Friday, September 19, 2014

District Court’s and BPAI’s Pre-Alice Determinations of §101 Patentability Unpersuasive in CBM Review

In a finding that the challenged patent was directed to unpatentable subject matter, the Board rejected the patent owner's arguments that the patent had been previously reviewed in other venues where it was not found to be unpatentable. "We also are not persuaded by Patent Owner’s argument that the claims have been reviewed previously by the Board of Patent Appeals and Interferences, as well as a district court, and have been found to cover patent-eligible subject matter. The decisions cited by Patent Owner issued prior to the Supreme Court’s holding in [Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014)] and thus, lacked the benefit of authoritative guidance regarding the framework for analyzing § 101 eligible subject matter that was provided by the Court in Alice."

Petition for Covered Business Method Patent Review by Salesforce.com, Inc., CBM2013-00024 (PTAB September 16, 2014, Order) (Braden, APJ)

Thursday, September 18, 2014

Design Patent Maximizing Diamond Refraction Not Invalid for Claiming Functional Design

The court denied plaintiff's motion for summary judgment that defendant's diamond design patent was invalid for depicting a functional design. "Admittedly, [the inventor] sometimes described the design of the [patent] in language that superficially might suggest a functional design. He admitted that his design 'performed the best' and stated that he used a light box to test various arrangements in search of the 'best refraction.' But these statements do not change the fact that the ultimate purpose of the [patented] design is to have a pleasing appearance — a quintessentially ornamental purpose. Simply because an inventor experiments with alternative designs or uses rudimentary tools and tests does not mean the resulting design is functional."

Prestige Jewelry International, Inc. v. Wing Yee Gems & Jewelery Limited, et al, 1-11-cv-02930 (NYSD September 15, 2014, Order) (Preska, J.)

Wednesday, September 17, 2014

Circumstantial Evidence of Direct Infringement Sufficient to Support Indirect Infringement Claim

The court denied plaintiff's renewed motion for judgment as a matter of law of noninfringement of defendant's network patent where defendant had no direct evidence of customer use of the infringing features in the U.S. "Even though [defendant] offered no direct evidence of customer use inside the United States, its circumstantial evidence is just barely sufficient to convince the Court not to disturb the jury's verdict. . . . [Plaintiff] is a billion dollar company with extensive sales. . . . [Defendant] has offered evidence of [plaintiff's] high sales volume, an instruction manual describing how to activate SDR-A, and several blog entries on [plaintiff's] U.S. support forum from people who used [plaintiff's] devices with SDR-A enabled. Taken together, this circumstantial evidence is sufficient to permit a jury to reasonably conclude 'that, sometime during the relevant period [], more likely than not one person somewhere in the United States had performed the claimed method using the [plaintiff's] products.'"

Riverbed Technology Inc. v. Silver Peak Systems Inc., 1-11-cv-00484 (DED September 12, 2014, Order) (Andrews, J.)

Tuesday, September 16, 2014

Frivolous Infringement Claim Warrants Rule 11 Sanction

The court granted in part defendants' motion for Rule 11 sanctions after the court found a clear prosecution disclaimer. "I do not lightly use the word 'frivolous.' In my opinion, however, no reasonable attorney or judge could conclude that the argument that there was no disclaimer of claim scope was anything but frivolous. . . . At any later time, with the issue having been disclosed in the Rule 11 motion, any reasonable counsel must have recognized the equivalent of a railroad crossing with the loud sound of a nearby train whistle. . . . The Plaintiffs attorneys' continued insistence to litigate this matter, even after being apprised by the Defendants that the accused products could not possibly infringe, further highlights that the Plaintiff's attorneys simply turned a blind eye to the actual vehicles that they were accusing of infringement. . . . [D]espite Plaintiffs current pro hac vice attorneys arguing that they should have had a clean slate from the time that they noticed the Court of their appearance, before they ever took the case, [four attorneys] had an obligation to review their client's file. Here, this would include the letters sent by the Defendants and the owner's manuals."

Vehicle Operation Technologies LLC v. BMW of North America, LLC, 1-13-cv-00538 (DED September 12, 2014, Order) (Andrews, J.)

Monday, September 15, 2014

IPR Petitioner’s Business Model to Circumvent 35 U.S.C. § 315(b) Time Bar No Basis for Terminating Sanctions

During a conference call, the Board denied the patent owner's request to file a motion for sanctions terminating the proceedings. "Patent Owner argues that [a motion for sanctions pursuant to 37 C.F.R. § 42.12(a)] is warranted because the purpose of the Petitioner’s business model is to circumvent the statutory bar created by 35 U.S.C. § 315(b) and the efficiencies created by estoppel. Furthermore, Patent Owner argues that allowing the Petitioner to proceed with its petition amounts to harassment against the Patent Owner. . . . [W]e determine that Patent Owner has presented an insufficient basis for its request for authorization to file a motion for sanctions because Patent Owner fails to cite any conduct by Petitioner that constitutes misconduct as delineated in 37 C.F.R. § 42.12(a). Accordingly, Patent Owner’s request for authorization to file a motion for sanctions is denied."

Petition for Inter Partes Review by Iron Dome LLC, IPR2014-00674 (PTAB September 10, 2014, Order) (Ward, APJ)

Friday, September 12, 2014

Motion for Attorneys’ Fees for Unsuccessful Motion for Attorneys’ Fees Denied

The court denied plaintiff's motion for attorneys' fees under Rule 11 and 28 U.S.C. § 1927 against defendants and their counsel for defendants' unsuccessful motion for fees under 35 U.S.C. § 285, 28 U.S.C. § 1927, and the Court’s inherent power. "[Plaintiff's] decision to seek fees, given its own questionable conduct both before this Court and in California, is unfortunate. . . . To continue to litigate a matter which is so clearly dead is frustrating to the judicial process. . . . '[G]iven the high stakes often involved in patent litigation, parties and their counsel often pull out all of the stops in pursuit of an edge.' It’s time for these tactics to stop and for each side to take its ball and go home."

Oplus Technologies, Ltd. v. Sears Holdings Corporation, et al, 1-11-cv-08539 (ILND September 10, 2014, Order) (Dow, J.)

Thursday, September 11, 2014

Expert’s Calculation of Lost Profits as Part of Reasonable Royalty Analysis Does Not Result in Double Recovery

Following a jury verdict of $105 million, the court denied defendant's motion for remittitur. "[Defendant] argues that [plaintiff's expert's] royalty calculation resulted in an impermissible double recovery, by allowing the jury to award lost profits and a royalty for the same infringing conduct. . . . [T]he Court disagrees. Although at certain points in [his] testimony it might appear that he merely calculated actual lost profits and then added a royalty to that figure, at other points he clarifies that his calculations represent the parties’ predictions of events in the marketplace that were reasonably foreseeable at the time of the hypothetical negotiation. While [plaintiff's expert] did, as noted, look at actual sales figures from subsequent years, he explained that his opinion as to a reasonable royalty was based on losses the parties reasonably would have anticipated in light of information available to them at the time of the negotiation, as confirmed by subsequent events."

Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al, 3-09-cv-05235 (CAND September 9, 2014, Order) (Chesney, J.)