Late Assertion of Unpatentability Defense Barred Despite Intervening Decision in Alice Corp.

The court denied defendant's motion for judgment that plaintiff's patents were invalid for ineligible subject matter because defendant failed to preserve that argument. "After trial and shortly before the . . . hearing on post-trial motions, [defendant] requested supplemental briefing to argue that the asserted claims of [two asserted patents] are invalid under 35 U.S.C. § 101, in light of the Supreme Court’s decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (June 19, 2014)." . . .[Defendant] could have — but failed to — preserve § 101 invalidity defenses, and [defendant's] request for the Court to adjudicate a legal theory that was disclosed after trial is untimely, regardless of the Supreme Court’s intervening decision . . . [Defendant's] technical experts on invalidity . . . did not disclose any opinions regarding § 101 in their reports. . . . [Defendant] also declined to assert § 101 in summary judgment motions. [Defendant] has identified no other disclosure after its . . . invalidity contentions [over a year ago] where [it] stated that it would continue to assert § 101. . . . [Defendant] did not 'implicitly' include § 101 by merely requesting a declaration of invalidity of the asserted patent claims because invalidity encompasses a range of legal theories under separate statutes that require different forms of proof. . . . Critically, [defendant] did not raise § 101 at trial or in any pre-verdict or post-verdict motions for judgment as a matter of law. . . . Any uncertainty in the law due to the pending Alice decision did not excuse [defendant's] delay."

Apple Inc. v. Samsung Electronics Co., Ltd., et al, 5-12-cv-00630 (CAND August 21, 2014, Order) (Koh, J.)