Thursday, July 28, 2016

Lawsuit Dismissed Under 35 U.S.C. § 1498 Does Not Trigger 35 U.S.C. § 315(b) Time Bar for IPR Initiated by the U.S. Government

The Board partly granted institution of inter partes review of a patent directed to an improved airport security system under 35 U.S.C. § 103(a), and rejected the patent owner's argument that the petition should be denied under 35 U.S.C. § 315(b). "[Defendant in the earlier lawsuit] moved for dismissal . . . arguing . . . that Patent Owner’s 'exclusive remedy is an action against the United States under 28 U.S.C. § 1498(a).' . . . The district court granted [defendant's] motion . . . . [T]he United States’] mere participation in [that] litigation and assumption of liability do not, without more, make a party a real party in interest. . . . [W]hile Patent Owner’s argument that the United States 'directed and controlled the allegedly infringing activity' is not without relevance, it does not bear directly on the categories identified by the Supreme Court in [Taylor v. Sturgell, 553 U.S. 880 (2008)], and which the Board has applied in considering whether third parties are real parties in interest. . . . Essentially, Patent Owner sued the wrong defendant in the [patent infringement] litigation. When it sued the correct defendant in the Court of Federal Claims litigation, the defendant responded by filing a petition for inter partes review within the one-year window provided by § 315(b). . . . [W]e are not persuaded that the statutory bar applies against the correct defendant under such a scenario, even considering the specific facts of Petitioner’s involvement with the [patent infringement] litigation as set forth on the record before us."

Petition for Inter Partes Review by The United States Department of Justice, IPR2016-00497 (PTAB July 25, 2016, Order) (Boucher, APJ)

Wednesday, July 27, 2016

Network Information Management Patent Invalid Under 35 U.S.C. § 101

The court granted defendants' motion to dismiss because the asserted claims of plaintiff’s network information management patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "Plaintiff responds that the [patent-in-suit] . . . is directed to specific improvements in the functioning of computers. . . . [T]he claims . . . are directed to the abstract idea of using information stored in one place to determine the location of and retrieve information stored in a second place, i.e., a form of 'information management.'. . . [T]he Court agrees with Defendants that the concept of using a 'pointer' found in one place to locate and retrieve information found in a separate place is indistinguishable from the idea of using an information desk, a catalogue, or the Dewey Decimal System to locate a desired library book, either within the same library or in a separate library using, say, an interlibrary loan. . . . [T]he claims . . . do not purport to alter the structure or function of the physical object, the computer, or indeed any part of the network of computers."

Activision Publishing, Inc. v. xTV Networks, Ltd. et al, 2-16-cv-00737 (CACD July 25, 2016, Order) (Otero, J.)

Tuesday, July 26, 2016

Jury Finding of Willfulness Does Not Require Award of Enhanced Damages Under Halo

The court denied plaintiff's motion for enhanced damages under 35 U.S.C. § 284 and rejected plaintiff's argument that the jury finding of willful infringement was binding on the court. "[Plaintiff] argues that the jury’s willfulness finding is binding on the Court, that enhanced damages are required, and that the Court’s discretion lies only in deciding what amount of enhanced damages to award. . . . While the [Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992)] factors remain helpful to this Court’s analysis, the touchstone for awarding enhanced damages after [Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016)] is egregiousness. . . . 'The subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages . . . .' Assuming without deciding that the jury’s verdict, based on the subjective prong of the now-overruled [In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007)] test, is sufficient to find subjective willfulness, the Court still finds, in its discretion, that the defendants’ conduct did not rise to the level of egregiousness meriting an award of enhanced damages. . . . [D]efendants did not deliberately copy the [patent-in-suit], did not try to conceal the chips found to be infringing, did reasonably investigate the scope of the patent, and did form a good faith belief that their products did not infringe based on their view of the proper claim construction and crystallinity of their buffer layer."

Trustees of Boston University v. Everlight Electronics Co., Ltd., et al, 1-12-cv-11935 (MAD July 22, 2016, Order) (Saris, J.)

Monday, July 25, 2016

Semiconductor Memory Circuit Board Configuration Patents Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion for judgment on the pleadings on the ground that plaintiff’s semiconductor memory circuit board configuration patents encompassed unpatentable subject matter because the claims were not directed toward an abstract idea. "According to [defendant], '[p]ut simply, space optimization — the sole purported improvement claimed in the [patents-in-suit] — is a fundamental concept and is not patentable as a matter of law.' The Court, however, believes that [defendant] frames the issue too generally — the patents at issue here concern physical layouts for particular memory cards that enable the card to either have a slimmer profile or have more memory chips on it than it otherwise would have had. . . . This is not a case where an inventor is trying to get around the prohibition of patenting abstract processes by tying an abstract process such as multitasking, a computer hardware design process, or a bingo game to a generic computer setup that executes that abstract idea. Rather, the hardware configuration itself is the unique focus of the patent. . . . [Defendant] has not . . . cited any case where a court found that a claim for a purportedly novel physical configuration of a piece of computer hardware was deemed patent-ineligible because it was merely the embodiment of an abstract process."

Polaris Innovations Limited v. Kingston Technology Company, Inc., 8-16-cv-00300 (CACD July 21, 2016, Order) (Carney, J.)

Friday, July 22, 2016

Expert Testimony Excluded as Unqualified in the Field of “Retroactive Mind Reading of Patent Examiners”

The court granted plaintiff's motion to exclude the testimony of defendant's patent expert regarding possible patent examiner responses as unqualified. "[Defendant's expert] provides opinions about two possible patent examiner responses. First, he opines about what an examiner 'could' have done if informed of [a prior art] Abstract. Second, he opines that 'under PTO procedure, by a preponderance of the evidence, the surgeries would have been considered not experimental.'. . . Both opinions raise the issue of whether an expert can testify as to the thought processes of an examiner who was provided with different information. [The expert's] resumé fails to establish his education, training, or experience in the field of retroactive mind reading of the thoughts of patent examiners. . . . [He] also lacks the experience to opine about the technology-at-issue. His CV indicates education and experience in computer and electrical engineering, but not surgery or medical devices, which are the subjects of the patents-at-issue."

Barry v. Medtronic, Inc., 1-14-cv-00104 (TXED July 19, 2016, Order) (Clark, J.)

Thursday, July 21, 2016

Patents for Processing information Via Networked Computers Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s patents for processing information via networked computers encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "Plaintiff contends that the claims here are not directed to abstract ideas, but instead to a new computer (or, more specifically, a more efficiently and reliably distributed configuration of multiple computers), resulting in better performance. . . . [I]t is clear that the networked computers utilized in the [patents-in-suit] are merely generic computers tasked with performing generic functions. . . . Nor are the claimed systems or methods limited to a particular type of process or task. . . . [T]he claims are not directed to solving a technological problem or solve a challenge particular to a specific environment, nor do they contemplate some 'new' type of computer. . . . Plaintiff also contends that the claims here are not directed to abstract ideas because they cannot be performed by humans. But the fact that inventions here are implemented on computers or only exist in the computing realm does not save them."

Appistry, Inc. v., Inc. et al, 2-15-cv-01416 (WAWD July 19, 2016, Order) (Jones, J.)

Wednesday, July 20, 2016

Post-Alice Defense of Patent-In-Suit Does Not Justify Award of Attorney Fees

Following judgment on the pleadings of unpatentable subject matter, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285, because plaintiff's litigation positions were not baseless. "According to [defendants], after [Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014)] Plaintiff should have known that its litigation position was weak and that continued litigation was unreasonable because Plaintiff’s patent, like the patents in Alice, relied on generic computer implementation to make its ineligible concepts patent eligible. . . . In response to [defendants'] motion for judgment on the pleadings, Plaintiff explained why its patent was not directed to an abstract idea, as well as why its patent, even if it were directed to an abstract idea, nonetheless contained an inventive concept. Although Plaintiff’s arguments were ultimately rejected, the Court does not agree that this is sufficient grounds for finding this case 'exceptional.'. . . The Court also declines to find, as [defendant] appears to advocate, that patent holders whose patents may be similar to the patent in Alice should have to decide between voluntarily dismissing their suits or being assessed attorneys’ fees pursuant to section 285."

RecogniCorp, LLC v. Nintendo Co, Ltd., et al, 2-12-cv-01873 (WAWD July 18, 2016, Order) (Jones, J.)