Wednesday, May 25, 2016

Patents Directed to Categorizing Summarized Information Not Invalid Under 35 U.S.C. § 101

The magistrate judge recommended denying defendant's motion to dismiss the asserted claims of plaintiff’s patents for categorizing summarized information for lack of patentable subject matter because defendant failed to establish that the claims were directed toward an abstract idea. "The Court agrees with [defendant] . . . that businesses have used past transaction information to predict future transactions or for business purposes long before the [patents] existed. Those ideas, or close variations of them, have been found to amount to abstract ideas. The key question as to step one, however, is whether [defendant's] asserted abstract idea encompasses the 'basic character' of the claimed inventions. The Court concludes that it does not. . . . What the [patents] claim to add is not simply the idea of summarizing past transaction information for some future predictive purpose or for a business purpose (as [defendant's] proffered abstract ideas suggest), but rather the added value of having a categorization system that grows and improves in its ability to do its job, based on the consistent incorporation of new information. . . . The specifications . . . go on to identify the 'key ingredient' of the claimed system in this regard: 'an ability to grow and improve the network categorization system.'. . . . [Defendant's] proffered 19th century example of the asserted abstract idea does not appear to speak to how the catalog service would periodically amend their predicting or forecasting processes based on updated information -- the asserted improvement that is called out by the patent specifications and referenced in the claims."

Yodlee Inc. v. Plaid Technologies Inc., 1-14-cv-01445 (DED May 23, 2016, Order) (Burke, M.J.)

Tuesday, May 24, 2016

Facebook Activities Unrelated to Infringement Claims Insufficient to Exercise Personal Jurisdiction

The court granted defendants' motion to dismiss plaintiff's infringement action for lack of personal jurisdiction. Although defendants' Facebook activities were purposefully directed at the forum, those activities were not directly related to plaintiff's claims. "The Federal Circuit has not expressly addressed what Facebook activities might constitute purposeful direction in the personal jurisdiction context. However, it seems apparent that friending a Nebraska resident and inviting a Nebraska resident to like a business page are both activities that are purposefully directed at Nebraska. . . . [B]y posting advertisements for [the company defendant's] products on his personal Facebook profile after friending Nebraska residents, [the owner defendant] has purposefully directed activities toward Nebraska. . . . [T]he actions of friending Nebraska residents and inviting a Nebraska resident to like the [the company defendant's Facebook] business page clearly do not give rise to the patent infringement claims. These activities do not, by themselves, constitute making, using, offering to sell, or selling patented inventions. . . . [The owner defendant's] posts on his personal Facebook profile do not constitute offer to sell under the meaning of § 271. Next, although the plaintiff asserts that [the owner defendant] provided instructions on his Facebook profile for how to operate and install the [accused] product, none of the evidence the plaintiff cites appears to support that particular assertion. Accordingly, the plaintiff's claims for indirect infringement do not arise from or directly relate to the activities the defendants purposefully directed toward Nebraska."

HVLPO2, LLC v. Oxygen Frog, LLC et al, 8-15-cv-00176 (NED May 20, 2016, Order) (Gerrard, J.)

Monday, May 23, 2016

NPE Plaintiff Utilizing In-House Litigation Counsel Must Agree to Prosecution Bar and Covenant Not to Sue on After-Acquired Patents

In response to the parties' dispute concerning the scope of a protective order governing confidential information, the court ordered the parties to submit a revised order imposing a prosecution bar on plaintiff's in-house litigation attorneys and granting defendants a covenant not to sue on plaintiff's after-acquired patents in the lighting industry. "[Plaintiff] describes its business as 'a new model for individual inventors and small companies to monetize their intellectual property.' . . . '[Plaintiff] achieves this goal by acquiring patents and litigating on behalf of itself, using experienced patent litigators that are directly employed by [plaintiff] instead of outside counsel, at a great cost savings.' . . . '[Plaintiff's] argument that its principals are not competitive decisionmakers because it is not a direct competitor of any Defendants rings hollow. . . . Given these three . . . lawyers' roles as competitive decisionmakers, I think there is a concrete, particularized risk of inadvertent disclosure and misuse here. . . . I think that a prosecution bar and covenant not to sue these Defendants on after-acquired patents in the lighting industry would adequately protect Defendants' interests while allowing [Plaintiff] to prosecute these actions with its in-house lawyers. . . . Because [plaintiff] purposefully diversifies its patent portfolio and does not target any particular industry or technology by design, temporary limitations on its patent assertion activities against these Defendants should not be unnecessarily harmful to its business."

Blackbird Tech LLC d/b/a Blackbird Technologies v. Service Lighting and Electrical Supplies, Inc. d/b/a et al, 1-15-cv-00053 (DED May 18, 2016, Order) (Andrews, J.)

Friday, May 20, 2016

Threadbare Allegation of Induced Infringement Insufficient to Survive Motion to Dismiss

The court granted defendant's motion to dismiss plaintiff's ANDA induced infringement claim for failure to state a claim based on defendant's marketing and sales. "To survive a motion to dismiss, [plaintiff] is charged with providing adequate factual allegations that set forth a plausible claim for relief such that there is a reasonable expectation that discovery will uncover relevant evidence. Despite the marketing of [the accused drug] for at least ten months, [plaintiff] offers no such allegations. . . . [T]elling a patient that thirty capsules may last a year in no way constitutes '[e]vidence of active steps taken to encourage direct infringement.' Moreover, a threadbare allegation stating that [the accused drug] can be used for acute gout flares is not the same as stating [it] should be used, explaining how to do so in an infringing manner, and establishing that patients have followed those instructions."

Takeda Pharmaceuticals USA, Inc. v. West-Ward Pharmaceutical Corp. et al, 1-14-cv-01268 (DED May 18, 2016, Order) (Robinson, J.)

Thursday, May 19, 2016

Remote Terminal Operation Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s remote terminal operation patent encompassed unpatentable subject matter because it "would pre-empt substantially all uses of the underlying ideas at issue." "The [patent-in-suit] 'relates to a method and system for allowing a user of a terminal device to remotely operate upgraded and/or advanced applications without the need for upgrading the client side application or computational resource.' . . . [T]he disclosures of the [patent] are at the macro-level, that is, the patented method uses computerized devices (of any type) in conventional ways (installation of applications, data exchange, and data processing) without delineating any particular way of putting the ideas into practice. . . . [A] distinction must be drawn between claims that seek to pre-empt the use of an abstract idea, and claims that seek only to foreclose others from using a particular application of that idea. Here, it appears that the [patent] pre-empts virtually all possible ways of performing the claimed method because the very steps of the method comprise nothing more specific than the underlying idea itself. In other words, 'the claim's tie to a digital computer [does] not reduce the pre-emptive footprint of the claim since all uses of the [idea are] still covered by the claim.'"

Device Enhancement LLC v. Inc., 1-15-cv-00762 (DED May 17, 2016, Order) (Robinson, J.)

Wednesday, May 18, 2016

Court Need Not Consider Expert Evidence in Deciding § 101 Challenge at the Pleading Stage

The court overruled plaintiff's objection to the magistrate judge's recommendation to grant defendant's motion to dismiss for lack of patentable subject matter and rejected plaintiff's argument that the magistrate should have converted the motion to one of summary judgment. "Plaintiff objects to the fact that the Magistrate Judge declined to consider the declarations of [its expert], which Plaintiff submitted along with its responsive briefing. Plaintiff maintains the Magistrate Judge 'assumed facts outside the pleadings' about the capabilities of the claimed devices that are 'in stark contrast' to [the expert's] declarations, for example by 'reaching the conclusion that the claimed invention amounts to "two computers communicating over a network."' . . . The Magistrate Judge’s finding here is not only fully supported by the plain language of the [patent-in-suit’s] claims, but also wholly consistent with Plaintiff’s own description of the claimed invention. . . . A court ordinarily does not look beyond the pleadings in ruling on a 12(b)(6) motion. In particular, when patent claims on their face are plainly directed to an abstract idea, a court may properly assess patent-eligibility under §101 at the pleading stage."

Rothschild Location Technologies LLC v. Geotab USA, Inc., 6-15-cv-00682 (TXED May 16, 2016, Order) (Schroeder, J.)

Tuesday, May 17, 2016

Battery Gauge Patent Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s infusion pump battery gauge patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "[Defendant] first argues that the [patent-in-suit] is directed to the unpatentable abstract idea of calculating the remaining time of charge on a battery, based on well-known voltage and current measurements. . . . [Defendant] identifies no precedent entitling a court to limit its Section 101 analysis to 'novel' features while ignoring the tangible components of a claimed patent. . . . Viewing the [patent] as a whole, the Court finds that its claims are not directed to abstract ideas. The claims of the [patent] are directed to a concrete, tangible instrument that utilizes a sampling detection technique, measuring battery voltage and current drain, to determine the time of remaining battery life and to issue applicable alert messages. . . . The use of a microprocessor, moreover, to calculate 'the amount of time left under battery power,' does not itself render the [patent] an abstract idea, particularly where [defendant] points to no evidence that the human mind could perform such calculation entirely on its own."

Baxter International, Inc. v. CareFusion Corporation et al, 1-15-cv-09986 (ILND May 13, 2016, Order) (St. Eve, J.)