Monday, April 27, 2015

Prior Finding of Willfulness Does Not Support New Willful Infringement Claim as to Modified Products

The court granted plaintiff's motion for summary judgment that it did not willfully infringe defendant's power converter patent and rejected defendant's argument regarding a finding in a previous action that plaintiff was willful. "[Defendant's] efforts to defeat [plaintiff's] motion are unavailing. They rest principally on purportedly 'striking ... parallels' between the willfulness issue here and that involved in . . . an earlier case in which [plaintiff] was found to be a willful infringer. [Defendant] insists that '[plaintiff] is an adjudged copier as to the [prior] accused products, which remain essentially unchanged.' The Court finds these contentions unconvincing, at least in the context of an objective recklessness analysis for purposes of willfulness. By [defendant's] implicit concession (in describing the new products as only 'essentially,' but not entirely, unchanged), the accused products are changed from what was found to infringe in the earlier case. As [plaintiff] observes, '[the earlier case] involved different products and different litigation positions.' [Plaintiff] reasonably contends that it believes its changes are material and render the now-accused products non-infringing."

Fairchild Semiconductor Corporation, et al v. Power Integrations Inc., 1-12-cv-00540 (DED April 23, 2015, Order) (Stark, J.)

Friday, April 24, 2015

Computer Virus Screening Patent Not Invalid Under Alice

The court denied defendants' motion for summary judgment that plaintiff's computer virus screening patent was invalid for lack of patentable subject matter because defendants failed to prove the patent was directed to an abstract idea. "[Plaintiff] insists, 'The human mind cannot screen for computer viruses within the telephone network or elsewhere.' The Court agrees with [plaintiff]. The [patent-in-suit] is not directed to screening generic 'data' or 'information.' Instead, the asserted claim specifically recites a computer virus, which has computer-centric implications that cannot be abstracted away so broadly. . . . Claim 7 . . . is 'Internet-centric.' In fact, the key idea of the patent is that virus detection can take place remotely between two entities in a telephone network. This is advantageous because it saves resources on the local caller and calling machines and more efficiently executes virus detection at a centralized location in the telephone network. Claims that 'purport to improve the functioning of the computer itself' or 'effect an improvement in any other technology or technical field' may be patentable under § 101."

Intellectual Ventures I LLC v. Symantec Corporation et al, 1-10-cv-01067 (DED April 22, 2015, Order) (Stark, J.)

Thursday, April 23, 2015

Shipping Container Monitoring Patents Invalid Under Alice

The court granted defendants' motions to dismiss because plaintiff's shipping container monitoring patents claimed unpatentable subject matter. "[The] Patents are directed to the . . . . abstract idea [of] monitoring locations, movement, and load status of shipping containers within a container-receiving yard, and storing, reporting and communicating this information in various forms through generic computer functions. Plaintiff’s arguments that the patent claims are not abstract because they require physical steps and include the use of tangible components is beside the point; the claims merely recite the abstract idea of monitoring the location and load status of containers in a yard. . . . While Plaintiff argues that the claim is not abstract because it includes the use of tangible components, the Court has already noted that an abstract idea is not rendered patentable just because of connections to the physical world. . . . Adding routine steps of recording, identifying, and communicating the ID code of a particular container, or moving the container from the receiving area to a vehicle does not transform an otherwise abstract idea into patent-eligible subject matter. Instead, the claimed sequence of steps comprises only 'conventional steps, specified at a high level of generality,' which is insufficient to supply an 'inventive concept.'"

Wireless Media Innovations, LLC v. Maher Terminals, LLC, 2-14-cv-07004 (NJD April 20, 2015, Order) (Linares, J.)


Alice Challenges at the Pleading Stage Continue to Increase in 2015

In the first four months of 2015, U.S. district courts ruled on twenty-four § 101 invalidity challenges at the pleading stage. That is one more ruling of that type than occurred in all twelve months of 2014. Additionally, the grant rate of the motions has increased slightly from 2014 levels. To view a motion success report reflecting the success of these motions since 2008, click here.

Wednesday, April 22, 2015

Unexceptional Case Under Section 285 May Nonetheless Require Attorney Fee Award Under Court’s Inherent Authority

Following summary judgment of invalidity, the court denied defendants' motion for attorneys' fees under 35 U.S.C. § 285, but sua sponte ordered plaintiff to show cause why sanctions should not be imposed under the court's inherent power. "Notwithstanding the fact the entire case is not exceptional, the Court still finds that attorney fees are warranted for [plaintiff's] behavior under the Court’s inherent sanctioning power. . . . [Plaintiff] had no justification for refusing to stipulate invalidity of the [patent-in-suit] after claim construction. . . . [Plaintiff's] refusal to stipulate or dismiss its claims was in bad faith because it unjustifiably expended the parties’ and Court’s time and resources and delayed judgment. If [plaintiff] wanted to appeal the Court’s claim construction ruling — which is what [it] ultimately did—it could have simply stipulated to invalidity of the [patent]. . . . The Court Orders [plaintiff] to show cause why [it] should not be sanctioned in the form of attorney fees for opposing Defendants' Motion for Summary Judgment."

MyMedicalRecords, Inc. v. Jardogs, LLC, 2-13-cv-03560 (CACD April 20, 2015, Order) (Wright, J.)

Tuesday, April 21, 2015

Jury to Decide Subjective Willfulness Despite Court’s Determination of No Objective Willfulness

The court denied defendant's motion in limine to preclude evidence of willful infringement even though the court determined that defendant did not willfully infringe. "[T]he court finds that [defendant's] invalidity defense under § 103 is objectively reasonable. In particular . . . while the jury had sufficient evidence to find that the combination of the elements of [certain claims] were not obvious, the court finds this was a 'substantial question' and, therefore, plaintiffs have not met their burden of establishing that [defendant] willfully infringed the patent. . . . Despite this ruling, the court has also decided to permit the jury to resolve the so-called 'subjective' prong of the willfulness standard. This is being done solely to avoid the necessity of an additional trial should the Federal Circuit disagree with this court’s conclusion as to the objective prong, now that the jury has heard substantially, if not all, of the evidence necessary to reach this fact question."

Ameritox, Ltd. v. Millennium Health, LLC, 3-13-cv-00832 (WIWD April 17, 2015, Order) (Conley, J.)

Monday, April 20, 2015

Attorney Fees for Non-Patent Claims Recoverable Under 35 U.S.C. § 285

The court granted defendants' motion for attorney fees under 35 U.S.C. § 285 including defending against plaintiffs' claim for breach of a license agreement. "[T]he Federal Circuit has recognized that 'in an action having both patent and non-patent claims, recovery may be had under § 285 for the non-patent claims if the issues involved therewith are intertwined with the patent issues.'. . . [R]esolution of all of Plaintiffs’ claims turned on the true coverage of the Method Patent and the implications of that coverage with respect to the [contract]. . . . Because the claims share an underlying factual basis and apportioning fees between the claims would be unfeasible, under both the law of the Federal Circuit and Nevada law, the Court need not segregate the fee award."

Home Gambling Network, Inc., et al v. Chris Piche, et al, 2-05-cv-00610 (NVD April 16, 2015, Order) (Ezra, J.)

Friday, April 17, 2015

Text-Message Telecommunication Patent Not Invalid Under Alice

The court granted plaintiff's motion for judgment on the pleadings that its server communication patent was not invalid for lack of patentable subject matter because it claimed an inventive concept. "Claim 20 is directed to a problem unique to text-message telecommunication between a mobile device and a computer. The solution it provides is tethered to the technology that created the problem. . . . It specifies how an interaction between a mobile phone and a computer is manipulated in order to achieve a desired result which overrides conventional practice. . . . If one looks at almost any patent from far enough away, it could arguably claim an abstract idea. For example, Alexander Graham Bell's patent could be said to claim the abstract idea of oral communication. But his invention was not the concept of oral communication itself; it was a technological innovation that allowed a type of oral communication between people who could otherwise not communicate in that way. The claimed method here does the same: it uses technology that allows communication where it would otherwise be impossible."

Messaging Gateway Solutions LLC v. Amdocs, Inc. et al, 1-14-cv-00732 (DED April 15, 2015, Order) (Andrews, J.)