Tuesday, October 13, 2015

Executable Software Decompiler Patent Not Invalid Under 35 U.S.C. § 101

The court denied defendant's post-trial motion for judgment on partial findings that plaintiff's executable software decompiler patent was invalid for lack of patentable subject matter and found that the claims contained an inventive concept. "The translation of binary code and storing of an intermediate representation that can be used to analyze the underlying executable software code – in other words, decompilation – is . . . sufficiently well-established that there must be some meaningful innovative concept to render it patent-eligible. [Defendant] - seizing on [the inventor's] testimony that the claimed method could be performed manually - argues that the patent does not indicate any mechanism by which the computer-implemented method improves this longstanding process rather than simply automating it. To the contrary, however, the claimed method’s focus on the generation of an optimized, exhaustive model, as these descriptors have been defined in the claim construction process, renders the claimed invention more complex than what could be done by humans and transforms the claimed invention from an abstract idea simply automated by a computer into an inventive concept. . . . If the invention merely improved the speed and accuracy of a particular task through computer implementation, that would not be enough to generate a patent-eligible concept. But the claimed method exceeds mere automation of a well-known process by harnessing and improving upon the unique properties and complex capacities of computer technology."

Veracode, Inc., et al v. Appthority, Inc., 1-12-cv-10487 (MAD September 30, 2015, Order) (Woodlock, J.)

Friday, October 9, 2015

Denial of Inter Partes Review of Patent-in-Suit Excluded Due to Potential Jury Confusion and Prejudice

The court granted defendant's motion in limine under FRE 403 to preclude plaintiff from presenting evidence that the PTAB denied defendant's petition for inter partes review of the patent-in-suit. "There appears to be no controlling Federal Circuit law on the admissibility of evidence from an IPR proceeding. . . . An IPR proceeding is not an examination by a patent examiner in which a decision is made about the scope and validity of a patent. It is an adjudicative proceeding during which PTAB, comprised of three administrative law judges, determine whether the challenger has shown 'a reasonable likelihood' that it will prevail on its challenges. Moreover, the prior art that can be considered by PTAB is more limited. . . . Not only is PTAB’s decision not binding in these proceedings, the law is not even clear on whether and how much the PTAB’s decision denying [defendant's] request for review should affect the weight given to the two prior art references presented during the IPR proceedings. Although the court could attempt to provide instructions to the jury regarding the purpose and current standards applicable to the IPR proceeding, it would be difficult for a jury to understand, much less apply, the nuanced differences between the various proceedings and to determine how much weight should be given to PTAB’s decision, if any."

Wisconsin Alumni Research Foundation v. Apple Inc., 3-14-cv-00062 (WIWD September 29, 2015, Order) (Conley, J.)

Thursday, October 8, 2015

Containerized Data Patents Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s containerized data patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[T]he [first patent-in-suit] recites the abstract idea of searching and processing containerized data. Updating searchable containers of information based on past search results or based on external time or location resembles age-old forms of information processing such as have previously been employed in libraries, businesses, and other human enterprises with folders, books, time-cards, ledgers, and so on. . . . [T]he [second] patent is also directed to an abstract idea: containerized data storage utilizing rules and instructions."

Evolutionary Intelligence, LLC v. Yelp, Inc., 5-13-cv-03587 (CAND October 6, 2015, Order) (Whyte, J.)

Wednesday, October 7, 2015

Digital Content Usage Rights Patents Not Invalid Under 35 U.S.C. § 101

The court denied defendants' renewed motion for judgment on the pleadings that plaintiff's digital content usage rights patents were invalid for lack of patentable subject matter and found that the claims were not directed toward an abstract idea. "[T]he Patents-in-Suit are not directed toward an abstract idea, at least because they are directed toward patent-eligible methods and systems of managing digital rights using specific and non-generic 'trusted' devices and systems. Though the Patents-in-Suit address problems associated with creating and enforcing usage rights with content, they are directed to non-abstract solutions through the use of trusted systems. Further, the Court finds Defendants’ analogy to library loans unpersuasive. A library cannot effectively enforce usage restrictions on a book once that book has left the library’s premises. . . . Defendants essentially argue that the Patents-in-Suit must disclose detailed levels of security in order to require 'specific computer programming.' However, the implementation of the invention disclosed in the Patents-in-Suit may require 'specific computer programming,' even though the Patents-in-Suit may not disclose the particular security levels of that implementation."

ContentGuard Holdings, Inc. v. Amazon.com Inc. et al, 2-13-cv-01112 (TXED October 5, 2015, Order) (Gilstrap, J.)

Tuesday, October 6, 2015

Mobile Device Game Promotion Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion for judgment on the pleadings that plaintiff's mobile device game promotion patent was invalid for lack of patentable subject matter and found that the claims were directed toward an abstract idea. "Plaintiff emphasizes that the Examiner considered 'many . . . articles and publications . . . during publication . . . that relate to promotions or coupons and are directed to the same purported 'abstract idea' identified in Defendant's Motion.' This fact does not help support a finding that the claims of the [patent-in-suit] are patentable. The references considered by the Examiner may very well have also been directed at an abstract idea. . . . [T]he claims of the [patent] are directed to the economic strategy and abstract idea of . . . 'using a code to unlock a benefit[] in a game.' This abstract concept is not unlike the rules for any number of long-extant promotions, lotteries, or games, or other efforts to entice people to try a product or service."

Inventor Holdings, LLC v. Gameloft, Inc., 1-14-cv-01067 (DED September 30, 2015, Order) (Stark, J.)

Monday, October 5, 2015

Delay Filing IPR Petition Weighs Against Litigation Stay

The court denied defendants' motion to stay two of plaintiff's actions pending fourteen inter partes review and reexamination proceedings, eleven of which were initiated by third parties, and found that the undue prejudice to plaintiff weighed slightly against a stay. "Significant delay is a consideration here, because many of the inter partes review proceedings were not filed until almost a full year after Plaintiff filed its complaint in this case. . . . If a defendant desires a stay, it should endeavor to minimize prejudice to a plaintiff, by diligently conducting a prior art search, and then drafting and filing an inter partes review petition if it desires to do so. . . . [A defendant] filed its inter partes review petition on the one-year statutory deadline. Staying this case until completion of the inter partes review proceedings would mean that this case would likely not get started for at least two-and-a-half years after the filing of the complaint. Such a pace would not be appropriate for the prompt dispatch of judicial business. . . . While the absence of competition between the parties weighs against a finding of prejudice, that aspect is outweighed by possible harm from the slow pace to resolution that a stay would produce."

Signal IP, Inc. v. Ford Motor Company, 2-14-cv-13729 (MIED September 30, 2015, Order) (Goldsmith, J.)

Friday, October 2, 2015

Fee Award Recommendation Returned to Magistrate Judge for Additional Findings

Following plaintiffs' objections to the magistrate judge's order recommending that defendants' motion for attorney fees under 35 U.S.C. § 285 be partially granted, the district judge returned the motion to the magistrate judge with further instructions. "[The magistrate judge] recommended that the Court grant Defendants a portion of the $1,768,920.88 they sought by their Motion, with the specific amount to be determined after submission of further evidence. . . . Despite the thoroughness of [the magistrate judge's] analysis, the Report does not expressly state a conclusion on three important points. First, are attorney fees warranted here because certain of Plaintiff's litigation conduct is conduct that the Court should be trying to deter? Second, are attorney fees warranted here because Defendants are deserving of compensation? Third, and most importantly, in light of the 'totality of the circumstances,' after giving appropriate weight to all of the pertinent factors, is this case as a whole 'exceptional' under § 285 in light of the specific instances of behavior deemed to be objectively unreasonable or otherwise improper? In this case, the Court would benefit from having [the magistrate judge] address these issues. She handled the vast majority of this litigation. She is in the best position to explain whether (and, if so, how much) Plaintiffs should have to pay Defendants based on two identified missteps over the course of eight-plus years of litigation, in light of the totality of the circumstances of the case as a whole."

Magnetar Technologies Corp, et al v. Six Flags Theme Park Inc., et al, 1-07-cv-00127 (DED September 30, 2015, Order) (Stark, J.)