Wednesday, October 26, 2016

Coalition for Affordable Drugs Succeeds in Invalidating Gattex Patent Claims​

In a final written decision, the Board found claims of a patent directed to a stabilized formulation of GLP-2 unpatentable under 35 U.S.C. § 103(a). "That the inventors of the ’866 patent discovered that a particular GLP- 2 analog performs best with a certain combination of amino acid and sugar, namely histidine and mannitol, does not persuade us by itself that the subject matter of the claims of the ’866 patent is nonobvious. The preponderance of evidence of record shows that the identification of the optimal sugar and amino acid to add to a formulation for stability purposes was nothing more than routine experimentation. Here, in addition to the disclosures of [a 1999 journal paper] and [U.S. patent '216], we credit the testimony of [petitioner's declarant] and his analysis of publications authored by [patent owner's expert] that describe 'rational' design choices for excipients in lyophilized protein formulations in order to optimize the formulation. . . .Thus, we are not persuaded that this is a case where there were 'numerous parameters' to try so as to support a conclusion of nonobviousness. . . . [T]he use of histidine and mannitol in protein formulation was disclosed in the prior art and the experimentation needed to confirm the successful application with GLP-2 analogs was 'nothing more than [the] routine application of a well-known problem-solving strategy, . . . "the work of a skilled [artisan], not of an inventor."'"

Petition for Inter Partes Review by Coalition for Affordable Drugs II, LLC, IPR2015-01093 (PTAB October 21, 2016, Order) (Snedden, APJ)

Tuesday, October 25, 2016

Delivery Notification Patent Ineligible Under 35 U.S.C. § 101​

The court denied plaintiff's motion to reconsider an earlier order granting defendant's motion for judgment on the pleadings that plaintiff’s delivery notification system patent encompassed unpatentable subject matter. "[Plaintiff] argues that the Court engaged in impermissible hindsight bias 'by viewing the [patent] in light of the ubiquity of wireless messaging technology today,' instead of determining whether the limitations in the patent were well understood, routine, or conventional in the art in 1996, when the patent was filed. . . . [Plaintiff] misreads and mischaracterizes the Court’s holding that [plaintiff] has 'patented a method of delivery notification that is the equivalent of a method implemented ‘through a computer’ or ‘over the internet.’'. . . . The Court is permitted to take note of 'fundamental economic concepts and technological developments' when making a § 101 determination, observes that sending wireless page messages was well-known in 1996. . . . The patent sets forth steps by which conventional technologies (wireless paging systems) do conventional things (relay data and send messages through, in essence, a communications center) to achieve an abstract aim: notifying a customer if and when their package has been delivered."

Mobile Telecommunications Technologies, LLC v. United Parcel Service, Inc., 1-12-cv-03222 (GAND October 21, 2016, Order) (Totenberg, USDJ)

Monday, October 24, 2016

CEO’s Indirect Financial Interest in Litigation Does Not Preclude Expert Testimony​

The court denied defendant's motion to preclude plaintiff's CEO from providing expert testimony due to his financial stake in the case. "[Defendant] moves to preclude [plaintiff's CEO] from testifying as an expert witness, based on his 'blatant and direct financial interest in the outcome of this case.'. . . [Defendant] analogizes this situation to one in which a retained expert will receive greater compensation depending on the outcome of a case, a situation in which some courts preclude experts from testifying. . . . [Defendant's] clever argument has some appeal, but ultimately fails. . . . Any recovery in this case will initially go to [plaintiff], not [its CEO]. . . . In the end, the Court concludes that [the CEO's] indirect financial interest in the outcome of the litigation . . . can be handled appropriately on cross-examination."

Andover Healthcare, Inc. v. 3M Company, 1-13-cv-00843 (DED October 20, 2016, Order) (Stark, USDJ)

Friday, October 21, 2016

Upon Reconsideration, Electric Power Group Renders Fleet Monitoring and Tracking Patent Invalid Under 35 U.S.C. § 101​

Following the recent Federal Court decision in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the court reconsidered an earlier order that denied defendant's motion to dismiss because the asserted claims of one of plaintiff’s machine communication system patents encompassed unpatentable subject matter and, upon reconsideration, found that the claims lacked an inventive concept. "Most recently, the Federal Circuit, in Electric Power Group, has clarified that 'enumerating types of information and information sources' will not turn an abstract idea into one that is patent-eligible. In this case, the fact that the scope of the [patent] is limited to freight assets provides no inventive concept. Moreover, the [patent] does not require any components that could be considered an 'advance over conventional computer and network technology.'. . . Additionally, while in its initial assessment of the [patent], the Court expressly relied on 'the specialized monitoring features described in [the patent], coupled with the format translation,' Electric Power Group is clear that identifying parameters for monitoring does not constitute an inventive concept. . . . [T]he claimed invention does not solve a problem deeply rooted in the context of 'computer networks.' The issue of incompatibility in communication has existed as long as language itself."

ORBCOMM, Inc. v. CalAmp Corp., 3-16-cv-00208 (VAED October 19, 2016, Order) (Hudson, USDJ)

Thursday, October 20, 2016

Zone Dependent Payout Gaming Patent Not Ineligible Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s zone dependent payout gaming management patent encompassed unpatentable subject matter because the asserted claim was not directed toward an abstract idea. "Determining game configurations (based on some set of rules, e.g., an algorithm, list, etc.), generating game outcomes based on the configurations (based on some set of rules, e.g., an algorithm, list, etc.), determining payouts based on game outcomes (based on some set of rules, e.g., an algorithm, list, etc.), and crediting players based on payouts (accounting) are abstract ideas that can be conducted in one’s mind. At least one aspect of the process, however, requires activity outside of one’s mind: determining the physical location of the mobile gaming device . . . via the computer system. That is concrete enough to take the claim outside the scope of [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).]'s 'abstract idea' exception to patentability under § 101. The location of the mobile gaming device via computer is a limited, concrete, physical task. . . . The integration of the non-abstract function of determining the mobile gaming device location via computer with the other processes for which the computer is used renders the invention as a whole patentable even if certain elements might not be separately patentable."

CG Technology Development, LLC et al v. Bwin.Party Digital Entertainment PLC et al, 2-16-cv-00871 (NVD October 18, 2016, Order) (Jones, USDJ)

Computer Audio Communication Patent Not Ineligible Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s computer audio communication system patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The question of unpatentability of abstract ideas under [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)] is not whether an invention can be understood or described in the abstract, i.e., in one’s mind (any patent claim that could not be would fail for lack of enablement), but whether the invention can be practiced in the abstract (mathematical calculations, risk-hedging, etc). The Court is not convinced that Claim 1 is directed to an abstract concept. Rather, it is directed to a concrete, physical task. . . . [C]onverting sound to electronically stored information (and vice versa after transmitting data between two computers) is not something that can be done without the claimed apparatus (or a similar apparatus). The 'computer station' claimed here is not utilized simply for its generalized computing capabilities, i.e., its ability to substitute for a human mind, pencils and paper, etc. to perform an abstract task. On the contrary, Claim 1 uses the computer station for a particular, concrete method of communication inherently tied to a machine with particular physical capabilities. . . . Sound waves are not abstract concepts but fluctuations in air pressure in the physical world. Nor are electronic data packets abstract concepts."

2-Way Computing, Inc. v. Grandstream Networks, Inc., 2-16-cv-01110 (NVD October 18, 2016, Order) (Jones, USDJ)

Wednesday, October 19, 2016

Expert’s Apportionment Opinion Excluded for Relying on Consumer Survey Concerning Unrelated Features

​ The court granted defendants' motion to exclude the testimony of plaintiff's damages expert regarding apportionment as unreliable. "[Plaintiff's expert] essentially opines that the smallest salable unit of the Accused Products is the smartphone handset (not the internal chipset) and, in an effort to further apportion, constrains the total royalty base by a factor of one-tenth. He opines that this 10% factor adequately accounts for the proportion of total sales that is attributable to only the patented feature based on his review of results from two consumer surveys . . . that report that consumers value 'fingerprint scanning security' and 'data security and privacy.' Neither of the surveys seem to indicate customer demand for the digital watermarking technology. [The expert's] use of surveys is not unsound, but there is too great an analytical gap between the survey data and his apportionment factor of 10%, making his apportionment opinions excludable. . . . [The expert] did not separate out the patented feature and therefore did not adequately apportion. . . . He does not offer any 'credible economic analysis' to support his conclusion, making the 10% factor seemingly 'plucked out of thin air based on vague qualitative notions' and thus excludable."

Blue Spike, LLC v. Huawei Technologies Co., Ltd., 6-13-cv-00679 (TXED October 14, 2016, Order) (Clark, USDJ)