Request for Permanent Injunction Precluding ANDA Infringer’s Pre-Launch Commercialization Activities Denied​

Following a bench trial, the court denied plaintiffs' motion for a permanent injunction precluding infringement of its contraceptive drug patent because plaintiff failed to establish irreparable harm or inadequate remedies at law. "The parties agree . . . that the relief the Court provides Plaintiffs must include an order that the [FDA] reset the approval date of Defendant's [ANDA] until after the expiration of the [patent-in-suit. The parties disagree as to whether the Court should additionally enter an order enjoining Defendant from infringing the patent-in-suit before it expires. . . . Effectively, the parties' dispute seems to be whether to limit Defendant solely to research activities that are within the Hatch-Waxman Act's 'safe harbor,' 35 U.S.C. § 271(e)(l), or whether instead to allow Defendant to engage in all research and pre-commercialization activity that could precede a launch of a generic product. . . . [Plaintiff’s] position largely relies on a series of speculations as to ‘illegal activity’ [defendant] might undertake if the Court does not grant [plaintiff] its full requested relief, such as ‘manufacture, importation, offers to sell, or the use of its generic ANDA product’ and ‘working with and licensing with a third party for purposes of facilitating a second ANDA filing behind the veil of the third party company. . . . It is true . . . that [defendant] seeks to be a direct competitor of [plaintiffs] in the market for [plaintiff's drug product] and has committed an 'act of infringement' (albeit an 'artificial' act) by filing an ANDA. But these facts alone are insufficient to establish irreparable harm in all ANDA cases. . . . While Defendant's launch of a generic product during the life of the patent is the type of activity that could result in irreparable harm to [plaintiffs], Plaintiffs' speculation that Defendant will risk criminal sanctions by launching its generic product into the market without FDA approval strikes the Court as entirely unfounded, and FDA approval will not happen until after the expiration of the patent. Moreover, the possible necessity of future litigation with Defendants is slight, and litigation costs cannot support a finding of irreparable harm."

Bayer Pharma AG et al v. Watson Laboratories Inc., 1-12-cv-01726 (DED December 28, 2016, Order) (Stark, USDJ)

Proposed Disclosure Objection Procedure for Protective Order Rejected as Revealing Counsel's Work Product

The court denied defendant's motion to include an objection procedure for disclosure of confidential material to foreign counsel in the protective order because such provision would reveal counsel's work product. "[Defendant] proposed the addition of Paragraph 7.5(b), which the parties now dispute: 'Prior to disclosure of Protected Material to Designated Foreign Counsel, the Party seeking disclosure shall provide written notice to the Producing Party identifying (i) the names of the Designated Foreign Counsel and (ii) the specific Protected Material sought to be disclosed to the Designated Foreign Counsel.'. . . The procedure described in Paragraph 7.5(b) would reveal which documents are important to Plaintiffs, and therefore disclose information that is considered work product. . . . [Defendant] argues that Paragraph 7.5(b) is modeled after a provision in [another case's] protective order. However, the [other order's] provision upon which Paragraph 7.5(b) is modeled relates to the use of documents in foreign actions. Whereas, in the present case, there is no pending request to use the documents in foreign litigation."

Boston Scientific Corporation et al v. Edwards Lifesciences Corporation, 1-16-cv-00275 (DED December 27, 2016, Order) (Fallon, MJ)

Defendant’s Decision to Initiate Reexamination Instead of IPR Warrants Denial of Stay​

The court denied defendant's motion to stay pending its request for ex parte reexamination because the lack of potential simplification of issues and undue prejudice to plaintiff weighed against a stay. "Even if the PTO grants the request for an ex parte reexamination of [plaintiff's] patent, the case will not be stayed during that reexamination process. . . . [Defendant] had a choice of applying for ex parte reexamination or inter partes review. The choice of ex parte reexamination was strategically advantageous to [defendant] because the result of the reexamination will have no estoppel effect on [defendant's] arguments here. . . . Thus, the ex parte reexamination process is much less likely to advance the ball in this case. Meanwhile, [plaintiff], which is a direct competitor of [defendant], would be prevented from asserting its patent rights in court for as long as two years, with [defendant] having effectively pressed the pause button on the litigation while hardly needing to lift a finger."

Pro-Troll, Inc. v. Shortbus Flashers, LLC, 3-16-cv-04062 (CAND December 23, 2016, Order) (Chhabria, USDJ)

Digital Media Synchronization Patents Not Invalid Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s digital media synchronization patents encompassed unpatentable subject matter because the claims were not directed toward an abstract idea. "The claims, like those in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] and [McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016)], are directed on their face to an improvement to computer functionality: a more-efficient mechanism for synchronizing data between systems connected to a network by updating only changed data (or 'difference information'), rather than recopying all information. . . . As the specifications explain, the claims are directed to improving the manner in which computers synchronize data between devices connected to a network, by making that process faster, reducing the amount of bandwidth and storage space used, enabling synchronization across different data formats, and enabling synchronization without requiring devices to be physically connected."

Synchronoss Technologies v. Dropbox Inc, 3-16-cv-00119 (CAND December 22, 2016, Order) (Gilliam, USDJ)

RFID Tracking Patents Ineligible Under 35 U.S.C. § 101​

The court granted defendant's motion for judgment on the pleadings that the asserted claims of plaintiff’s RFID tracking patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "According to [plaintiff], because all of the asserted claims 'require specialized physical hardware components as well as software,' the hardware elements necessarily make the claims 'in better standing than those found eligible in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)].'. . . While both representative claims require physical components -- the RFID 'transponder,' 'reader,' and 'antenna' -- the specification makes clear that the recited physical components merely provide 'an environment in which to carry out the abstract idea.'. . . The specification does not address how the RFID technology itself is improved: it does not describe a new or improved RFID transponder, a new or improved RFID reader, or a new or improved RFID antenna. . . . Here, the focus of the claims is on certain abstract process for which computers are invoked merely as a means to achieve the ends. While the RFID technology employed by the invention was a rapidly developing technology at the time of the invention, the use of a conventional or generic computer in a nascent environment does not make the claims any less abstract."

Automated Tracking Solutions, LLC v. ValidFill, LLC et al, 1-15-cv-04348 (GAND December 21, 2016, Order) (Duffey, USDJ)

IPR Estoppel Does Not Apply to Obviousness Grounds Based on Public Documents That Could Have Been Raised at the Outset of the IPR​

The court granted plaintiff's motion for summary judgment "to prevent [defendant] from asserting invalidity challenges" due to IPR estoppel as to references raised during a prior IPR, but denied the motion with respect to references that could have been raised in the IPR, but were not. "Although [plaintiff's] argument in this regard is perfectly plausible, in the sense that [defendant] certainly could have raised these additional obviousness grounds based on public documents at the outset of their IPR petition, the Federal Circuit has construed the above language quite literally. More specifically, the Court determined in [Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016)] that, because the PTAB rejected a certain invalidity ground proposed by the IPR petitioner, no IPR was instituted on that ground and, therefore, petitioner 'did not raise -- nor could it have reasonably raised -- the [rejected] ground during the IPR.' Although extending the above logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding, the court cannot divine a reasoned way around the Federal Circuit's interpretation in Shaw. [Defendant] may not raise obviousness based on [3 references raised during IPR] against the relevant claims of the [patent] in the case at bar. However, [defendant] may present the additional invalidity grounds at trial."

Intellectual Ventures I LLC et al v. Toshiba Corporation et al, 1-13-cv-00453 (DED December 19, 2016, Order) (Robinson, USDJ)

No Disqualification of Plaintiff’s Counsel for Simultaneous Representation of Defendant in Unrelated Litigation​

The court denied defendant's motion to disqualify plaintiff's new counsel for simultaneously representing defendant in an unrelated state case because disqualification would impose a substantial hardship on plaintiff. "By undertaking representation of [defendant] in the California case while undertaking representation against [defendant] in this case, [plaintiff’s counsel] plainly violated Rule 4-1.7. But an inadvertent input error -- not a deliberate disregard of the duty of loyalty -- caused that violation. The case has been pending for more than two-and-a-half years -- much longer than the 12- to 18-month goal set by the Court for this type of case -- and disqualification would further delay a merits decision. . . . [Plaintiff] played no part in causing the violation. Insofar as [plaintiff’s counsel] had undertaken 'hundreds of hours of document review' and 'numerous depositions (in Florida and Tennessee),' [plaintiff] would suffer a substantial hardship by having to retain new counsel to repeat or review that work. . . . With no sharing of [defendant's] confidences and able counsel on both sides, the violation will not diminish counsel’s effectiveness. And [counsel's] active representation of [defendant] lasted less than a month, during which it was not [defendant's] primary counsel."

Lanard Toys Limited v. Toys "R" Us, Inc. et al, 3-15-cv-00849 (FLMD December 16, 2016, Order) (Barksdale, MJ)

Post-Alice Evolution of 35 U.S.C. § 101 Law Warrants Reconsideration of Attorney Fees Award​

The court granted plaintiff's motion to reconsider its award of attorney fees under 35 U.S.C. § 285 and reversed its order awarding fees after the PTO allowed a continuation patent with claims that were nearly identical to the patent-in-suit because it found that plaintiff's litigation positions were no longer baseless. "[T]he Court overlooked the substantive strength of Plaintiff’s litigation position because of the uncertainty of the state of the law regarding 35 U.S.C. § 101. . . . Plaintiff argues that the PTO’s allowance of nearly identical claims in this [continuation] application belies the Court’s determination it 'should have been obvious' to Plaintiff that there was no inventive concept in the [patent-in-suit]. The Court agrees. . . . while this Court had stated that it should have been obvious to Plaintiff that it did not have a § 101 case in a post-Alice environment, the law has since sufficiently evolved so that Plaintiff may have had an arguable or plausible inventive concept under § 101. That, combined with the PTO’s approval of the [continuation] application after considering this case’s § 101 materials, leads the Court to reconsider its granting of fees to Defendant under § 285."

Garfum.com Corp. v. Reflections by Ruth, 1-14-cv-05919 (NJD December 16, 2016, Order) (Simandle, USDJ)

Technical Expert Not Qualified to Offer Opinion Concerning Secondary Considerations​

The court granted plaintiffs' motion to exclude the testimony of defendants' invalidity expert regarding secondary considerations of nonobviousness as unqualified because he had no experience in the toy industry. "The fact that [the expert] qualifies as a person of ordinary skill in the art for purposes of rendering his non-infringement and invalidity opinions bears little relevance to whether he is also qualified to testify regarding secondary considerations related to the toy industry such as commercial success, long-felt need, failure by others in the industry, or copying. . . . Defendants do not point to any expertise that would qualify [their expert] to testify regarding the commercial aspects of these inquiries. Indeed, according to his CV, it appears that upon the completion of his Ph.D. in 2008, [he] went directly to lecturing in applied mathematics at Harvard University, and from there to his current position as an Assistant Professor of Mechanical Engineering at MIT. [His] resume does not reflect any industry experience. During his deposition, [the expert] confirmed that he has no trained knowledge on what makes a toy successful, that his expertise in this regard was based on his experience as a consumer, and that he has never worked in the industry."

Tinnus Enterprises, LLC et al v. Telebrands Corporation et al, 6-15-cv-00551 (TXED December 15, 2016, Order) (Love, MJ)

Plaintiff's Conduct in IPR Does Not Warrant Award of Attorney Fees in Related Lawsuit​

The court denied defendant's motion for attorney fees under 35 U.S.C. § 285 after finding plaintiff's patent was invalid as obvious because plaintiff's litigation tactics were not unreasonable. "[Defendant argues] this case is exceptional because [plaintiff] unreasonably increased [defendant's] defense costs [in that plaintiff]] . . . (1) increased inter partes review costs resulting from [plaintiff's] use of three experts and a fact witness, filing a motion to amend its patent, and appealing the PTAB’s inter partes review decision to the Federal Circuit . . . [Defendant] does not demonstrate, as it must, that such conduct was unreasonable under the circumstances. [Defendant's] presentation is further unclear why (other than [plaintiff's] lack of success) it was unreasonable for [plaintiff] to seek to amend its patent -- as permitted by 35 U.S.C. § 316(d) -- or appeal the PTAB’s decision -- as permitted by 35 U.S.C. § 141(c). . . . Further, while the court denied [plaintiff's] motion for reconsideration, the tactic was not unreasonable given the unsettled state of inter partes review estoppel law. [Defendant's] arguments regarding [plaintiff's] rejection of a good-faith settlement offer is bizarre and misleading, given that both parties’ subsequent briefing indicates that the 'good-faith' settlement offer rejected by [plaintiff] was for zero dollars."

Clearlamp, LLC v. LKQ Corporation, 1-12-cv-02533 (ILND December 14, 2016, Order) (Lefkow, USDJ)

In Determining 35 U.S.C. § 101 Eligibility, Court May Consider Specification of Parent Patent Incorporated by Reference​

The court denied defendant's motion for judgment on the pleadings on the ground that plaintiff’s malicious code monitoring patent encompassed unpatentable subject matter and found that it could look to a parent patent incorporated by reference to determine eligibility. "This case presents an interesting scenario where the claims themselves are basic and broad, but significant clarifying detail is provided in a specification that belongs not to the [patent-in-suit] itself, but to a parent patent . . . which the [patent-in-suit] identifies and declares to be 'hereby incorporated by reference.'. . . As with any matter involving the scope of the patent grant, '[t]he § 101 inquiry must focus on the language of the Asserted Claims themselves.'. . . Nevertheless, the specification, as a helpful tool in understanding claim scope, is not to be ignored entirely. . . . Because the Court must construe the pleadings in favor of [plaintiff], the Court must err on the side of incorporating more -- not less -- particularities from the specification into its understanding of the claims, while still refraining from importing limitations from the specification into the claim. . . . Here, the [patent-in-suit] identifies the material it is incorporating with sufficient particularly: it indicates that it is incorporating the entire [parent] patent, and provides enough information for the reader to locate this information. . . . Accordingly, the Court is persuaded that the [patent-in-suit] successfully incorporates the entirety of the [parent] patent’s disclosure by reference."

Finjan, Inc. v. Blue Coat Systems, Inc., 5-15-cv-03295 (CAND December 13, 2016, Order) (Freeman, USDJ)

Digital Archiving Patent Ineligible Under 35 U.S.C. § 101​

The court granted defendant's motion for summary judgment that plaintiff's digital archiving patent was invalid because the asserted claims encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "At their core, these four steps describe instructions for using a generic computer to collect, organize, compare, and present data for reconciliation prior to archiving. . . . [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] did not go so far as to hold that any method purporting to improve computer functionality is patent-eligible. . . . Moreover, the decision did nothing to unsettle past Federal Circuit case law holding that claims calling for the addition of 'conventional computer components to well-known business practices' are drawn to an abstract idea, even when those claims purport to improve computer functionality through increased speed or efficiency. Here, the claims in the [patent] purport to improve digital archiving by 'promot[ing] efficiency,' 'achiev[ing] object integrity,' and 'reduc[ing] turnaround time and costs.' These types of generic technological improvements can result from virtually any computer implementation of conventional business methods. The Court therefore disagrees with [plaintiff] that its claims are directed to the kinds of specific, concrete, nonconventional improvements that made the claims in Enfish patent-eligible."

Berkheimer v. Hewlett-Packard Company, 1-12-cv-09023 (ILND December 12, 2016, Order) (Lee, USDJ)

Petitioner’s Failure to Identify Real Party-In-Interest Warrants Sanction of Attorney Fees and Costs​

The Board granted the patent owner's motion for sanctions. "In the related IPR, the Board specifically found that AGLR is a real party in interest, and it follows that the merged entity is also a real party in interest. . . . Petitioner’s failure to file timely the updated mandatory notice is especially significant in light of the central nature that the issue of AGLR's status as a real party in interest played in the related IPR. . . . With respect to [the parent company of the petitioner], we do not credit Petitioner’s argument that [the parent company] is not a real party in interest in light of Petitioner’s explicit notification to the contrary. Petitioner cannot have it both ways, identifying [the parent company] as a real party in interest to ensure compliance with 35 U.S.C. § 312(b), while simultaneously maintaining that it is not a real party in interest to evade the obligations of 37 C.F.R. § 42.8(a)(3). In light of these various considerations, we conclude that Petitioner has performed conduct that warrants a sanction. . . . We determine that an appropriate sanction, proportionate to the harm suffered by Patent Owner, is to award costs and fees incurred in association with this proceeding from the time after issuance of the Final Written Decision until the date of this Decision."

Petition for Inter Partes Review by Atlanta Gas Light Company, IPR2015-00826 (PTAB December 6, 2016, Order) (Boucher, APJ)

Assertion of Frivolous Claims in Light of Alice Warrants 28 U.S.C. § 1927 Sanctions Against Counsel Despite Covenant Not to Sue​

Following dismissal of defendant's patent claims after defendant provided a covenant not to sue, the court granted plaintiff's motion for sanctions against counsel under 28 U.S.C. § 1927 because the asserted infringement claims were frivolous in light of Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). "As experienced patent counsel, [defendant's] attorneys were well aware of Alice and its implications for [defendant's] Patents. Realizing that they could not defend [defendant's] Patents against a § 101 validity challenge, they chose nonetheless to file this contingency-fee lawsuit, as one of ten in the Eastern District of Texas, in the expectation that they could obtain quick settlements of relatively modest amounts from every major firm in the internet crowdfunding arena. When [plaintiff] resisted, counsel immediately acknowledged that [defendant's] claims were 'not worth litigating' and offered to dismiss the Texas Action with prejudice. . . . They resisted a motion to change venue, twice demanded documents from [plaintiff], and engaged in the prosecution of the Texas Action. Only . . . after the Texas Action was consolidated with the New York Action and as [plaintiff] prepared its § 101 motion, did [defendant] serve the Covenant. . . . [Defense] counsel’s decision to proceed with the litigation for as long as it did, and to make it expensive for [plaintiff] to defend against the litigation, reflects counsel’s tactical and bad faith motivation."

Gust, Inc. v. AlphaCap Ventures, LLC, 1-15-cv-06192 (NYSD December 8, 2016, Order) (Cote, USDJ)

MSJ of § 101 Ineligibility Denied for Characterizing Patents With "Reductionist Simplicity"

​ The court denied defendant's motion for summary judgment of invalidity on the ground that plaintiffs’ call center telecommunications patents encompassed unpatentable subject matter because the motion obscured patents' complexity with reductionist simplicity. "[V]irtually any invention could be described as simply addressing that which others long ago addressed . . . This reductionist simplicity may obscure underlying complexity, and it may jeopardize the innovative improvements upon longstanding accomplishments that patents are intended to incent. Patent law protects the builder of a better mousetrap, even if his or her invention could be described as, simply, a mousetrap -- or as a 'method to catch a mouse.' Many recent motions seeking determinations of patent ineligibility suffer from such reductionist simplicity -- from characterizing as simply a mousetrap that which is in fact a better mousetrap. Courts faced with such motions must scrutinize reductive descriptions with great care. It has also become increasingly common for litigants to pursue such judicial rulings, which can be as complex as Markman rulings but without a similar record. . . . [T]he current fad of ineligibility motions in patent cases has, in certain respects, gotten ahead of itself. . . . . [Defendant] presents its argument with the same reductionist simplicity common now in § 101 motions: It argues that all of the inventions claimed can be distilled to a single phrase: 'the abstract idea of processing (i.e., recording, monitoring, analyzing, and/or securing) data and information in telecommunications.'. . . There is, however, significant complexity in the patents obscured by this reductionist simplicity. Whether that complexity is novel or obvious is not at issue on this motion. Rather, the two questions properly addressed here are: (1) whether the patents simply claim an abstract concept (they do not); and (2) whether, even if they do, they are sufficiently inventive to be patentable nonetheless (most are)."

Verint Systems Inc. et al v. Red Box Recorders Ltd., 1-14-cv-05403 (NYSD December 7, 2016, Order) (Forrest, USDJ)

Television Control System Patent Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion for summary judgment that plaintiff's television control system patent encompassed unpatentable subject matter and found that the claims lacked an inventive concept. "[T]he claims are limited to a particular technological context: 'devices for viewer control of a television receiver,' and the inventor does not profess that the claimed system is innovative in the wider context of electronic circuitry or micro-processing. . . . [T]he specification describes the problem being solved as the confusion and inconvenience that resulted from the advent of cable and satellite television services with their multiplicity of channels and unfamiliar and inconsistent numbering systems. . . . In short, the need was to put a conversion chart on a remote control in an easily usable format, a task that would not suggest that innovative technology would be required to accomplish. . . . The claimed system is readily comparable to the electronic map found unpatentable for lack of an inventive concept in Peschke Map Technologies LLC v. Rouse Properties Inc., 168 F. Supp. 3d 881 (E.D. Va. 2016)."

Technology Development and Licensing, LLC v. General Instrument Corporation, 1-07-cv-04512 (ILND December 6, 2016, Order) (Lefkow, USDJ)

Enfish is Not an Intervening Change of Law Sufficient to Amend Judgment of Invalidity Under 35 U.S.C. § 101​

The court denied plaintiff's motion to amend an earlier judgment that the asserted claims of plaintiff's GPS patent were invalid for lack of patentable subject matter and rejected plaintiff's argument that Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. May 12, 2016), was an intervening change of law. "Enfish does not stand for the proposition that improvement to computer functionality is always sufficient to satisfy step one of [Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)]. . . . Enfish cautioned against describing claims at a high level of abstraction and untethered from the language of the claims. But in doing so, Enfish merely affirmed the existing law that claims are to be considered as a whole in order to evaluate what they are directed toward. That a court should not characterize an invention at too high of a level of abstraction, and should consider as a whole what a claim is directed toward, has previously been articulated in prior § 101 decisions, and does not present a change in the law. . . . [A]t the most, Enfish and subsequent cases suggest 'that there is considerable overlap between step one and step two,' but that 'whether the more detailed analysis is undertaken at step one or at step two, the analysis presumably would be based on a generally-accepted and understood definition of, or test for, what an 'abstract idea' encompasses.'"

Rothschild Location Technologies LLC v. Geotab USA, Inc., 6-15-cv-00682 (TXED December 5, 2016, Order) (Schroeder, USDJ)

Real Estate Search Patent Invalid Under 35 U.S.C. § 101​

The court granted plaintiff's motion for summary judgment because the asserted claims of defendants' real estate search patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[T]he [patent] is directed to a method for collecting and organizing information about available real estate properties and displaying this information on a digital map that can be manipulated by the user. . . . The fact that the map is digital, rather than physical, does not change the analysis. The [patent] relies on generic computing capabilities to render the map. . . . Organizing geographic data in this way is commonsensical – it is the type of approach anyone attempting to organize a large amount of geographic data would think to use. Allowing a user to orient herself using a larger map, and then to select a smaller, more detailed map corresponding to her geographic preference, is similarly commonsensical. All of these steps could be approximated by a realtor with an atlas. . . . Although the [patent] discloses pages of logical flow charts that explain how the computer should be programmed to perform the claimed method, [defendant] does not explain how the disclosed program differs from that which any programmer would have used to implement the claimed method."

Move, Inc. v. Real Estate Alliance, Ltd. et al, 2-07-cv-02185 (CACD December 1, 2016, Order) (King, USDJ)

Experts’ Testimony Excluded as to Opinions That Cost and Regulatory Constraints Would Have Suppressed Motivation to Combine​

The court partially granted defendant's motion to exclude the testimony of plaintiff's nonobviousness experts with respect to their opinions that cost and regulatory constraints would have suppressed a skilled artisan’s motivation to combine the prior art. "In a number of instances, [plaintiff's] experts conclude that because a proposed prior art combination would have been costly or legally prohibited by the FDA, a person of ordinary skill in the art would not have been motivated to change the prior art in the proposed manner. The Court will not permit [plaintiff's] experts to testify that such economic or regulatory concerns would have inhibited a person of ordinary skill in the art from changing the prior art or affected the person’s expectation that the change would have been successful. . . . [Plaintiff's] experts are not, however, prevented from testifying . . . that costs or regulatory factors are probative of whether a proposed prior art combination would have been technically feasible. . . . Similarly . . . although less probative of nonobviousness, the fact finder could conclude that regulatory restrictions reflect some technical feasibility, assuming there is evidence or opinion that the regulatory restrictions are based on technical limitations."

Arthrex, Inc. v. Smith & Nephew, Inc. et al, 2-15-cv-01047 (TXED December 1, 2016, Order) (Payne, MJ)

Web Based Communication Patent Ineligible Under 35 U.S.C. § 101​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s web based communication patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] argues that that the patent claims are like those in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016)] because they focus on improvements to apparatuses (computers and computing devices), not processes. [Plaintiff] contends that '[p]rior to the [patent-in-suit], no computer existed that had the same capabilities as those claimed in the [patent].'. . . [P]atent eligibility does not depend on the form of the claim. . . . The language of the claims and specification make clear that the focus of the claims is on the abstract process of retrieving and transmitting data, and that this process is performed on general-purpose, ordinary computer components. . . . [T]he claim language is silent as to how to actually achieve the collection and transmission of information. There are no specifics about what those pre-stored sequences of actions are, what action is taken on a remote Internet site, how information is accessed and returned from the Internet site, or what information is returned. . . . The patent claims a process that humans have long performed, but implements it on a generic Internet-connected device used in its ordinary capacity. This is not sufficient to be deemed non-abstract."

Content Aggregation Solutions LLC v. BLU Products, Inc., 3-16-cv-00527 (CASD November 29, 2016, Order) (Benitez, USDJ)

Newly Assigned Judge Vacates Earlier Summary Judgment Invalidating Advertising Campaign Analysis Patents Under 35 U.S.C. § 101​

The court sua sponte vacated the prior district judge's summary judgment order invalidating defendant's advertising campaign analysis patents for lack of patentable subject matter because the asserted claims were not directed toward an abstract idea. "The invention set forth in the [patent-in-suit], and claim 71 in particular, seeks to solve a known industry problem: determining the value proposition of an advertising campaign in today’s fragmented digital environment. . . . [C]laim 71 is not directed at an abstract idea of double-blind matching. . . . Instead, claim 71 is directed at the concrete idea that there are today numerous digital media platforms which can be mined for information about second-by-second or minute-by-minute household viewing; that data can be as granular as whether the volume is turned down during a commercial break, or whether the channel is switched away and then switched back. That viewing data can be gathered as to a substantial number of households -- privacy protected -- and compared to equally granular data on purchasing behavior, and then various analyses can be created that rely on this level of detail. This is no abstraction and is described [as] an advancement. . . . It is, of course, possible for a court to reduce the method to an abstract description of, for example, 'collecting viewing and purchasing data to analyze the utility of an advertising campaign.' Indeed, virtually any invention can be reduced to a concept. . . . The key question is whether the abstract summary embodies the totality of the invention is all that the invention is—in other words, is the invention nothing more than the abstract concept? Here, the answer is plainly no."

TNS Media Research, LLC, et. al. v. TRA Global, Inc., 1-11-cv-04039 (NYSD November 29, 2016, Order) (Forrest, USDJ)

Expert Opinion as to Meaning of Claim Term Excluded as Improper Claim Construction ​

The court granted in part plaintiff's motion to exclude the testimony of defendants' noninfringement expert because the expert engaged in claim construction. "In his report, [the expert] opines that the term 'support member,' which is included in claim 6 of the [patent], is synonymous with the term 'plate member'. . . . [His] proposed definition for 'support member' is not based on his technical expertise, but rather, on an interpretation of the language used in claim 6 of the [patent] in light of the language used in the patent's specification. [The expert] thus appears to be offering 'a classic claim construction determination.' The court concludes that because [the expert's] opinion concerning the meaning of 'support member' is an improper attempt at claim construction, it must be excluded. This does not necessarily mean, however, that Defendants are barred from making an argument about the meaning of the term. Should either side believe that additional claim construction is necessary, a party move for leave to present additional claim terms for construction."

Not Dead Yet Manufacturing, Inc. v. Pride Solutions, LLC et al, 1-13-cv-03418 (ILND November 28, 2016, Order) (Pallmeyer, USDJ)

Expert’s Reliance on Forward Citation Analysis Does Not Render Reasonable Royalty Opinion Unreliable​

The court denied plaintiff's motion to exclude the testimony of defendant's damages expert regarding a reasonable royalty on the ground that forward citation analysis was unreliable. "Forward citation analysis is a method of estimating the value of a particular patent based on the number of times the patent is cited by later patents. . . . [T]he forward citation method of analysis has been recognized in the academic literature as reliable since the 1990s. . . . [C]ourts have not rejected forward citation analysis outright. This Court determines that a single academic paper . . . is not sufficient to rebut decades of literature supporting forward citation analysis."

Comcast Cable Communications, LLC et al. v. Sprint Communications Company LP et al, 2-12-cv-00859 (PAED November 21, 2016, Order) (Dubois, SJ)

“Long-Shot” Motion for Attorney Fees Does Not Warrant Rule 11 Sanctions After Octane​

The court denied plaintiff's motion for Rule 11 sanctions for defendant's unsuccessful motion for attorney fees. "[Defendant's] section 285 motion was quite light on support. However, the court finds an award of attorneys’ fees to [plaintiff] as a sanction inappropriate for the following reasons. First, after [Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014)], long-shot section 285 motions appear to be quite common. It would be difficult to sanction [defense] counsel for following the well-trodden road of seeking to extend the law under Octane’s somewhat amorphous equitable factors. Second . . . [plaintiff's] decision to not serve a Rule 11 letter to [defendant] before trial somewhat undermines its persuasiveness as to the section 285 motion because it causes the Rule 11 motion to verge on appearing 'simply an effort to extract some measure of revenge.'. . . It is not plain that awarding [plaintiff] attorneys’ fees would more efficiently deter frivolous section 285 motions better than the attorneys’ fees that [defendant] itself incurred on briefing a fruitless section 285 motion and opposing the Rule 11 motion."

Hach Company v. In-Situ, Inc., 1-13-cv-02201 (COD November 22, 2016, Order) (Shaffer, MJ)

Patent for Reducing Signal Interference on Mobile Devices Not Invalid Under 35 U.S.C. § 101​

The court denied defendants' motion to dismiss on the ground that one of plaintiff’s patents for reducing signal interference on mobile devices encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "[Defendant] argues that the [patent] is directed to a mathematical equation because its claimed advance over the prior art is the inclusion of a specific set of 16 cyclic shift intervals, which [defendant] deems 'math.'. . . [T]he [patent] claims are directed to a specific improvement in cellular communications, and not an abstract idea or mathematical formula. . . . While the improvement necessarily relies on math because the low signal overload depends on the limited set of cyclic shift intervals, itself derived from mathematical equations and variables dictated by a cell’s size, that reliance does not render it ineligible for a patent. . . . The [patent] does not attempt to claim a mathematical formula. It discloses a method that uses a predefined set of numbers -- itself derived from an equation, but not occurring in the natural environment -- to enable a mobile device to more efficiently synchronize with a base station. This advance entails more than an abstract idea or 'just math.'"

Huawei Technologies Co., Ltd. et al v. Samsung Electronics Co., Ltd. et al, 3-16-cv-02787 (CAND November 21, 2016, Order) (Orrick, USDJ)

Expert’s Use of Aspirational Royalty Rates No Basis for Excluding Testimony​

The court denied defendant's motion to exclude the testimony of plaintiff's damages expert as unreliable because it was based on aspirational royalty rates. "[Defendant] argues that [plaintiff's expert] cannot use [the] announced and demanded royalty rates [of a company acquired by defendant] because they are simply [the company's] aspirational rates. This argument attacks the credibility of [the expert's] inputs and conclusions, not his methodology. The Court denies the motion and finds that [defendant] can sufficiently address its concerns through cross-examination."

Core Wireless Licensing S.a.r.l. v. Apple Inc., 5-15-cv-05008 (CAND November 18, 2016, Order) (Cousins, MJ)

Judicial Estoppel Does Not Bar Assertion of Invalidity Defenses Raised but not Instituted in IPR​

The court denied plaintiff's motion to strike defendant's amended invalidity contentions due to judicial estoppel because of statements defendant made in obtaining a stay pending inter partes review. "While the Court appreciates [plaintiff's] frustration at having to litigate certain issues that were presented to the PTAB, particularly defenses on which the PTAB declined to institute review based on [defendant's] failure to establish a likelihood of success or because the asserted prior art combinations were redundant in light of other reviewed combinations, the Court cannot ignore the fact that the Federal Circuit has determined that it is appropriate to do so. . . . While the Court and [plaintiff] may have preferred a greater simplification of issues, the IPR proceedings did reduce the number of prior art references and defenses that [defendant] can now raise. . . . At best, the post IPR viability of [defendant's] §§ 102 and 103 defenses in light of [recent] Federal Circuit’s decisions . . . may impact the Court’s decisions going forward regarding whether matters should be stayed pending IPR. It does not, however, convince the Court that [defendant] should be judicially estopped from raising any defenses in this litigation."

Depomed, Inc. v. Purdue Pharma LP et al, 3-13-cv-00571 (NJD November 4, 2016, Order) (Bongiovanni, MJ)

Plaintiff’s Repeated Litigation Misconduct Warrants 35 U.S.C. § 285 Attorney Fee Award​

The court denied plaintiff's motion to reconsider an earlier order awarding attorney fees under 35 U.S.C. § 285 because the case was exceptional. "[Plaintiff] made arguments that were foreclosed by the Court, and [its] conduct before this and other courts strongly suggests [plaintiff's] goal in filing this action was settlement. Alone, these two observations support the Court’s finding that the case is exceptional. In addition, [plaintiff] failed to file final infringement contentions, failed to communicate with [defendant] even after multiple judges warned [plaintiff] about a possible dismissal for want of prosecution, was uncooperative throughout discovery, and failed to engage in meaningful settlement discussions. The Court, in its sound discretion, finds that the totality of the circumstances renders this case exceptional. The Court certainly has never seen another case like it."

Marshall Feature Recognition, LLC v. Wendy's International, Inc., 1-14-cv-00865 (ILND November 16, 2016, Order) (Coleman, USDJ)

Videophone Mailbox Patent Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion for judgment on the pleadings because the asserted claims of plaintiff’s videophone mailbox patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The [patent-in-suit] has two main components: a user station having a videophone and an electronically connected central data center. The videophone is an integrated device that includes a telephone, general purpose computer, a video screen, a memory chip, an interface chip, encoders, and means for inputting transaction information. . . . The broad general definition of a 'videophone' in the patent and the prior art indicates that the thrust of the patent is the interactive mailbox facility system, not the videophone itself. . . . Plaintiff argues that the inclusion of tangible components, alone, saves the patent from being abstract. The Federal Circuit has found, however, a number of claims involving tangible components to be abstract. . . . A comparison of the [patent] claims with prior art reveals that the claims focus on the functionality of conducting a transaction and disclose no more than the abstract idea of conducting transactions using conventional computer components, a telephone and centralized data storage."

Visual Interactive Phone Concepts, Inc. v. United States Cellular Corporation, 1-11-cv-05289 (ILND November 15, 2016, Order) (Hart, USDJ)

Patent for Securing a Server by Filtering Unauthorized Communications Not Ineligible at Pleading Stage ​

The court denied defendant's motion to dismiss on the ground that plaintiff’s patent for securing a server by filtering unauthorized communications encompassed unpatentable subject matter because defendant did not establish that the asserted claims lacked an inventive concept. "[T]he [patent’s] claims describe 'how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content.'. . . Despite the protection that firewalls and routers provide against low level protocols, service provider networks remain susceptible to unauthorized communications from specific application protocols. To remedy this, the [patent] implements a filter between the client and server that identifies and eliminates unauthorized requests. The [patent] tracks authorized or unauthorized requests by maintaining a protocol database 'which may be continuously updated on an ongoing, real-time basis and which more accurately reflects the set of allowable actions.'. . . When combining Claims 1, 15, 25, and 26, along with the related dependent claims, and construing these in favor of [plaintiff] as required at this stage in the litigation, the Court finds that the [patent] 'recite[s] a specific, discrete implementation of the abstract idea of filtering content.'"

F5 Networks, Inc. v. Radware, Inc., 2-16-cv-00480 (WAWD November 14, 2016, Order) (Jones, USDJ)

Video Content Distribution Patents Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s video content distribution patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] argues that, like [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)], the claims improve computer functionality. But that is not the case. Here, claim one of both the patents covers a method of receiving video data, limited to a certain length and frame rate, from a camera, operated by a user, transcoding the video data, and transferring the video data for distribution. In short the claims each cover the process of automatically transcoding user recorded video files to a predetermined format that is suitable for a television broadcast or publication on the internet. The Federal Circuit has repeatedly found similar claims directed toward gathering, processing, and outputting information are abstract. . . . [T]hese claims do not improve the functioning of the computer itself, they facilitate uploading video into a certain format, a process that was previously possible without the patents at issue. Thus the claims merely facilitate uploading video."

Youtoo Technologies LLC v. Twitter Inc., 3-16-cv-00764 (TXND November 10, 2016, Order) (Godbey, USDJ)

Procedural Conduct Previously Sanctioned is No Basis for Award of Attorney Fees

Following a stipulation of infringement and a bench trial on damages, the court denied plaintiffs' motion for attorney fees under 35 U.S.C. § 285 because the totality of the circumstances were not exceptional. "With the exception of the single patent infringement claim at issue in this Order, all of Plaintiffs’ claims were dismissed on the merits. The conduct for which Defendants were sanctioned related to procedural issues before this Court. Defendants have already received sanctions sufficient for the purpose of deterrence of future similar conduct. Once the legal issues were narrowed for trial by the Court, Defendants conceded liability and agreed to the entry of an award for damages against them. Looking at the allegations as a whole and the totality of the circumstances in this case, there is nothing that makes this matter any more exceptional than other patent cases involving similar conduct."

Loops, LLC, et al v. Phoenix Trading, Inc., et al, 2-08-cv-01064 (WAWD November 9, 2016, Order) (Martinez, USDJ)

Customer’s Benefit From Using Software Does Not Create Direction and Control Needed to Support Divided Infringement Claim​

The court granted defendant's motion for summary judgment that it did not infringe plaintiff's object tracking patent and rejected plaintiff's divided infringement argument. "[T]he Court is not convinced that [plaintiff's] theory as to how [defendant] conditions a customer’s participation in the accused system rises to the level of 'directs or controls.' [Plaintiff] contends that a customer’s use of the system is conditioned on the customer performing the defining steps because '[defendant] does not provide the full benefit of the accused fleet-tracking services unless customers enter the requisite data.' If that was sufficient to establish divided infringement under § 271(a), then the Supreme Court’s [Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (2014)] decision would have little meaning. It will always be true that a user’s benefit from using software will increase as the user explores additional functionality. That is not what the Federal Circuit meant by 'conditions participation.' [Plaintiff's] theory stands in stark contrast to the circumstances considered by the Federal Circuit in [Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015)], in which the accused infringer required customers to sign a standard form contract that delineated which claimed steps the customers 'must perform.' Although the Federal Circuit acknowledged that 'other factual scenarios may arise which warrant attributing others’ performance of method steps to a single actor,' [plaintiff] has not shown this to be such a scenario."

PerdiemCo, LLC. v. IndusTrack LLC, 2-15-cv-00727 (TXED November 8, 2016, Order) (Gilstrap, USDJ)

Lack of Full Statutory Estoppel Warrants Denial of Stay Pending Third Party IPR​

The court denied defendant's motion to stay pending inter partes review initiated by third parties in one of plaintiff's other actions because the lack of potential simplification of issues and undue prejudice did not favor a stay. "In this case, the [PTO] has not instituted review on all of the asserted claims nor have defendants agreed to be bound by the estoppel provisions of 35 U.S.C. § 315 as would the petitioner. . . . [T]he limited estoppel proposed by Defendants may not actually simplify the issues at all. . . . [U]nder the limited estoppel proposed here, Defendants could raise new obvious combinations using old prior art the PTO considered, provided at least one new (perhaps inane) reference not previously considered by the PTO is used to meet one claim element. This would not simplify the case; rather, it very well might complicate the case, by precipitating a dispute as to whether such a combination fell within the carefully worded limited estoppel, i.e., whether such combination fell within 'a specific ground(s) upon which those IPRs were instituted.'. . . [A] full statutory estoppel would avoid such disputes, but, as some have called it, 'estoppel light' would not. The absence of a full statutory estoppel not only increases the ability of litigants to 'game the system' and devise an unfair second bite at the apple, it also has the potential to increase rather than reduce the complexity of the validity issues that may come before the Court."

Intellectual Ventures II LLC v. Kemper Corporation et al, 6-16-cv-00081 (TXED November 7, 2016, Order) (Gilstrap, USDJ)

Plaintiff’s Arguments in IPR Warrant Additional Claim Construction Briefing in Related District Court Case​

The court granted defendant's motion for a second round of claim construction briefing because of positions plaintiff advanced in other litigation and inter partes review. "A fundamental dispute exist as to the proper construction of the 'dynamically updating' phrases from the [patents-in-suit]. . . . [In an earlier Markman hearing] Plaintiff argued for the plain and ordinary meanings of the terms. . . . During the subsequent IPR proceedings, Plaintiff arguably represented that the prior art submitted by Defendant did not meet the claim limitation because the prior art taught manually updating search results. Defendant contends that Plaintiff, having made these arguments before the PTAB, cannot now accuse products of infringing these claims where the 'dynamically updating . . .' step is allegedly performed only after user intervention. . . . There is good cause to depart from the default deadlines and obligations of the Patent Local Rules because resolving the targeted number of fundamental disputes described above will assist the fact finder in ruling on the patent infringement claims, help the parties tailor discovery to the scope of claims, and allow experts to render more precise opinions."

Finjan, Inc. v. Symantec Corporation, 3-14-cv-02998 (CAND November 4, 2016, Order) (Gilliam, USDJ)

Cloud Computing Management Patent Directed to Abstract Idea​

The magistrate judge recommended denying without prejudice defendants' motion to dismiss on the ground that plaintiff’s cloud computing management patent encompassed unpatentable subject matter, but found that the claims were directed toward an abstract idea. "[T]he Court determines that 'setting up and managing a cloud computing environment' is in fact an abstract idea. That concept -- without more -- appears to implicate an idea that is 'devoid of a concrete or tangible application[,]' or 'untethered from real-world application.' Nor has Plaintiff . . . sufficiently explained why considering the idea to encompass a 'cloud' environment would, on its face, necessarily conjure to mind sufficiently concrete structure or applications that would take the concept out of the realm of an abstract idea."

Kaavo Inc. v. Amazon.com, Inc. et al, 1-15-cv-00638 (DED November 3, 2016, Order) (Burke, MJ)

Defendant’s Conduct During Pre-Litigation Licensing Negotiations Warrants Enhanced Damages Award​

Following a jury verdict of willful infringement, the court partially granted plaintiff's motion for enhanced damages because of defendant's knowledge of the patent and license negotiation tactics. "[T]he Court is persuaded that [plaintiff] is entitled to enhanced damages toward the lower end of that spectrum. It is undisputed that [defendant] had detailed knowledge of the patents-in-suit long before the filing of this lawsuit. . . . [T]he Court makes note of with the manner in which [defendant] abruptly terminated licensing negotiations. After a long series of meetings between the parties . . . [defendant] invited [plaintiff's] representatives to Korea one last time and indicated that it would be making a monetary offer for a license. Rather than make an offer or engage in serious, good faith negotiations, [defendant] delivered a terse one-page presentation stating that a lawsuit at that time between the parties was 'preferable' to a license. . . . This should have been done by email. [Defendant's] conduct in making [plaintiff] send representatives to Korea to be handed a one-page document like this is clearly within totality of the circumstances which the Court should properly consider."

Core Wireless Licensing SARL v. LG Electronics, Inc. et al, 2-14-cv-00912 (TXED November 2, 2016, Order) (Gilstrap, USDJ)

Assertion of Privilege for Communications With In-House Counsel Requires Proof That Communications Qualify as Legal Advice​

The court granted in part plaintiff's motion for an order allowing it to use documents at trial over which defendant claimed privilege. "[W]ith regards to certain emails, [defendant] did not identify to the court, through its privilege log or otherwise, the employer of, or status as an attorney for [defendant] of, all of the individuals who made, or received copies of, these communications. [Defendant] did not show that the underlying facts in those emails or the emails themselves concerned a subject matter on which attorney’s advice was sought by [defendant]. To the extent that these may be communications among [defendant's] employees that were authorized to act on the legal advice — which is not clear to the court — [defendant] has not demonstrated that these communications qualify as legal advice rather than more generally relate to business decisions concerning finances or sales of products, etc. In today’s corporate environment, in-house legal counsel is often asked for input on and provides advice related to business decisions. Therefore, while [a recipient] may be an attorney, [defendant] has not met its burden to prove that these communications are privileged."

Barry v. Medtronic, Inc., 1-14-cv-00104 (TXED October 31, 2016, Order) (Clark, USDJ)

PTAB Analytics Indicate Record Highs for Bio/Pharma IPR/PGR Institution Rates

The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) offers a few avenues through which any person or entity can challenge the validity of an issued U.S. patent. Two of these processes are known as inter partes review (IPR) and post grant review (PGR). These two methods allow people other than the patent owner who have not previously challenged the validity of a patent through filing of a civil action in U.S. district court to seek review of a patent on a charge of invalidity.

Once a motion to challenge a patent’s validity through an IPR or PGR process is filed, the administrative judges at the PTAB decide whether to institute the review. If institution of the IPR or PGR is denied, then the legal matter is closed and the interested party filing for PTAB review must find another way to challenge the patent’s validity.

The rate of institution for IPRs and PGRs filed against patents in the pharmaceutical and biotech sectors is on the rise recently, according to statistics pulled from Docket Navigator’s data analytics services. Of the 231 combined IPR and PGR petitions filed against such patents during 2015, a total of 92, or 39.8 percent, were denied institution by the PTAB. Thus far in 2016, the PTAB has denied institution on only 34.3 percent of the 254 IPRs and PGRs filed this year against drug and biotech patents. This means that the percentage of review processes which are granted either in full or in part by the PTAB is increasing.

Meanwhile, institution denial rates for all other patent classifications has remained very steady over nearly two years. Through most of 2016, the rate at which IPR and PGR petitions on other patents are denied institution by the PTAB is 33.2 percent. This is very close to the same percentage of such petitions being denied institution in 2015, when 450 petitions of a total 1,349 IPR and PGR petitions were denied institution by the PTAB. It bears noting that the percentage of IPRs and PGRs which are granted institution has risen from 37.6 percent in 2015 up to 42.3 percent thus far through 2016, which means that the percentage of petitions which are only partially granted has dropped from 29 percent in 2015 down to 24.3 through most of 2016.

Overall, 2016 looks like it will see fewer IPR and PGR instituted decisions at the PTAB than last year. By the end of 2016, it’s estimated that a total of 1,266 IPR and PGR institution decisions will be filed, lower than the 1,349 such decisions filed through 2015. So while the percentage of petitions granted full institution by the PTAB is up in 2016, the total amount of institutions is down.

If the current trend continues, 2016 may be the first year where the number of petitions filed in the PTAB decreases from the previous year. Docket Navigator estimates that there will be 1,716 total petitions (IPR, PGR, and Covered Business Method Reviews) filed in 2016, compared with 1,798 that were filed in 2015.

Accurate data analytics can give both patent owners and legal teams a better idea of the challenges which are unique to a certain sector of technology. Docket Navigator delivers such analytics which can be helpful to those who need help navigating patent challenges at PTAB.

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Charts made using Docket Navigator's data.
This guest post was written by Steve Brachmann.

Wireless Communications Patents Not Ineligible Under 35 U.S.C. § 101​

The court denied defendants' motion for judgment on the pleadings on the ground that plaintiff’s wireless communications patents encompassed unpatentable subject matter because the claims were not directed toward abstract mathematical algorithms. "Claims 'improv[ing] the functioning of [a] computer' or 'improving an existing technological process' are patent-eligible even if they rely on a mathematical algorithm. . . . The [two] patents describe problems and solutions firmly rooted in technology used for wireless communications. Specifically, [one] patent explains that the number of code sequences available in the prior art to maintain orthogonality was 'limited.'. . . Similarly, the [other] patent describes several problems in the prior art with transmitting preamble sequences over a random access channel. Specifically, prior art systems used a preamble of fixed length, limiting flexibility under different cell sizes. . . . Because the [two] patents are directed to technological improvements resolving specific problems in a wireless communications system, the court finds that they claim patent-eligible subject matter under § 101."

Evolved Wireless, LLC v. Apple Inc., 1-15-cv-00542 (DED October 31, 2016, Order) (Robinson, USDJ)

Willfulness Claim May be Based on Advanced Notice of Imminent Patent Issuance​

The court denied defendant's motion to dismiss plaintiff's claims for willful infringement and enhanced damages because plaintiff filed suit on the day its patent-in-suit issued. "In its complaint, [plaintiff] alleges several instances in which [defendant] had 'advance notice' of [the patent's] issuance. . . . Furthermore, the fact that these same parties are currently involved in litigation involving the alleged infringement of another . . . patent relating to the same application could conceivably contribute to a finding of willfulness. Taking [plaintiff's] allegations as true, the Court cannot say that it is implausible that [defendant] had knowledge of the patent at the time that the alleged infringement began and [plaintiff] filed suit. . . . Unlike a mere patent application, a Notice of Allowance, and particularly an Issue Notification, are strong indications that the patent will issue."

Malibu Boats, LLC v. MasterCraft Boat Company LLC (TV1), 3-16-cv-00082 (TNED October 28, 2016, Order) (Varlan, USDJ)

Halo Does Not Disturb Jury Finding of Willfulness​

Following a jury trial, the court denied defendants' motion for judgment as a matter of law that they did not willfully infringe plaintiff's patents in light of the Supreme Court's intervening decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016). "[T]he jury found that [plaintiff] had proven by clear and convincing evidence that Defendants willfully infringed the asserted claims. . . . [A]fter the jury returned a verdict, but before final judgment, the Supreme Court determined that the Federal Circuit’s two-part test for enhanced damages was inconsistent with 35 U.S.C. § 284, repealing [In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007)]. . . . By returning a verdict of willful infringement, the jury found that Defendants acted 'recklessly' . . . and that they 'actually knew or should have known that [their] actions constituted an unjustifiably high risk of infringement of a valid patent.'. . . Because the jury’s finding was made under the higher clear and convincing standard, the Court upholds the verdict and moves to the next stage of the enhancement inquiry."

NobelBiz, Inc. v. Global Connect, LLC, 6-12-cv-00244 (TXED October 27, 2016, Order) (Schroeder, USDJ)

Judge Clark Issues Pretrial Order Precluding Social Media Contact With Jury Pool​

The court issued a pretrial order prohibiting counsel and the parties or their agents from contacting potential jurors. "In order to assist counsel in preparation for voir dire, the court intends to provide a list of potential jurors that will form the venire in this case a few days prior to the start of trial. . . . All attorneys, parties, and their respective employees and agents, including jury consultants, are prohibited from personally or through another sending an access request to the electronic social media platform of any juror or potential juror, including for example a Facebook friend request or an Instagram request to 'Follow' that juror. Other forms of ESM include LinkedIn, Twitter, and Instagram. . . . All attorneys, parties, and their respective employees and agents, including jury consultants, are prohibited from conducting or causing another to conduct any type of investigation by which a juror or potential juror may become aware that his or her ESM is being reviewed or scanned. . . . This of course requires that any individual using ESM to investigate jurors review the terms and conditions, including privacy features, which change frequently, as well as his or her own network settings before investigating jurors on such platforms."

Barry v. Medtronic, Inc., 1-14-cv-00104 (TXED October 26, 2016, Order) (Clark, USDJ)

Attorney's Former Representation of Plaintiff Justifies Disqualification of Defense Counsel​

The court granted plaintiffs' motion to disqualify defense counsel because of the appearance of impropriety. "The current configuration of counsel presents an inescapable appearance of impropriety. . . . The attorney in question worked for 186.7 hours on [plaintiffs'] patent infringement claims and in representing it before the patent office. . . . For over seventeen months during the pendency of this proceeding, the attorney's biographic pages on [defense counsel's] website listed his representation of [plaintiffs] . . . as one of the major accomplishments of his career. How could the plaintiff or an impartial and objective outside observer ignore such a patent appearance of impropriety? . . . [T]he Court finds there is no evidence to suggest that there has been an improper exchange of privileged information. However, such a factual finding does not outweigh the appearance of impropriety. . . . The growth of multi-jurisdictional practice by law firms coupled with the increased mobility of practicing attorneys places added pressure upon law firms to deal with the issues raised in these Motions. However, the traditional and well founded concept of the appearance of impropriety cannot yield to the added expense and inconvenience inherent in the enforcement of longstanding ethical concepts. Judges themselves must not only avoid the appearance of impropriety but also instruct juries to do the same. No less should be expected of the attorneys who practice before the bar of this Court. "

Audio MPEG, Inc. et al v. Dell, Inc., et al, 2-15-cv-00073 (VAED October 25, 2016, Order) (Morgan, SJ)

Coalition for Affordable Drugs Succeeds in Invalidating Gattex Patent Claims​

In a final written decision, the Board found claims of a patent directed to a stabilized formulation of GLP-2 unpatentable under 35 U.S.C. § 103(a). "That the inventors of the ’866 patent discovered that a particular GLP- 2 analog performs best with a certain combination of amino acid and sugar, namely histidine and mannitol, does not persuade us by itself that the subject matter of the claims of the ’866 patent is nonobvious. The preponderance of evidence of record shows that the identification of the optimal sugar and amino acid to add to a formulation for stability purposes was nothing more than routine experimentation. Here, in addition to the disclosures of [a 1999 journal paper] and [U.S. patent '216], we credit the testimony of [petitioner's declarant] and his analysis of publications authored by [patent owner's expert] that describe 'rational' design choices for excipients in lyophilized protein formulations in order to optimize the formulation. . . .Thus, we are not persuaded that this is a case where there were 'numerous parameters' to try so as to support a conclusion of nonobviousness. . . . [T]he use of histidine and mannitol in protein formulation was disclosed in the prior art and the experimentation needed to confirm the successful application with GLP-2 analogs was 'nothing more than [the] routine application of a well-known problem-solving strategy, . . . "the work of a skilled [artisan], not of an inventor."'"

Petition for Inter Partes Review by Coalition for Affordable Drugs II, LLC, IPR2015-01093 (PTAB October 21, 2016, Order) (Snedden, APJ)

Delivery Notification Patent Ineligible Under 35 U.S.C. § 101​

The court denied plaintiff's motion to reconsider an earlier order granting defendant's motion for judgment on the pleadings that plaintiff’s delivery notification system patent encompassed unpatentable subject matter. "[Plaintiff] argues that the Court engaged in impermissible hindsight bias 'by viewing the [patent] in light of the ubiquity of wireless messaging technology today,' instead of determining whether the limitations in the patent were well understood, routine, or conventional in the art in 1996, when the patent was filed. . . . [Plaintiff] misreads and mischaracterizes the Court’s holding that [plaintiff] has 'patented a method of delivery notification that is the equivalent of a method implemented ‘through a computer’ or ‘over the internet.’'. . . . The Court is permitted to take note of 'fundamental economic concepts and technological developments' when making a § 101 determination, observes that sending wireless page messages was well-known in 1996. . . . The patent sets forth steps by which conventional technologies (wireless paging systems) do conventional things (relay data and send messages through, in essence, a communications center) to achieve an abstract aim: notifying a customer if and when their package has been delivered."

Mobile Telecommunications Technologies, LLC v. United Parcel Service, Inc., 1-12-cv-03222 (GAND October 21, 2016, Order) (Totenberg, USDJ)

CEO’s Indirect Financial Interest in Litigation Does Not Preclude Expert Testimony​

The court denied defendant's motion to preclude plaintiff's CEO from providing expert testimony due to his financial stake in the case. "[Defendant] moves to preclude [plaintiff's CEO] from testifying as an expert witness, based on his 'blatant and direct financial interest in the outcome of this case.'. . . [Defendant] analogizes this situation to one in which a retained expert will receive greater compensation depending on the outcome of a case, a situation in which some courts preclude experts from testifying. . . . [Defendant's] clever argument has some appeal, but ultimately fails. . . . Any recovery in this case will initially go to [plaintiff], not [its CEO]. . . . In the end, the Court concludes that [the CEO's] indirect financial interest in the outcome of the litigation . . . can be handled appropriately on cross-examination."

Andover Healthcare, Inc. v. 3M Company, 1-13-cv-00843 (DED October 20, 2016, Order) (Stark, USDJ)

Upon Reconsideration, Electric Power Group Renders Fleet Monitoring and Tracking Patent Invalid Under 35 U.S.C. § 101​

Following the recent Federal Court decision in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the court reconsidered an earlier order that denied defendant's motion to dismiss because the asserted claims of one of plaintiff’s machine communication system patents encompassed unpatentable subject matter and, upon reconsideration, found that the claims lacked an inventive concept. "Most recently, the Federal Circuit, in Electric Power Group, has clarified that 'enumerating types of information and information sources' will not turn an abstract idea into one that is patent-eligible. In this case, the fact that the scope of the [patent] is limited to freight assets provides no inventive concept. Moreover, the [patent] does not require any components that could be considered an 'advance over conventional computer and network technology.'. . . Additionally, while in its initial assessment of the [patent], the Court expressly relied on 'the specialized monitoring features described in [the patent], coupled with the format translation,' Electric Power Group is clear that identifying parameters for monitoring does not constitute an inventive concept. . . . [T]he claimed invention does not solve a problem deeply rooted in the context of 'computer networks.' The issue of incompatibility in communication has existed as long as language itself."

ORBCOMM, Inc. v. CalAmp Corp., 3-16-cv-00208 (VAED October 19, 2016, Order) (Hudson, USDJ)

Zone Dependent Payout Gaming Patent Not Ineligible Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s zone dependent payout gaming management patent encompassed unpatentable subject matter because the asserted claim was not directed toward an abstract idea. "Determining game configurations (based on some set of rules, e.g., an algorithm, list, etc.), generating game outcomes based on the configurations (based on some set of rules, e.g., an algorithm, list, etc.), determining payouts based on game outcomes (based on some set of rules, e.g., an algorithm, list, etc.), and crediting players based on payouts (accounting) are abstract ideas that can be conducted in one’s mind. At least one aspect of the process, however, requires activity outside of one’s mind: determining the physical location of the mobile gaming device . . . via the computer system. That is concrete enough to take the claim outside the scope of [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).]'s 'abstract idea' exception to patentability under § 101. The location of the mobile gaming device via computer is a limited, concrete, physical task. . . . The integration of the non-abstract function of determining the mobile gaming device location via computer with the other processes for which the computer is used renders the invention as a whole patentable even if certain elements might not be separately patentable."

CG Technology Development, LLC et al v. Bwin.Party Digital Entertainment PLC et al, 2-16-cv-00871 (NVD October 18, 2016, Order) (Jones, USDJ)

Computer Audio Communication Patent Not Ineligible Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s computer audio communication system patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The question of unpatentability of abstract ideas under [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)] is not whether an invention can be understood or described in the abstract, i.e., in one’s mind (any patent claim that could not be would fail for lack of enablement), but whether the invention can be practiced in the abstract (mathematical calculations, risk-hedging, etc). The Court is not convinced that Claim 1 is directed to an abstract concept. Rather, it is directed to a concrete, physical task. . . . [C]onverting sound to electronically stored information (and vice versa after transmitting data between two computers) is not something that can be done without the claimed apparatus (or a similar apparatus). The 'computer station' claimed here is not utilized simply for its generalized computing capabilities, i.e., its ability to substitute for a human mind, pencils and paper, etc. to perform an abstract task. On the contrary, Claim 1 uses the computer station for a particular, concrete method of communication inherently tied to a machine with particular physical capabilities. . . . Sound waves are not abstract concepts but fluctuations in air pressure in the physical world. Nor are electronic data packets abstract concepts."

2-Way Computing, Inc. v. Grandstream Networks, Inc., 2-16-cv-01110 (NVD October 18, 2016, Order) (Jones, USDJ)

Expert’s Apportionment Opinion Excluded for Relying on Consumer Survey Concerning Unrelated Features

​ The court granted defendants' motion to exclude the testimony of plaintiff's damages expert regarding apportionment as unreliable. "[Plaintiff's expert] essentially opines that the smallest salable unit of the Accused Products is the smartphone handset (not the internal chipset) and, in an effort to further apportion, constrains the total royalty base by a factor of one-tenth. He opines that this 10% factor adequately accounts for the proportion of total sales that is attributable to only the patented feature based on his review of results from two consumer surveys . . . that report that consumers value 'fingerprint scanning security' and 'data security and privacy.' Neither of the surveys seem to indicate customer demand for the digital watermarking technology. [The expert's] use of surveys is not unsound, but there is too great an analytical gap between the survey data and his apportionment factor of 10%, making his apportionment opinions excludable. . . . [The expert] did not separate out the patented feature and therefore did not adequately apportion. . . . He does not offer any 'credible economic analysis' to support his conclusion, making the 10% factor seemingly 'plucked out of thin air based on vague qualitative notions' and thus excludable."

Blue Spike, LLC v. Huawei Technologies Co., Ltd., 6-13-cv-00679 (TXED October 14, 2016, Order) (Clark, USDJ)

Conjoint Survey Excluded for Failure to Determine Economic Value of Patented Features Relative to Non-Patented Features

​ The court granted defendant's motion to exclude the testimony of plaintiffs' damages expert regarding his choice-based conjoint consumer survey as unreliable. "[The expert's] study did not attempt to determine a real world price for the four patented features, and did not endeavor to value any non-patented features or to determine the value of the four patented features relative to the multitude of non-patented features in the accused devices. . . . The only tested features in [the expert's] study, apart from the unimportant language distracter, were the four patented features. Thus, the only 'value' expressed in [his] economic values is the relative value of the four asserted patented features to one another. [The expert's] conjoint results express nothing about the value of the four patented features relative to other important features of the accused devices. . . . [T]he Court will exclude [the expert's] conjoint study and testimony completely for a lack of relevance to the facts of the case based on [plaintiffs'] concession that [the expert's] conjoint study is unrelated to his other damage methodologies."

Visteon Global Technologies, Inc., et. al. v. Garmin International, Inc., 2-10-cv-10578 (MIED October 14, 2016, Order) (Borman, USDJ)

Casino Gaming Advice Patent Ineligible Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiffs’ casino gaming advice patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[T]he concept of observing game events to determine the most favorable strategies for a player’s next move is a fundamental practice long prevalent in gaming, and is understood -- at least at a basic level -- even by gaming novices. Plaintiffs argue that 'the Internet-based nature of the technology at issue' (i.e., the fact that isolated users play against each other in remote locations) is sufficient to make the game advisor patent-eligible. However, '[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet.'”

CG Technology Development, LLC et al v. Zynga, Inc., 2-16-cv-00859 (NVD October 13, 2016, Order) (Jones, USDJ)

Drone Target Tracking Patent Not Ineligible Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s drone target tracking patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The asserted dependent claims include additional physical limitations. For example, Claim 6 discloses [an Unmanned Aerial Vehicle] with a 'plurality of rotors,' which is a physical component of the UAV, serving the function of 'generat[ing] lift.' Claim 7 discloses an imaging device coupled to the UAV, which is again a physical relationship between tangible components. These tangible claim elements suggest that the focus of the claims addresses more than just the abstract idea of automatic target tracking. . . . [Defendant's] characterization of the invention as 'automatic tracking of a target' also ignores the stated purpose of the invention, which is to provide solutions to several problems faced specifically in UAV technology. . . . [T]he claims at issue are not directed to an abstract idea within the meaning of [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)]. Rather, they are directed to specific improvements to the way UAVs can be operated to navigate under certain circumstances and to track targets."

SZ DJI Technology Co., Ltd. et al v. Yuneec International Co. Ltd. et al, 5-16-cv-00595 (CACD October 13, 2016, Order) (O'Connell, USDJ)

Responding Party's Discovery Obligation Not Affected by Requesting Party's Subjective Motive

The court granted in part plaintiff's motion to compel documents and rejected defendant's argument that plaintiff was seeking documents for an improper purpose. "Defendant argues that it should be excused from producing documents because '[plaintiff] seeks documents for an improper purpose in order to obtain a competitive advantage.' Defendant has failed to demonstrate that producing appropriate documents marked 'Highly Confidential – Attorney Eyes Only' would be insufficient to protect its competitive interests. Moreover, parties are entitled to discovery of materials that are relevant to the claims and defenses and proportional to the needs of the case, without any inquiry into their subjective motive."

Ecojet, Inc. v. Luraco, Inc., 8-16-cv-00487 (CACD October 12, 2016, Order) (Scott, MJ)

Glass Recycling Patent 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 glass recycling patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "As a whole, the claims of the [patent-in-suit] describe a manufacturing process for recycling batches of mixed colored cutlet glass into glass bottles with desired properties. The claims require steps that the glass-maker must physically carry out -- he cannot simply use his mind or a pen and paper to perform them. . . . [Defendant] analogizes the [patent] to the one found invalid in [another case]. . . . [That patent] was directed to a method of updating alarm limits in a catalytic conversion process. . . . The court found that, at its core, the patent claimed only a method of measuring and calculating, using a mathematical formula -- an abstract idea that, without an inventive or physical application, was unpatentable. . . . Here, the [patent-in-suit] . . . claims a step-by-step industrial process for creating a one-color glass end-product from recycled, mixed-color glass. . . . In analyzing the specific claims of the [patent-in-suit], and using prior § 101 case law only as a lighthouse in a notoriously foggy area of the law, the court concludes that the [patent-in-suit] falls within the § 101 categories of patentable subject matter."

Green Mountain Glass, LLC et al v. Saint-Gobain Containers, Inc. d/b/a Verallia North America n/k/a Ardagh Glass Inc., 1-14-cv-00392 (DED October 11, 2016, Order) (Sleet, USDJ)

Finding of Invalidity Under 35 U.S.C. § 101 Collaterally Estops Infringement Claims as to Substantially Similar Patent​

The court granted defendants' motion for judgment on the pleadings because the asserted claims of plaintiff’s remote monitoring apparatus patents encompassed unpatentable subject matter and found that plaintiff was collaterally estopped from pursuing its claims as to one patent-in-suit after a related patent was found invalid in an earlier case. "[T]he Federal Circuit authority above suggests that collateral estoppel applies not only with respect to [the previously invalidated patent], but also with respect to [another patent-in-suit], which is largely duplicative of [the first]. While the Patents each span approximately 100 pages, both Patents in substance claim invention of a system for monitoring a vehicle or premises using two computers located remotely from the vehicle or premises: one computer that records audio or video from the vehicle or premises, and a second computer that receives audio or video information transmitted by the first computer via the Internet. . . . [T]he fact that the Patents may use 'slightly different language to describe substantially the same invention' does not defeat the application of collateral estoppel."

Joao Control & Monitoring Systems, LLC v. Digital Playground, Inc. et al, 1-12-cv-06781 (NYSD September 30, 2016, Order) (Sullivan, USDJ)

Preliminary Injunction Denied in Light of Pending IPR of Similar Patent Claims​

The court denied plaintiff's motion for a preliminary injunction prohibiting the sale of the accused DNA sampling products because plaintiff failed to establish a likelihood of success on the merits due to pending inter partes review proceedings involving a related patent. "Plaintiff has not rebutted Defendants’ argument that pending IPR proceedings on claims in a related patent similar to those asserted in this case raise a substantial question about the validity of certain of the asserted claims in this case. While the asserted claims of the [patent-in-suit] may not be identical in every respect to those currently under review before the PTAB, the Court finds that the claims are sufficiently similar to those in the related [patent] currently under IPR to raise serious questions about the validity of the asserted claims in this case."

DNA Genotek Inc. v. Spectrum Solutions LLC et al, 3-16-cv-01544 (CASD October 6, 2016, Order) (Sammartino, USDJ)

MPEG Decoder Patents Not Ineligible Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s MPEG decoder system patents encompassed unpatentable subject matter because the asserted claims did not lack an inventive concept. "[Defendant] argued that the Court could only consider the language of the claims when determining whether the claims contained an inventive concept. However . . . this Court can rely on 'the claims or the specification' to determine whether a combination of abstract ideas forms an inventive concept. . . . Here, the Court finds that [the claims] attempt to improve a technological issue. . . . As described in each specification, unary binarization can create codewords that are very long. In addition, a disadvantage of binary binarization is that the codewords become indistinguishable. . . . Unlike in [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)], the claims do not simply use general computers to perform abstract ideas; instead, the mathematical formula attempts to improve the functioning of compressing and decompressing video, images, and signals."

Broadcom Corporation et al v. Sony Corporation et al, 8-16-cv-01052 (CACD October 5, 2016, Order) (Selna, USDJ)

Request for Recall of Products Sold Before Preliminary Injunction Denied ​

The court denied plaintiff's motion to modify a preliminary injunction to require defendants to recall their accused products. "[T]hat request could entail substantial additional cost and harm to Defendants, and the ramifications of such an action have not been fully briefed. Moreover, Plaintiff was able to point to only one case in which a court took such a measure, ordering the recall of inventory that was sold lawfully prior to the entry of an injunction. The Court therefore declines to modify the order as such."

The Chamberlain Group, Inc. v. Techtronic Industries Co., Ltd. et al, 1-16-cv-06097 (ILND October 4, 2016, Order) (Leinenweber, SJ)

Willful Infringement Justifies 2X Damages Enhancement

Following a jury verdict of willful infringement, the court granted in part defendant's motion for enhanced damages and doubled the jury's award. "[Defendant's] conduct is egregious because it had direct notice from [plaintiff] and [plaintiff's] outside counsel of the [patent-in-suit] from the second month of the intense lengthy installation project with [defendant's customer]. [Defendant] estimated the entire installation at [its customer's facility] took 18-24 months and [defendant] and [its customer] were on notice of possible infringement for almost the entire duration of the project. . . . We do not find [defendant's] conduct so egregious to warrant treble damages under § 284 because two Read factors, closeness of the case and behavior as a party to litigation, weigh in [defendant's] favor."

Dominion Resources, Inc. et al v. Alstom Grid, Inc., 2-15-cv-00224 (PAED October 3, 2016, Order) (Kearney, USDJ)

Eligibility Challenge to Intoxication Monitoring Patent Premature Prior to Claim Construction​

The court denied without prejudice defendant's motion to dismiss on the ground that plaintiff's intoxication monitoring patent encompassed unpatentable subject matter because claim construction had not occurred. "Defendant moves to dismiss Plaintiff’s complaint on the ground that the [patent] is directed to the patent-ineligible, abstract idea of 'using the results of a breathalyzer test to predict how intoxicated a person will be in the future'. . . . Plaintiff responds that the claims of the [patent] constitute a patentable improvement and transformation of an existing technological process — breath alcohol content analysis using a breathalyzer. . . . Given this dispute, the Court finds claim construction necessary to determine whether the [patent] is directed at a patentable concept because it claims an improvement to breathalyzer technology. Defendant’s motion is premature because the Court needs to construe material disputed claims in order to fully understand the basic nature of the claimed invention."

KHN Solutions Inc. v. Vertisense Inc., 3-16-cv-00962 (CAND September 30, 2016, Order) (Gilliam, USDJ)

Eligibility Challenge to Marketing Systems Patents Premature Prior to Claim Construction​

The court denied without prejudice defendants' motion to dismiss on the ground that plaintiff's marketing system patents encompassed unpatentable subject matter because claim construction had not yet occurred. "Defendants argue that the claims at issue 'merely recite automation of traditionally mental and manual methods of using generic computer components and simplistic flow charts.' Defendants further argue that claim construction is not a necessary prerequisite given that all of the Asserted Patents would be directed to patent-ineligible subject matter 'under any reasonable construction,' and that the Court previously analyzed and construed the claims in each of their collective Asserted Patents during a prior case. . . . [T]he Court is persuaded that resolution of the issues urged in the motion is more appropriately addressed after the issuance of the claim construction order. The Federal Circuit has recognized that, as a general matter, 'it will ordinarily be desirable — and often necessary — to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.'"

Phoenix Licensing, LLC et al v. Advance America, Cash Advance Centers, Inc., 2-15-cv-01367 (TXED September 30, 2016, Order) (Gilstrap, USDJ)

Electronic Document Encryption Patent Not Ineligible Under 35 U.S.C. § 101​

The court denied defendant's motion for judgment on the pleadings on the ground that plaintiff’s electronic document encryption patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The patent's specification describes problems associated with 'typical' prior art encryption systems, such as incompatibility with EDMS systems and general difficulty of use. The [patent] purports to solve these problems using a method that the PTO determined was non-obvious over references considered during the ex parte reexamination of the patent. . . . Defendant's broad articulations of abstract ideas do not capture what claim 31 is 'directed to' because they do not take into account the two separate tables used to distinguish claim 31 over the prior art. Although not every difference between a purported invention and the prior art is necessarily relevant under a § 101 analysis, here it is plain from the reexamination prosecution history (with support in the specification) that the two-table limitations added during reexamination are sufficiently important that they must be included in any accurate description of the nature of claim 31 as a whole. . . . Moreover, encryption is a relatively sophisticated, computer-implemented method of protecting data, unlike the simple, human-executable method described in Defendant's analogy."

MAZ Encryption Technologies LLC v. Blackberry Corporation, 1-13-cv-00304 (DED September 29, 2016, Order) (Stark, USDJ)

Remote Access Software Patent Not Ineligible Under 35 U.S.C. § 101 at Pleading Stage​

The court rejected the special master's recommendation to dismiss plaintiff's infringement action under 35 U.S.C. § 101 because the asserted claims of plaintiff’s patent for remotely accessing and controlling an application over a network did not encompass unpatentable subject matter because the claims contained an inventive concept. "[T]he Court agrees with Plaintiff that — at least in this procedural posture — its patent can survive § 101. Taking the facts most favorable to Plaintiff, the patent describes a system and method which overcomes a flaw in existing technology — the inability to remotely install software on-demand without pre-installation. . . . In other words, the [patent] is a technological advance that improves the remote control field. . . . The Court is concerned that finding otherwise would convert this motion into a novelty or obviousness analysis under §§ 102 and 103. . . . The Court recognizes that the distinction between determining whether the current invention improves an existing technological process and whether it is otherwise found in or made obvious by the prior art can be a challenging distinction. But the Court finds that here — at least when construing the facts as it is required to on a motion to dismiss — the [patent] improves remote access software in that it does not require pre-installation of software and can be completed on demand. Such a system and method solved a problem in the technology itself and thus is an inventive concept."

Tridia Corporation vs. Sauce Labs, Inc., 1-15-cv-02284 (GAND September 28, 2016, Order) (May, USDJ)

Partial Final Judgment Entered as to Invalidity of Remicade Patent​

The court granted defendant's motion for judgment under Rule 54(b) that one of plaintiffs' chronic pain drug patents was invalid due to obviousness-type double patenting and found that the public interest weighed in favor of an immediate appeal. "[T]he risk of being required to pay [plaintiff] for its lost profits if the [invalidated] patent is valid and infringed could delay the sale of [defendant's drug product] in the United States. If so, [plaintiff] would continue to have a monopoly generating more than $4 billion a year based on a patent this court has found to be invalid. . . . More significantly, uncertainty concerning whether [defendant] may be enjoined from selling [defendant's drug product] in the future could discourage doctors from prescribing it. Most importantly, the public interest in making [defendant's drug product] available to doctors and their patients if it does not infringe a valid patent will be served by an immediate appeal. . . . [Plaintiff's drug product] can cost up to $20,000 per patient per year. . . . A less expensive biosimilar alternative to compete fairly with [plaintiff's drug product] would be in the public interest."

Janssen Biotech, Inc. et al v. Celltrion Healthcare Co., Ltd. et al, 1-15-cv-10698 (MAD September 26, 2016, Order) (Wolf, USDJ)

Counsel's Prior Substantial Representation of Manufacturer Does Not Justify Disqualification in Lawsuit Against Manufacturer’s Customers​

The court denied a nonparty manufacturer's motion to disqualify plaintiff's counsel in a case against the manufacturer's customers even though the law firm had previously served as the manufacturer's prosecution and litigation counsel and the representations were substantially related. "'[Plaintiff's counsel] handled a wide range of matters for [the manufacturer], including major litigations, patent prosecution matters, strategic portfolio counseling, patent harvesting, due diligence for portfolio acquisition, competitive analysis, and behind-the-scenes offensive and defensive litigation case support.' [The law firm] was involved in prosecuting thousands of [the manufacturer's] U.S. and foreign patents, including hundreds of [the manufacturer's] U.S. patents relating to digital subscriber line ('DSL') and MoCA technologies. . . . [The firm] handled patents covering technology which relates to some of the DSL chips at issue in these cases . . . . I recognize that [counsel's] relationship with [the manufacturer] was long in its duration and wide in its breadth. Although that representation was substantial, generally speaking, it did not touch the subject matter of these cases to any great extent. . . . [The manufacturer] has shown that confidential information acquired by [the law firm] may be of some relevance to this action. [The manufacturer] has not, however, shown that [the firm] has acquired confidential information of such pertinence that [the firm's] continued representation of [plaintiff] would unfairly harm [the manufacturer]. . . . These cases are, to put it mildly, complex. [Plaintiff] accuses hundreds of products of infringing up to thirty-two patents covering DSL technology. If [plaintiff's law firm] were disqualified, [plaintiff] would be prejudiced beyond mere inconvenience. Replacing [plaintiff's firm] and getting new counsel up to speed, would come at a substantial cost-in terms of both time and money. . . . Additionally, and not insignificantly, [plaintiff] did not sue [the manufacturer]."

TQ Delta, LLC v. Pace Americas, LLC et al, 1-13-cv-01835 (DED September 26, 2016, Order) (Andrews, USDJ)

Protective Order’s Special Handling Requirement for Confidential Information Not "Mere Boilerplate"

The court referred to the magistrate judge defendant's motion for an order of contempt for plaintiff's disclosure of defendant's highly confidential information in open court. "By long tradition, when a lawyer wishes to reveal in open court information whose disclosure is restricted by a protective order, the lawyer must first explain the restriction to the judge and (i) ask to seal the courtroom and transcript or (ii) hand up a copy of the restricted information to the judge. . . .The special handling required by protective orders is not mere boilerplate as respondents argue. The special handling is the quid pro quo for gaining access to sensitive information. Those who need to maintain their information in privacy will resist even court orders to allow discovery if the lawyers who want access can brush off the special handling as boilerplate. . . . All that remains is the desire by movant to be reimbursed for expenses of an earlier motion to seal. To get there, movants want a finding of contempt of court. That seems heavy handed, perhaps even vindictive, when all that remains at stake is a few dollars in an ocean of money spent on this case. Everyone involved is hereby referred to [the magistrate judge] . . . to settle the balance of this motion, failing which the Court will resolve it."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND September 23, 2016, Order) (Alsup, USDJ)

PTAB’s Finding of No Corresponding Structure Does Not Alter Court’s Earlier Finding of No Indefiniteness

​ The court granted plaintiff's cross-motion for summary judgment that its electromagnetic radiation testing patent was not invalid because the PTAB's findings during inter partes review did not provide a basis for the court to reconsider its claim construction. "Before the PTAB, the parties made the same arguments they make here. . . . [T]he PTAB . . . found that the [patent-in-suit's] Specification itself failed to 'clearly associate the combination of separate structures disclosed in Figures 1 and 2 as corresponding to the claimed dual functions.' . . . Importantly, and because its authorizing statute limits inter partes review to patentability determinations, the PTAB expressly disclaimed any indefiniteness analysis. . . . At bottom, and regardless of whether the analysis is framed in patentability or indefiniteness terms, the PTAB and this Court simply disagree that the [patent-in-suit] fails to 'clearly associate' the structures in Figures 1 and 2 with the 'both' pivot function. And because neither binding precedent, the parties’ arguments before this Court, nor the analytical heft of the PTAB decision demand that this Court reverse course, its prior indefiniteness finding stands. . . . The Court accordingly disagrees with the PTAB and [defendant]. Claim 12, as the Court previously found, clearly links its functions with corresponding structure. It therefore is sufficiently definite."

Microwave Vision, SA et al v. ESCO Technologies, Inc. et al, 1-14-cv-01153 (GAND September 20, 2016, Order) (Jones, USDJ)

Location Information Management Patents Not Ineligible Under 35 U.S.C. § 101​

The magistrate judge recommended denying defendants' motion for judgment on the pleadings on the ground that plaintiff’s location information management patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "Defendants contend that all asserted claims of all asserted patents embody an abstract idea — 'managing the dissemination of location and/or event information within a community. At most, they recite different ways of organizing people into groups and managing the dissemination of location/event information through use of conventional computer and GPS technology.' . . . [I]t is improper to 'simply ask whether the claims involve a patent-ineligible concept.' To be sure, 'mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.' But this is not a license to delete all computer-related limitations from a claim and thereby declare it abstract. . . . Moreover, the mere fact that all the recited computer components are 'conventional' because the applicant did not invent an entirely new kind of computer is not inherently troubling. . . . [C]laim 6 recites a specialized procedure for accomplishing this result by using four different access codes, an administrator, users, location information, zones, and a variety of other features all working together in a particular fashion. Defendants cannot argue that there is a danger of claim 6 'tying up the future use' of the concept of location information management and dissemination."

PerdiemCo, LLC. v. IndusTrack LLC, 2-15-cv-00727 (TXED September 21, 2016, Order) (Payne, MJ)