Tuesday, August 22, 2017

Biometric Identification Patent Invalid Under 35 U.S.C. § 101

​ The court granted defendants' motion to dismiss because the asserted claims of plaintiffs’ biometric identification patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[H]umans have long compared images of faces they have seen previously (an old-fashioned registration template) to faces they encounter in the world to determine or confirm an individual’s identity. . . . Plaintiffs argue that the [patent] 'focus[es] on a specific means or method that improves the relevant technology of a global biometric authentication system.' But neither the template receiver nor the verifier has any relation to the creation of a template; the plain language of claim 1 states that the system components only receive and compare the templates. . . . Nor does the patent discuss how the templates are compared. And even though part of the system operates remotely, that does not evidence a nonabstract concept."

IQS US Inc. et al v. Calsoft Labs Incorporated et al, 1-16-cv-07774 (ILND August 18, 2017, Order) (Lefkow, USDJ)

Monday, August 21, 2017

Waiver of Objection to Personal Jurisdiction Does Not Establish Residency for Purposes of Venue​

The court granted defendant's motion to dismiss plaintiff's patent infringement action for improper venue and rejected the argument that defendant's failure to object to personal jurisdiction established residency for purposes of venue. "[Plaintiff] agues [defendant] failed to object to personal jurisdiction and accordingly is deemed to 'reside' here for purposes of venue. In support of this argument, [plaintiff] cites several cases in which courts have denied a motion to dismiss for improper venue when the defendant waived its objection to personal jurisdiction. The reasoning in these cases is that 'not challenging personal jurisdiction in a motion to dismiss challenging venue concedes personal jurisdiction, which in turn establishes venue.' This argument fails. A defendant’s waiver of personal jurisdiction can only 'establish' venue if venue is proper everywhere the defendant is subject to personal jurisdiction."

The Procter & Gamble Company v. Ranir, LLC, 1-17-cv-00185 (OHSD August 17, 2017, Order) (Black, USDJ)

Objection to Venue Under § 1391(c) Does Not Preserve Objection to Venue Under § 1400(b)​

The magistrate judge recommended denying defendant's motion to dismiss or transfer for improper venue because defendant waived that defense by limiting its venue challenge in its answer to its personal jurisdiction challenge. "[Defendant] did not generally deny that venue is proper. Instead, [Defendant] specifically denied venue is proper 'for the reasons set forth in the Complaint' -- namely, that [its] acts of infringement subject it to personal jurisdiction in this District. In other words, [defendant's] objection was based solely on the argument this District does not have personal jurisdiction over [defendant] because it does not infringe, and [defendant] admits as much. This Court has already concluded a defendant’s acknowledgement of the applicability of [28 U.S.C. § 1391(c)], without more, results in waiver. . . . [Defendant] conceded the applicability of § 1391(c) while omitting from its Answer an objection to venue because it had no 'regular and established place of business' in this District. That waives any such objection."

MyMail, Ltd. v. Yahoo!, Inc., 2-16-cv-01000 (TXED August 17, 2017, Order) (Payne, MJ)

Friday, August 18, 2017

Wireless Messaging Patent Not Invalid Under 35 U.S.C. § 101​

Following a jury trial, the court denied defendant's renewed motion for judgment as a matter of law on the ground that plaintiff’s messaging patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The Court concludes that the asserted claims in the [patent] are not directed to an abstract idea, but that they instead implement a specific improvement in cellular networking. . . . [At trial, plaintiff's expert] testified that [the manual process of call switching] formerly performed by the switchboard operator 'is now being done by computers.'. . . [The expert's] testimony at trial was merely an analogy to assist the jury in understanding a complex process. It does not disturb the Court’s previous conclusion that the [patent] 'can only be performed on a computer.'. . . [T]he claims of the [patent] 'set out a method for achieving a specific goal -- obtaining information about a wireless terminal with a dynamic network address -- by applying the abstract idea of matching identifiers to retrieve information in the cellular network.' [Recent Federal Circuit decisions] do not affect that ruling."

Comcast Cable Communications, LLC et al. v. Sprint Communications Company LP et al, 2-12-cv-00859 (PAED August 16, 2017, Order) (Dubois, SJ)

Thursday, August 17, 2017

Failure to Provide Examiner With Copy of PTAB Decision Does Not Establish Inequitable Conduct​

The magistrate judge recommended granting plaintiffs' motion for summary judgment that their patents were not unenforceable for inequitable conduct or unclean hands because the failure to submit a copy of a disclosed PGR institution decision was not material. "Defendants’ position practically assumes there is some requirement to submit relevant PTAB decisions to the Examiner during prosecution. But Defendants do not cite any authority for this kind of requirement. Regardless, knowing that the Examiner was indeed aware of the decision, Defendants’ position assumes that Examiner is somehow incapable of finding the PTAB’s PGR Institution Decision on his own (otherwise the patentee’s duty of candor would have been discharged by informing the Examiner). . . . It would be difficult to understand how the USPTO could not obtain the necessary publicly available documents from its own administrative agency when needed."

Tinnus Enterprises, LLC et al v. Telebrands Corporation, 6-16-cv-00033 (TXED August 15, 2017, Order) (Love, MJ)

Wednesday, August 16, 2017

TC Heartland Applies to Unincorporated Associations, Such as LLCs​

The court transferred plaintiff's patent infringement action for improper venue and rejected plaintiff's argument that TC Heartland did not apply to limited liability companies like defendant. "The Supreme Court explicitly limited its analysis in [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017)]: 'we confine our analysis to the proper venue for corporations' and reserved the applicability of its holding to unincorporated entities. . . . Unincorporated associations, such as limited liability companies, are generally treated like corporations for purposes of venue, whereby the 'residence' is the association’s principle place of business. Now that the Supreme Court has reinforced that 'residence' for corporate defendants in a patent infringement case is limited to the state of incorporation, [plaintiff] is hard-pressed to present a reason why unincorporated associations should be treated differently."

Maxchief Investments Limited v. Plastic Development Group, LLC (TWP2), 3-16-cv-00063 (TNED August 14, 2017, Order) (Phillips, USDJ)

Court-Appointed Expert Required to Determine Scope of IPR Estoppel​

The court ordered the parties to choose an expert to help determine whether defendant reasonably could have raised certain prior art in its petition for inter partes review. "In its [prior] opinion, the Court did not resolve whether [defendant] reasonably could have raised three prior art references in its IPR petition. The Court orders the parties to confer and choose an agreed, independent, court-appointed expert to offer an opinion on whether a skilled searcher conducting a diligent search reasonably would have discovered these references. The parties will split the cost of the expert evenly."

Oil-Dri Corporation of America v. Nestle Purina Petcare Company, 1-15-cv-01067 (ILND August 14, 2017, Order) (St. Eve, USDJ)