Thursday, January 29, 2015

Financial Product Price Quote Patent Invalid Under Alice

The court granted defendants' motions to dismiss plaintiff's infringement action for lack of patentable subject matter and found the abstract idea in plaintiff's financial product price quote patent was not limited by an inventive concept. "The [patent-in-suit] does precisely what . . . is fatal to many computer-based patents: 'recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.' The generation of price quotes for financial products is undeniably a pre-Internet concept. . . . [Plaintiff's] contention that it is solely offering an 'improvement' to overcome a purely technical problem is belied by the broad, non-limited claim language. . . . The court's holding is bolstered by [plaintiff's] own repeated use of language concerning 'scalability.'. . . But this is the exact same role computers play in many cases involving abstract, non-patentable ideas."

The Money Suite Company v. 21st Century Insurance and Financial Services Inc., et al, 1-13-cv-00984 (DED January 27, 2015, Order) (Sleet, J.)

33% Success Rate for §101 Motions to Dismiss

Prior to 2010, §101 invalidity defenses were not asserted at the pleading stage via a Rule 12(b)(6) motion. In 2010, Bilski v. Kappos, 130 S.Ct. 3218 (2010) opened the door for such motions with two being denied and one granted that year. In 2014, district courts considered fifteen §101 motions to dismiss, but denied or partially denied two-thirds. While several courts denied the motions because the claims did not appear to involve unpatentable subject matter, the more common basis for denial was a lack of a fully developed factual record or claim construction.

Click here to view a Motion Success Report for §101 motions to dismiss.
Click on portions of the chart to view the underlying orders.

Wednesday, January 28, 2015

Infringement Contentions May Not Qualify Priority Date With “No Later Than”

The court granted defendant's motion to strike plaintiff's infringement contentions regarding an open-ended priority date. "[Plaintiff] asserts that 'each asserted claim of the patents-in-suit [is] entitled to a priority date no later than September 7, 2000.' [Defendant's] concern is that [plaintiff] may use the 'no later than' language to assert a much earlier priority date further down the line in this litigation — as it appears [plaintiff] has done in [related cases]. [Plaintiff] does not address this argument in its opposition, nor did it meaningfully respond to it during oral argument. Accordingly, the language 'no later than' shall be stricken from the AICs without leave to amend. The asserted priority date is September 7, 2000."

Blue Spike, LLC v. Adobe Systems, Inc., 4-14-cv-01647 (CAND January 26, 2015, Order) (Corley, M.J.)

Tuesday, January 27, 2015

Expert’s “Petal-Plucking Exercise” Warrants Exclusion of Comparable Licenses

The court granted defendants' motion to exclude the testimony of plaintiff's damages expert regarding non-comparable licenses. "[The expert's] thinking here is hard to follow. She identifies five documents as the core of the market analysis approach, then disclaims any reliance on them, then says they are nevertheless suggestive of a reasonable royalty range, and then discards that range from use in her final damages number. This 'I like it -- I like it not' petal-plucking exercise is hardly the grist of admissible expert opinion. . . . This testimony bar applies across the board, including any attempt to mention the non-comparable licenses as 'background' evidence. [Plaintiff's] and [its expert's] unwillingness to say that she relied on the licenses -- apparently based on a recognition that they would not qualify as comparable licenses under the Federal Circuit’s precedents -- leaves no room for some sort of soft or 'suggestive' reliance."

Open Text SA v. Box, Inc. et al, 3-13-cv-04910 (CAND January 23, 2015, Order) (Donato, J.)

Success Rates for Daubert Motions Challenging Experts’ Methodology

Since 2008, U.S. district courts have ruled on 278 Daubert motions challenging an expert’s methodology in patent infringement cases. The number of orders has increased steadily from 16 in 2008 to 90 in 2014. In 2014, exactly 50% were denied.
Click here to view a Motion Success report for these motions.

Monday, January 26, 2015

Patent Employing Mathematical Formula for Real-Time Traffic Tracking Not Invalid Under Alice

The court denied without prejudice plaintiff's motion for a preliminary injunction precluding the sales of defendant's traffic sensor products, but rejected defendant's argument regarding lack of patentable subject matter. "Claiming the [patent-in-suit] is . . . directed at an abstract process generically implemented, [defendant] contends 'a human with no more than a high-school level education can readily accomplish each of the steps taught [by the patent-in-suit] with nothing more than a paper and a pencil.' The Court disagrees, and is unpersuaded [Alice Corporation v. CLS Bank International, 134 S. Ct. 2347 (2014)] is applicable to this case. Merely employing a mathematical formula does not render a claimed method unpatentable where the method improves upon an existing technological process, and the evidence presently before the Court indicates the [patent-in-suit] significantly improved upon existing technological processes for providing dilemma zone protection. Some previous purported solutions, for example, were based upon virtual loops or physical loops buried in the ground, and did not really solve the problem. . . . [Plaintiff] improved upon those solutions by devising a process which by making use of a mathematical formula enables accurate real-time tracking of vehicles as they approach an intersection."

Wavetronix LLC v. Iteris, Inc., 1-14-cv-00970 (TXWD January 22, 2015, Order) (Sparks, J.)

Friday, January 23, 2015

Data Storage and Digital Content Access Patents Not Invalid Under Alice

The magistrate judge recommended denying defendants' motion for summary judgment that plaintiff's data storage and digital content access patents were invalid for lack of patentable subject matter because they addressed unique problems unknown in the pre-internet world. "[T]he patents here do not simply apply a known business practice from the pre-Internet world to computers or the Internet. . . . Piracy of digital content became widespread through means unknown to the pre-Internet world. The patents claim methods and systems designed to prevent such easy and unauthorized reproduction and access while allowing the access to be nearly instantaneous and the storage to be permanent. The patents also address the unique problem of controlling a user’s access to data that the user already possesses by tracking use data and restricting access according to use rules. This sort of access control was also unknown in the pre-Internet era, even though Defendants’ expert opined that the patents can be likened to ordering a DVD over the telephone. . . . [T]he claims solve problems faced by digital content providers in the Internet Era and 'improve the functioning of the computer itself' by providing protection for proprietary digital content."

Smartflash LLC et al v. Apple Inc. et al, 6-13-cv-00447 (TXED January 21, 2015, Order) (Mitchell, M.J.)

Thursday, January 22, 2015

Groupware System and Integrated Circuit Design Patents Invalid Under Alice

The court granted defendant's motion for judgment on the pleadings that plaintiff's groupware system patents were invalid for lack of patentable subject matter. "The common specification of the five [patents-in-suit] describes the unremarkable concept of people working together on a project. . . . [T]his concept existed well before the invention of the [patents]. . . . The problem with the asserted claims is that their core concept is inherently abstract, and their implementation, which consists of standard technology like browsers, servers, and networks, has nothing inventive whatsoever about it."

Open Text SA v. Box, Inc. et al, 3-13-cv-04910 (CAND January 20, 2015, Order) (Donato, J.)

The court granted defendant's motion for summary judgment that plaintiff's integrated circuit patents were invalid for lack of patentable subject matter and rejected plaintiff's argument that the patents contained an inventive concept. "[I]n an effort to demonstrate the requisite 'inventive concept,' [plaintiff] first points to the lack of any reference to the claimed methods in the prior art. [Plaintiff's] reliance on a lack of prior art is misplaced, however. . . . Similarly unavailing is [plaintiff's] argument that the asserted claims do not 'pose a risk of preemption,' as logic synthesis can be performed 'without using assignment conditions.'. . . [T]he asserted claims do preempt a building block of human ingenuity, a mental process, albeit a specific one. . . . The fact that previously a designer would not have followed the exact same thought process does not change the analysis. A method primarily designed for use by a computer is, almost by definition, going to differ from the manner in which a natural person thinks through a problem."

Synopsys, Inc. v. Mentor Graphics Corporation, 3-12-cv-06467 (CAND January 20, 2015, Order) (Chesney, J.)

Wednesday, January 21, 2015

CAD/CAM Data Importation Patents Invalid Under Alice

The court granted defendant's motion for summary judgment that plaintiff's CAD/CAM data importation patents were invalid for lack of patentable subject matter and found that the claims were directed to the abstract idea of mapping without an inventive concept. "[A]n inventive concept is, among other things, a new idea that solves a recognized problem in a particular field of endeavor. . . . Moreover, the inventive concepts in [earlier decisions] each involved an innovation that allowed a user of the invention to achieve a better result, rather than a result that was achieved more quickly due to the replacement of direct human activity with a computer. . . . Without a disclosure of how the invention does what it does, neither the specification nor the claim identifies an inventive concept. Rather, the patent merely recites the use of a generic computer to perform generic computer operations, and that is not enough to establish an inventive concept."

East Coast Sheet Metal Fabricating Corp. d/b/a EastCoast CAD/CAM v. Autodesk, Inc., 1-12-cv-00517 (NHD January 15, 2015, Order) (McCafferty, J.)

80% success rate for summary judgment of invalidity on § 101 issues in 2015

Since the beginning of the year, district courts have ruled on 5 motions for summary judgment of invalidity on § 101 issues. Four were granted, resulting in an 80% success rate. In 2011, the success rate was 37.5%. To view success rates over time, check out Docket Navigator’s new Motion Success report here.