Wednesday, June 29, 2016

Unified Patents Members Not Real Parties-in-Interest

In the decision granting inter partes review, the Board rejected the patent owner's arguments that institution should be denied for failure to identify all real parties-in-interest. "The mere fact that members provide payment to [the petitioner] for a subscription to [the petitioner's] services is insufficient to show that these members are funding this particular inter partes review. The evidence does not show an obligation on [the petitioner's] part to file inter partes review proceedings on behalf of any member in return for payment, nor does it show that [the petitioner's] members have any control over when and how [the petitioner] spends the revenue received from its members. Instead, the evidence shows that [the petitioner] makes all decisions regarding any inter partes review proceeding without input from its members, and that [the petitioner] alone bears all costs of any such proceeding."

Petition for Inter Partes Review by Unified Patents Inc., IPR2016-00364 (PTAB June 27, 2016, Order) (Meyer Chagnon, APJ)

Tuesday, June 28, 2016

Newly Assigned District Judge Orders Reconsideration of Prior Order Invalidating Patents-in-Suit Under 35 U.S.C. § 101

The newly assigned district judge sua sponte moved to reconsider the previous district judge's summary judgment ruling that plaintiffs' marketing analysis patents were invalid for lack of patentable subject matter under 35 U.S.C. § 101. "This Court has reviewed the [prior] patent decision and believes that it is in the interests of justice to reconsider that ruling. The Court believes that the district court may have misapprehended the patents; this Court has not reached a final resolution as to whether that requires reversal. . . . This Court does not believe additional briefing is necessary to such reconsideration but will nonetheless allow the parties to be heard on the substance of vacatur (the Court does not need briefing on the subject of its discretionary authority to sua sponte revisit prior decisions in a pending case)."

TNS Media Research, LLC, et. al. v. TRA Global, Inc., 1-11-cv-04039 (NYSD June 24, 2016, Order) (Forrest, J.)

Monday, June 27, 2016

In Complex Cases, Section 285 Attorney Fees May be Awarded After Each Phase of Litigation

Following a consent judgment, the court granted defendants' motion for attorney fees under 35 U.S.C. § 285 in the first phase of the parties' litigation and rejected plaintiff's argument that an award of fees was premature. "Defendants’ position is more faithful to proper interpretation of Rule 54 and 35 U.S.C. § 285, and reflects the superior policy position with regard to shifting attorney’s fees in a complex, protracted patent case. . . . Phase I was a complete victory for the Defendants, and it concluded with a judgment . . . of noninfringement as to four patents. . . . [I]n complex patent litigation, determinations of prevailing party status during each 'phase' of litigation may be the only practical way to achieve the purposes inherent to making an exceptional case determination under 35 U.S.C. § 285. . . . Importantly, making a § 285 determination at the conclusion of a phase of litigation will, ideally, have the salutary effect of curbing exceptional conduct in future phases. In the absence of a rule permitting exceptional case determinations at the conclusion of a 'phase' of a case, a litigant with many patents and an exceptionally weak substantive litigating position could continually delay the conclusion of a case, thus frustrating the ability of the Court to enter a 35 U.S.C. § 285 determination and impose meaningful sanctions."

Kinglite Holdings Inc. v. Micro-Star International Co. Ltd. et al, 2-14-cv-03009 (CACD June 23, 2016, Order) (Selna, J.)

Friday, June 24, 2016

Halo Does Not Prohibit Jury Finding of Willfulness

The court denied defendant's motion for judgment as a matter of law that it did not willfully infringe plaintiff's capacitor patent and rejected defendant's argument that the jury finding of willful infringement was void under a recent Federal Circuit decision. "In [Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 14-1513, 579 U.S. __ (June 13, 2016)], the Supreme Court rejected the Federal Circuit’s two-part test from Seagate for determining when a district court may award enhanced damages as inconsistent with § 284. The Supreme Court explained that § 284 commits the award of enhanced damages to the discretion of the district court. . . . In the present case . . . [t]he jury . . . found by clear and convincing evidence that [defendant's] infringement of the [patent-in-suit] was willful. . . . [Defendant] is correct that in Halo, the Supreme Court held that the ultimate decision of whether to award enhanced damages and in what amount is committed to the sound discretion of the trial court. But there is no language in Halo holding that a finding as to whether the infringement was willful must be made by the Court. . . . [T]he Court properly permitted the jury to issue a finding as to whether [defendant's] infringement was willful and the jury’s finding as to this issue is not void."

Presidio Components, Inc. v. American Technical Ceramics Corp., 3-14-cv-02061 (CASD June 17, 2016, Order) (Huff, J.)

Thursday, June 23, 2016

Defend Trade Secrets Act of 2016

On May 11, 2016, President Obama signed into law a bill that amends the federal criminal code to create a private civil cause of action for trade secret misappropriation.

Under the new law, called the Defend Trade Secrets Act of 2016 (DTSA) a trade secret owner may file a civil action in a U.S. district court seeking relief for trade secret misappropriation related to a product or service in interstate or foreign commerce. The bill establishes remedies including injunctive relief, compensatory damages, and attorney's fees, and sets a three-year statute of limitation from the date of discovery of the misappropriation.

As of this writing, new DTSA claims have been filed in at least 15 federal cases. Docket Navigator is expanding its coverage to include several new practice areas, including DTSA. Unfortunately, PACER’s case classification categories do not yet include DTSA claims, so identifying cases asserting those claims presents a challenge. The process will be significantly improved once PACER creates a Nature of Suit flag for DTSA cases.

In the meantime, Docket Navigator has identified these 15 DTSA cases. (Click here to be taken to a list of cases.)

As we discover additional DTSA cases, they will be added to the list in real time. Docket Navigator subscribers can create an alert on the link above to be notified of new DTSA cases. In addition, subscribers may click on an individual case to be notified when new documents are filed in that case.

If you are aware of a DTSA case that does not appear in the list above, please contact us with the information.

Patent Claiming Method for Selecting Color for Digital Image Invalid Under 35 U.S.C. § 101

The court granted defendants' motion to dismiss because the asserted claims of plaintiff’s digital color selection patent encompassed unpatentable subject matter and found that the claims were directed toward a mathematical algorithm. "[The patent-in-suit] is directed to a method of selecting a color for a portion of a digital image by calculating and comparing various vectors within a specific region of space, known as a 'steradian.' . . . [Defendants] contend that the steps of claim 1 only explain how to calculate two vectors, calculate a steradian region, determine whether those vectors are located in that steradian region, compare the length of the vectors and then use that information to derive color information for the two vectors. . . . Plaintiff goes to great lengths to argue that '[s]pace is not abstract,' but is instead 'a region, and real object, we all exist in.' Plaintiff relies on the contentions that space 'exists literally' and that the computer calculations in claim 1 'bring[ ] a particular steradian . . . into existence' to support his assertion that claim 1 is directed to 'Real Objects' rather than to an abstract idea. The critical flaw with this argument, however, is that the [patent-in-suit] does not claim 'space.' Instead, it claims methods of calculating a region of space and comparing various calculations to choose a pixel color."

Coffelt, Jr. v. NVIDIA Corporation et al, 5-16-cv-00457 (CACD June 21, 2016, Order) (Otero, J.)

Wednesday, June 22, 2016

Defendants’ Unexplained Delay Filing IPRs Warrants Denial of Litigation Stay

The court denied defendants' motion to stay pending inter partes review and found that the undue prejudice to plaintiff resulting from defendants' delay in filing their petitions weighed against a stay. "Defendants did not file their IPRs expeditiously and are most likely seeking a stay to gain a tactical advantage over [plaintiff]. . . . Defendants filed three IPR petitions on . . . the last day of the '1 year' period under which Defendants were permitted to file IPRs. Defendants offer no reason for filing their IPRs on the last day. As [plaintiff] points out, Defendants identified relevant prior art at least six months before they filed their IPRs, when they served their infringement contentions . . . . Indeed, this case presents a good example of why filing IPRs near the end of the one-year period tends to prejudice the non-moving party. . . . [S]taying the case will delay a resolution on the merits and require [plaintiff] to warehouse discovery results that it diligently worked with third-parties for months to collect."

Parthenon Unified Memory Architecture LLC v. HTC Corporation et al, 2-14-cv-00690 (TXED June 17, 2016, Order) (Payne, M.J.)