Friday, September 30, 2016

Remote Access Software Patent Not Ineligible Under 35 U.S.C. § 101 at Pleading Stage​

The court rejected the special master's recommendation to dismiss plaintiff's infringement action under 35 U.S.C. § 101 because the asserted claims of plaintiff’s patent for remotely accessing and controlling an application over a network did not encompass unpatentable subject matter because the claims contained an inventive concept. "[T]he Court agrees with Plaintiff that — at least in this procedural posture — its patent can survive § 101. Taking the facts most favorable to Plaintiff, the patent describes a system and method which overcomes a flaw in existing technology — the inability to remotely install software on-demand without pre-installation. . . . In other words, the [patent] is a technological advance that improves the remote control field. . . . The Court is concerned that finding otherwise would convert this motion into a novelty or obviousness analysis under §§ 102 and 103. . . . The Court recognizes that the distinction between determining whether the current invention improves an existing technological process and whether it is otherwise found in or made obvious by the prior art can be a challenging distinction. But the Court finds that here — at least when construing the facts as it is required to on a motion to dismiss — the [patent] improves remote access software in that it does not require pre-installation of software and can be completed on demand. Such a system and method solved a problem in the technology itself and thus is an inventive concept."

Tridia Corporation vs. Sauce Labs, Inc., 1-15-cv-02284 (GAND September 28, 2016, Order) (May, USDJ)

Thursday, September 29, 2016

Partial Final Judgment Entered as to Invalidity of Remicade Patent​

The court granted defendant's motion for judgment under Rule 54(b) that one of plaintiffs' chronic pain drug patents was invalid due to obviousness-type double patenting and found that the public interest weighed in favor of an immediate appeal. "[T]he risk of being required to pay [plaintiff] for its lost profits if the [invalidated] patent is valid and infringed could delay the sale of [defendant's drug product] in the United States. If so, [plaintiff] would continue to have a monopoly generating more than $4 billion a year based on a patent this court has found to be invalid. . . . More significantly, uncertainty concerning whether [defendant] may be enjoined from selling [defendant's drug product] in the future could discourage doctors from prescribing it. Most importantly, the public interest in making [defendant's drug product] available to doctors and their patients if it does not infringe a valid patent will be served by an immediate appeal. . . . [Plaintiff's drug product] can cost up to $20,000 per patient per year. . . . A less expensive biosimilar alternative to compete fairly with [plaintiff's drug product] would be in the public interest."

Janssen Biotech, Inc. et al v. Celltrion Healthcare Co., Ltd. et al, 1-15-cv-10698 (MAD September 26, 2016, Order) (Wolf, USDJ)

Wednesday, September 28, 2016

Counsel's Prior Substantial Representation of Manufacturer Does Not Justify Disqualification in Lawsuit Against Manufacturer’s Customers​

The court denied a nonparty manufacturer's motion to disqualify plaintiff's counsel in a case against the manufacturer's customers even though the law firm had previously served as the manufacturer's prosecution and litigation counsel and the representations were substantially related. "'[Plaintiff's counsel] handled a wide range of matters for [the manufacturer], including major litigations, patent prosecution matters, strategic portfolio counseling, patent harvesting, due diligence for portfolio acquisition, competitive analysis, and behind-the-scenes offensive and defensive litigation case support.' [The law firm] was involved in prosecuting thousands of [the manufacturer's] U.S. and foreign patents, including hundreds of [the manufacturer's] U.S. patents relating to digital subscriber line ('DSL') and MoCA technologies. . . . [The firm] handled patents covering technology which relates to some of the DSL chips at issue in these cases . . . . I recognize that [counsel's] relationship with [the manufacturer] was long in its duration and wide in its breadth. Although that representation was substantial, generally speaking, it did not touch the subject matter of these cases to any great extent. . . . [The manufacturer] has shown that confidential information acquired by [the law firm] may be of some relevance to this action. [The manufacturer] has not, however, shown that [the firm] has acquired confidential information of such pertinence that [the firm's] continued representation of [plaintiff] would unfairly harm [the manufacturer]. . . . These cases are, to put it mildly, complex. [Plaintiff] accuses hundreds of products of infringing up to thirty-two patents covering DSL technology. If [plaintiff's law firm] were disqualified, [plaintiff] would be prejudiced beyond mere inconvenience. Replacing [plaintiff's firm] and getting new counsel up to speed, would come at a substantial cost-in terms of both time and money. . . . Additionally, and not insignificantly, [plaintiff] did not sue [the manufacturer]."

TQ Delta, LLC v. Pace Americas, LLC et al, 1-13-cv-01835 (DED September 26, 2016, Order) (Andrews, USDJ)

Tuesday, September 27, 2016

Protective Order’s Special Handling Requirement for Confidential Information Not "Mere Boilerplate"

The court referred to the magistrate judge defendant's motion for an order of contempt for plaintiff's disclosure of defendant's highly confidential information in open court. "By long tradition, when a lawyer wishes to reveal in open court information whose disclosure is restricted by a protective order, the lawyer must first explain the restriction to the judge and (i) ask to seal the courtroom and transcript or (ii) hand up a copy of the restricted information to the judge. . . .The special handling required by protective orders is not mere boilerplate as respondents argue. The special handling is the quid pro quo for gaining access to sensitive information. Those who need to maintain their information in privacy will resist even court orders to allow discovery if the lawyers who want access can brush off the special handling as boilerplate. . . . All that remains is the desire by movant to be reimbursed for expenses of an earlier motion to seal. To get there, movants want a finding of contempt of court. That seems heavy handed, perhaps even vindictive, when all that remains at stake is a few dollars in an ocean of money spent on this case. Everyone involved is hereby referred to [the magistrate judge] . . . to settle the balance of this motion, failing which the Court will resolve it."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND September 23, 2016, Order) (Alsup, USDJ)

Monday, September 26, 2016

PTAB’s Finding of No Corresponding Structure Does Not Alter Court’s Earlier Finding of No Indefiniteness

​ The court granted plaintiff's cross-motion for summary judgment that its electromagnetic radiation testing patent was not invalid because the PTAB's findings during inter partes review did not provide a basis for the court to reconsider its claim construction. "Before the PTAB, the parties made the same arguments they make here. . . . [T]he PTAB . . . found that the [patent-in-suit's] Specification itself failed to 'clearly associate the combination of separate structures disclosed in Figures 1 and 2 as corresponding to the claimed dual functions.' . . . Importantly, and because its authorizing statute limits inter partes review to patentability determinations, the PTAB expressly disclaimed any indefiniteness analysis. . . . At bottom, and regardless of whether the analysis is framed in patentability or indefiniteness terms, the PTAB and this Court simply disagree that the [patent-in-suit] fails to 'clearly associate' the structures in Figures 1 and 2 with the 'both' pivot function. And because neither binding precedent, the parties’ arguments before this Court, nor the analytical heft of the PTAB decision demand that this Court reverse course, its prior indefiniteness finding stands. . . . The Court accordingly disagrees with the PTAB and [defendant]. Claim 12, as the Court previously found, clearly links its functions with corresponding structure. It therefore is sufficiently definite."

Microwave Vision, SA et al v. ESCO Technologies, Inc. et al, 1-14-cv-01153 (GAND September 20, 2016, Order) (Jones, USDJ)

Friday, September 23, 2016

Location Information Management Patents Not Ineligible Under 35 U.S.C. § 101​

The magistrate judge recommended denying defendants' motion for judgment on the pleadings on the ground that plaintiff’s location information management patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "Defendants contend that all asserted claims of all asserted patents embody an abstract idea — 'managing the dissemination of location and/or event information within a community. At most, they recite different ways of organizing people into groups and managing the dissemination of location/event information through use of conventional computer and GPS technology.' . . . [I]t is improper to 'simply ask whether the claims involve a patent-ineligible concept.' To be sure, 'mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.' But this is not a license to delete all computer-related limitations from a claim and thereby declare it abstract. . . . Moreover, the mere fact that all the recited computer components are 'conventional' because the applicant did not invent an entirely new kind of computer is not inherently troubling. . . . [C]laim 6 recites a specialized procedure for accomplishing this result by using four different access codes, an administrator, users, location information, zones, and a variety of other features all working together in a particular fashion. Defendants cannot argue that there is a danger of claim 6 'tying up the future use' of the concept of location information management and dissemination."

PerdiemCo, LLC. v. IndusTrack LLC, 2-15-cv-00727 (TXED September 21, 2016, Order) (Payne, MJ)

Thursday, September 22, 2016

Willfulness Expert Excluded as Unhelpful to Jury​

The court granted plaintiff's motion to exclude the testimony of defendants' expert regarding willfulness as unhelpful. "[The expert's] testimony on willfulness is not helpful to the jury, as it does not concern a matter beyond the understanding of the average person. There is no reason why the finder of fact could not evaluate any evidence and decide whether Defendants’ conduct was 'willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or ̶ indeed ̶ characteristic of a pirate.' Because [the expert's] opinion on whether Defendants’ conduct was willful would not assist the trier of fact, it is not relevant. Further, there is no reason to believe that [the expert] has any particular qualifications above and beyond that of a layperson to determine the state of mind of another. . . . Whether or not [defendants'] actions constituted willful infringement and what weight should be given to outside counsel’s opinions on infringement is the province of the fact finder."

Loggerhead Tools, LLC v. Sears Holdings Corporation et al, 1-12-cv-09033 (ILND September 20, 2016, Order) (Darrah, USDJ)