Friday, July 31, 2015

Personal Computer Lottery Game Patent Likely Unpatentable Under 35 USC § 101

The Board granted institution of covered business method review of a personal computer lottery game patent under 35 U.S.C. § 101. "[T]he concept of a lottery is well known, whereas the steps attributed to the processor—generating an amusing game, controlling whether the player will win or lose, and communicating the outcome with a display—are analogous to actions performed by a carnival pitchman thrilling the crowd at a shell game booth, but all the while completely aware of the outcome of the purported game of chance. At this stage of the proceeding, we determine that Petitioner has established sufficiently for purposes of this decision that reproducing the experience as a computer simulation provides 'nothing significantly more' than applying an abstract idea on a generic computer system, which is not enough to transform an abstract idea into a patent-eligible invention."

Petition for Covered Business Method Patent Review by International Internet Technologies, LLC, CBM2015-00106 (PTAB July 29, 2015, Order) (Ward, APJ)

Thursday, July 30, 2015

Emergency Call Analysis Patent Invalid Under 35 USC § 101

The court granted defendant's motion to dismiss plaintiff's infringement claims because plaintiff's emergency call system patent was invalid for lack of patentable subject matter and found that the claims were directed toward an abstract idea. "[T]he Patent and its representative claims describe a computerized system of tracking and aggregating caller information. This is essentially the abstract idea of organizing phone call data. . . . [I]t is a longstanding practice, one that can be performed by a human, to take account of phone calls, where they might be coming from, and to use that data accordingly."

Boar's Head Corporation v. DirectApps, Inc. et al, 2-14-cv-01927 (CAED July 28, 2015, Order) (Mueller, J.)

Wednesday, July 29, 2015

Consent Judgment Precluding Future Infringement Does Not Preclude Subsequent Infringement Claim

The court deferred ruling on defendants' motion to dismiss plaintiff's infringement action based on a prior consent judgment and a parallel contempt proceeding. "In order to ensure an orderly and efficient resolution of the contempt proceeding and this patent infringement proceeding, this court finds it necessary for the parties to conduct discovery that addresses both the admitted violations of the Consent Judgment and any alleged patent infringement. . . . Defendants’ Motion to Dismiss in this case is based in large part on the preclusive effect of the Consent Judgment entered between [the parties] in [another] case. . . . This court does not find as a matter of law that the Consent Judgment requires dismissal of this patent infringement suit at this stage of these proceedings. . . . Defendants are correct that the Consent Judgment provides that 'Defendants and their affiliated companies shall not infringe U.S. Patent No. 5,618,945 . . . .' Thus, any infringement of the patent found in this case would also constitute a violation of the Consent Judgment entered in the previous case. However, this court does not find that this provision of the Consent Judgment makes it such that a motion for contempt is the only mechanism for prosecuting infringement of the patent by Defendants."

BASF Agro B.V., Arnhem (NL), Zurich Branch v. Makhteshim Agan of North America, Inc., et al, 1-13-cv-00422 (NCMD July 27, 2015, Order) (Osteen, J.)

Tuesday, July 28, 2015

Inconsistent CBM Institution Decision No Abuse of Discretion

The Board denied the patent owner's request for rehearing of the decision to institute CBM review and rejected the patent owner's argument that institution was improper because the Board previously determined the challenged patent was not a CBM patent. "The Decision acknowledges that Petitioner previously filed a petition for review of the ’464 patent, and that we denied institution because Petitioner did not demonstrate the ’464 patent is a covered business method patent. The Decision acknowledges that Patent Owner argued that the Petition raises substantially the same argument presented in the 84 Decision to Institute, but concludes that trial should be instituted nonetheless based on the totality of the circumstances. Patent Owner has failed to demonstrate this is an abuse of discretion."

Petition for Covered Business Method Patent Review by Motorola Mobility LLC, CBM2015-00004 (PTAB July 24, 2015, Order) (Kauffman, APJ)

Monday, July 27, 2015

PTAB’s Decision to Institute Inter Partes Review of Asserted Patent Excluded

The court granted plaintiff's motion in limine to preclude evidence of the PTAB's decision to institute inter partes review of the patent-in-suit. "[Defendant] opposes the motion, maintaining that the inter partes proceedings are part of the patent prosecution history and probative of the relevance of peritoneal dialysis art. For the [PTAB] to institute an inter partes review, the petitioner need only show 'a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.' By contrast, patents are presumed valid in litigation, and a party challenging a patent’s validity must prove invalidity by clear and convincing evidence. Further, after the PTAB instituted inter partes review upon the petition of a non-party to this litigation, that case settled and the IPR proceedings were dismissed. The parties never fully briefed the issues and the PTAB never rendered a decision. Under these circumstances, the institution of the IPR proceeding based on a different standard and concluded without decision on the merits has little probative value. Moreover, the evidence would be confusing to the jury and prejudicial to [plaintiff] without a time-consuming explanation of the PTAB procedures."

Ivera Medical Corporation et al v. Hospira, Inc., 3-14-cv-01345 (CASD July 21, 2015, Order) (Huff, J.)

Friday, July 24, 2015

Plaintiff’s Infringement Expert Disqualified Due to Prior Retention by Defendant

The court granted defendant's motion to disqualify plaintiff's infringement expert because of a conflict of interest based on the expert's past work for defendant in two prior ITC investigations involving the same accused products. "Both sides agree that Defendant had a confidential relationship with [the expert]. Both sides also agree that [the expert] obtained confidential information during that retention. . . . The real dispute centers around whether the prior work was relevant to the current case. On that point, the Court is heavily influenced by the fact that the parties agree that the same devices accused in this case were accused in the earlier matter. Furthermore, the time frames are nearly overlapping. . . . Plaintiff has not presented any statement from [the expert] explaining why his prior work is not relevant to the current case."

Mobile Telecommunications Technologies, LLC v. LG Electronics Mobilecomm USA, Inc., 2-13-cv-00947 (TXED July 22, 2015, Order) (Payne, M.J.)

Thursday, July 23, 2015

Expert’s Flawed Methodology Supports Award of Attorney Fees Under 35 USC § 285

Following summary judgment of noninfringement and invalidity, the magistrate judge recommended partially granting defendants' motion for attorneys' fees under 35 U.S.C. § 285 because plaintiffs' litigation position on their infringement expert's methodology was objectively unreasonable. "Although this court determined [plaintiffs' expert] was qualified under the liberal interpretation of an expert under [FRE] 702 because of his previous and current experiences, its conclusions regarding his methodology were the opposite. This court determined that his entire expert report was not based on any reliable methodology, and strongly criticized his entire infringement analysis, both literal and under the doctrine of equivalents for both patents, as conclusory, without analysis of how each claim element read on or was met by the accused ride. . . . Such criticism demonstrates that [the expert's] report so lacked any reliable methodology under the Daubert analysis and [FRE] 702 that it should have been apparent to plaintiffs. Therefore, plaintiffs' reliance on [their expert's] report was objectively unreasonable."

Magnetar Technologies Corp, et al v. Six Flags Theme Park Inc., et al, 1-07-cv-00127 (DED July 21, 2015, Order) (Thynge, M.J.)