'possession or control' by the employer over the employee's home, nor does it hold out the employee's home to the public as the employer's place of business."

BillingNetwork Patent, Inc. v. Modernizing Medicine, Inc., 1-17-cv-05636 (ILND November 6, 2017, Order) (Castillo, USDJ)