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)

Willfulness Expert Excluded as Unhelpful to Jury​

The court granted plaintiff's motion to exclude the testimony of defendants' expert regarding willfulness as unhelpful. "[The expert's] testimony on willfulness is not helpful to the jury, as it does not concern a matter beyond the understanding of the average person. There is no reason why the finder of fact could not evaluate any evidence and decide whether Defendants’ conduct was 'willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or ̶ indeed ̶ characteristic of a pirate.' Because [the expert's] opinion on whether Defendants’ conduct was willful would not assist the trier of fact, it is not relevant. Further, there is no reason to believe that [the expert] has any particular qualifications above and beyond that of a layperson to determine the state of mind of another. . . . Whether or not [defendants'] actions constituted willful infringement and what weight should be given to outside counsel’s opinions on infringement is the province of the fact finder."

Loggerhead Tools, LLC v. Sears Holdings Corporation et al, 1-12-cv-09033 (ILND September 20, 2016, Order) (Darrah, USDJ)

3-D Workspace Patents Ineligible Under 35 U.S.C. § 101

​ The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s 3-D workspace patents encompassed unpatentable subject matter and found that the claims lacked an inventive concept. "[N]either the problem [plaintiff's] patents purportedly solve (limited screen space for the display and organization of documents) nor the suggested solution (arranging documents by frequency of use) is 'necessarily rooted in computer technology.' To the contrary, storing documents that are less frequently used in a library or on a bookshelf as opposed to on one’s desk is a common solution to a common problem of limited space in physical offices everywhere. . . . The elements of the claims that relate to the means of moving and positioning the document objects suffer from the same lack of inventive concept. According to [plaintiff], the 'touch and drop' and 'flicking' gestures were 'improvements specifically adapted for a 3-D space' because 'known techniques for operating a 2-D workspace such as drag and drop techniques were not efficient.' But the patents do not disclose any specific ways, hardware or software, that a user may program or implement these gestures. . . . An additional problem for [plaintiff] is that the patents and claims here, which are defined in terms of their functionalities only, raise a serious preemption concern."

TriDim Innovations LLC v. Amazon.com, Inc., 3-15-cv-05477 (CAND September 19, 2016, Order) (Donato, USDJ)

Preliminary Injunction Denied in Light of Post-Motion Events Reflecting No Loss of Market Share

The magistrate judge recommended denying plaintiffs' motion for a preliminary injunction to preclude the sale of the accused products because plaintiffs failed to establish irreparable harm and found that post-motion activity did not support plaintiffs' claim of loss of market share. "In their opening brief . . . [plaintiffs] argued then that [defendant's] infringement would deprive them of their right to exclusive manufacture and sale of the patented products, which would in turn result in 'immediate loss of business to [plaintiff] including a loss of market share and market opportunities in the United States.'. . . Yet Plaintiffs' claims were not born out. As of . . . four months after Plaintiffs' opening brief was filed [plaintiff's global marketing director] acknowledged that he did 'not [then] have proof or knowledge of any lost business.' And two and a half months after that, when Plaintiffs filed their reply brief . . . the record was hardly much different. . . . Indeed, seven months after the Motion was filed, Plaintiffs can point to scarcely any lost sales at all, and have made no assertion that the amount of [plaintiff's] product sales in the hospitals referenced above have made any appreciable dent in [plaintiff's product's] market share."

Integra LifeSciences Corporation et al v. HyperBranch Medical Technology, Inc., 1-15-cv-00819 (DED September 12, 2016, Order) (Burke, MJ)

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

The court denied defendant's motion for summary judgment on the ground that plaintiff’s content management patents encompassed unpatentable subject matter because the asserted claims did not lack an inventive concept. "The claims of these patents are directed to enabling users, without third-party assistance, to post content to a website and to control which users can view the posted content. . . . [T]he [claim at issue] does not merely permit a known business practice to be performed on the Internet. Instead, the claim here specifies how a solution will be implemented that addresses a business challenge particular to the Internet. . . . [A]lthough the limitations to the claim in this case are not inventive alone, the ordered combination of these limitations is inventive because, taken together, the limitations are not routine and conventional. The claim does not simply dictate that communication must be targeted and access restricted. Instead, the claim states that users themselves will be able to control interactions on their web pages by managing business rules that will utilize profiles of other users to generate configurable links to determine how other users may interact with his or her web page. . . . Regardless of whether the subject matter of the patent is characterized as group collaboration with targeted communication or as restrictions on public access, the claim contains enough inventive elements to be aimed at more than a patent on the abstract idea itself."

Zak v. Facebook, Inc., 4-15-cv-13437 (MIED September 12, 2016, Order) (Berg, USDJ)

Cursory Jury Deliberation Does Not Justify New Trial​

The court denied plaintiff's motion for new trial because of the jury's "cursory" deliberations after a five-day trial. "[Plaintiff] argues that the jury deliberations took only 45 minutes, and '[t]hese cursory 'deliberations' yielded a verdict counter to the great weight of the evidence.' However, '[b]rief jury deliberation is not, in itself, sufficient basis to support a new trial motion. [The] Fourth Circuit once upheld the trial court's denial of a new trial motion where the jury had deliberated only four minutes. . . .' Here, the jury was extremely attentive throughout the trial, as evidenced by the questions it submitted to be asked of witnesses, and appeared to take the matter very seriously."

ART+COM Innovationpool GmbH v. Google Inc., 1-14-cv-00217 (DED September 9, 2016, Order) (Dyk, CJ)

Signal Processing Patents Not Patent Ineligible Under 35 U.S.C. § 101​

The magistrate judge recommended denying defendant's motion to dismiss on the ground that one of plaintiff’s signal processing patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "[Defendant] states that claim 1 itself shows the claim is directed to the abstract idea of 'decrypting encrypted information' or 'converting information from one format to another.'. . . The Court finds the elements of claim 1 show that the claim is directed to a method of using a 'control signal' associated with 'digital programming' to 'decrypt programming' 'based on' the 'control signal.' The Court finds that claim 1 is not directed to 'converting information from one format to another.' . . . [T]he claim and the specification show that using a 'control signal' to control decryption improves the way in which 'encrypted digital programming' is delivered."

Personalized Media Communications LLC v. Apple Inc., 2-15-cv-01366 (TXED September 13, 2016, Order) (Payne, MJ)

Fact Issues as to Performance of Claims by a “Person With Pen and Paper” Bar Resolution of 35 U.S.C. § 101 Eligibility Prior to Claim Construction​

The magistrate judge recommended denying defendant's motion to dismiss on the ground that plaintiff’s gemstone evaluation patent encompassed unpatentable subject matter because the issue required summary judgment and claim construction proceedings. "An important facet of [defendant's] Motion is its contention that 'each step of the claimed methods can be performed by a person with pen and paper using basic ray tracing techniques while following well-known mathematical formulas.'. . . Resolving this fact question (or even considering it) would require the Court to consider evidence outside the pleadings. . . . Accordingly, the Court believes that [defendant's] motion must be resolved at the summary judgment stage. . . . This case is an example of one in which claim construction is likely to resolve critically important questions that bear on subject matter eligibility."

Diamond Grading Technologies LLC v. American Gem Society et al, 2-14-cv-01161 (TXED September 12, 2016, Order) (Payne, MJ)

Electronic Trading Patent Likely Unpatentable Under 35 U.S.C. § 101​

The Board granted institution of covered business method review of a patent directed to electronic trading under 35 U.S.C. § 101. "[C]laim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two screens—one displaying price information and the second comprising a detailed order form—to confirm or modify orders. While it may be true that, a human could not 'provide a configurable trading interface,' the idea of dividing trading into two steps—displaying a price and then having a detailed order form was, as Petitioner shows, a known, if not ancient, concept . . . . [T]he claimed improvement does not improve the performance of the computer, but instead improves the performance of the human. The computers operate just as they always did, and the invention simply uses existing computer tools to allow the human to perform better. Patent Owner’s arguments to the contrary do not persuade us that claim 1 is not directed to an abstract idea."

Petition for Covered Business Method Patent Review by CQG, Inc., CBM2016-00047 (PTAB September 9, 2016, Order) (Cherry, APJ)

Qiagen Preliminarily Enjoined from Selling DNA Sequencing Equipment​

The court granted plaintiffs' motion for a preliminary injunction to preclude the sales of defendant's DNA sequencing products and found that plaintiffs established irreparable harm. "The market for DNA sequencing in clinical laboratories is expected to grow substantially in the near future, and [defendant] has a foothold in that market due to its other product lines. Now, as the doors to the market have swung open, [defendant] seeks to usurp [plaintiffs'] position in that market with pirated technology. Moreover, potential customers cannot easily be recovered, inasmuch as laboratories purchase new DNA-sequencing equipment infrequently and irregularly, in part because laboratories must win government approval for use of any new DNA-sequencing equipment. . . . At this crucial inflection point in the development of the market for DNA sequencing equipment for clinical laboratories, [plaintiffs] would suffer irreparable harm if [defendant] were allowed to capture and define the market with pirated technology alongside its preexisting relationships and disruptive business model."

Illumina, Inc. et al v. QIAGEN, NV et al, 3-16-cv-02788 (CAND September 9, 2016, Order) (Alsup, USDJ)

Cellular Network Messaging Patent Not Ineligible Under 35 U.S.C. § 101​

The court denied defendant's motion for summary judgment that the asserted claims of plaintiff’s cellular network messaging patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "[T]he asserted claims in the [patent] are not directed to an abstract idea, but rather implement a specific improvement in cellular networking. . . . [T]he [patent] is not directed to the abstract idea of determining information about something and taking action in response. The [patent] solves a problem that is created by the design of cellular networks, specifically the use of dynamic addresses for wireless terminals and the allocation of information inside and outside the cellular network. The [patent] claims a method of sending an inquiry between two different network elements, and the abstract idea 'matching identifiers to retrieve information' is only part of the method."

Comcast Cable Communications, LLC et al v. Sprint Communications Company LP et al, 2-12-cv-00859 (PAED August 25, 2016, Order) (Dubois, SJ)

Motion to Dismiss for Lack of Patentable Subject Matter Denied for Failure to Establish Representative Claims​

The court denied without prejudice defendant's motion to dismiss on the ground that plaintiff’s four wireless routing patents encompassed unpatentable subject matter because defendant failed to meet its burden to establish a representative claim. "[Defendant] has not adequately explained why the Asserted Patents relate to the same abstract idea embodied by [one claim of one of the patents-in-suit]. . . . [Defendant] asserts in conclusory fashion: 'All Asserted Patents generally related to the same subject matter, are substantially similar, and claim the same abstract idea-fundamental methods of routing a message among a plurality of telecommunication nodes, independent of a central computer separate from nodes.'. . . The court agrees with [plaintiff] that [defendant] fails 'to identify a consistent abstract idea upon which to base its motion.' Furthermore, [defendant] fails to provide meaningful analysis for each of the challenged patent claims at issue."

JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC f/k/a Fluidmesh Networks, Inc., 1-16-cv-00212 (DED September 6, 2016, Order) (Sleet, USDJ)

New PTAB Rules Result in Decline of Institution of IPRs

A final rule issued by the U.S. Patent and Trademark Office (USPTO) and published in the April 1st edition of the Federal Register amended rules of practice for trials held before the Patent Trial and Appeal Board (PTAB). The rule changes are designed to “make the trial proceedings more fair and effective” for inter partes reviews (IPRs) and other PTAB proceedings which were created by the America Invents Act of 2011 (AIA).

One of the rule changes affecting PTAB proceedings allows patent owners an opportunity to supply new evidence with their preliminary response to the petition before the PTAB decides to institute patent review proceedings. Public comments received by the USPTO argued that the new rule would help level the playing field in PTAB proceedings, allowing evidence from both sides prior to the decision to institute an IPR or other proceedings. The preliminary response is a voluntary action for a patent owner and the USPTO maintains that “no negative inference will be drawn” if a patent owner decides not to file a preliminary response.

Since these rules went into effect on May 2nd, patent owners have had this new option for responding to patent challenges at the PTAB. Now, Docket Navigator has made search tools available for those who want to find out whether a preliminary response containing new testimony provides any benefit to a patent owner.

Of the 16 institution decisions filed since May 2nd in IPRs in which a patent owner filed a preliminary response with a declaration, seven IPRs were granted institution while six others were denied; the remaining three were granted partial institution. This is admittedly a small sample size, so caution should be used when extrapolating statistics from it. As Rick Neifeld, of Neifeld IP Law in Alexandria, VA, commented, “We should have a statistically significant number of cases by the end of September.” When compared to the overall success rate of IPR institution decisions filed during that same time period, the results so far seem to indicate that IPRs are denied more often when a patent owner files a preliminary response. Of the 380 institution decisions in IPRs filed between May 2nd and August 26th of this year, 122 have been denied institution while 172 have been instituted.

*IPRs w/ institution decisions filed between May 2-August 26.

Taking out the IPR petitions in which a preliminary response has been filed without a declaration, it’s easy to see that the filing of a declaration with the preliminary response at least correlates with higher rates of denial of institution for IPRs. Of 364 IPRs in which the patent owner did not file a declaration with the preliminary response, just under 32% were denied institution while more than 45% were granted institution. When preliminary responses with declarations are filed by a patent owner (see the first chart), IPRs are denied institutions at a rate of 37.5%. Partial institutions also rise slightly when declarations are filed with preliminary responses to about 19% percent compared to around 23% when declarations aren’t filed with the preliminary responses.

The American intellectual property landscape continues to shift and it is helpful for patent owners to stay on top of how recent legal developments can affect their ability to retain their patent rights. With Docket Navigator, a patent owner has sophisticated tools which can provide insights into the best methods for defending against a PTAB challenge.

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

Plaintiff’s False and Misleading Testimony Concerning Standing Warrants Attorney Fees Award

​ Following a dismissal for lack of standing, the court granted defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation conduct was unreasonable. "Plaintiff’s conduct throughout this litigation, culminating in his untruthful testimony at the hearing on the motion to dismiss, demonstrates a pattern of obfuscation and bad faith. Every time Defendants or the Court identified a defect in his standing, Plaintiff responded with a promise that he could produce evidence that would resolve that defect. Those promises never bore out. . . . The Court rejects Plaintiff’s latest attempts to recharacterize his conduct as mere 'zealous pursuit of his good faith claim of ownership.' Plaintiff is not simply the hapless victim of overstatement or bad lawyering; he made false and misleading representations to Defendants and the Court that resulted in, among other things, prejudice to Defendants in the form of significant legal fees incurred in defending this action."

Raniere v. Microsoft Corp., 3-15-cv-00540 (TXND September 2, 2016, Order) (Lynn, USDJ)

Lack of Corroborative Evidence for Conception Date Justifies New Trial on Anticipation​

Following a jury verdict of $14 million, the court granted in part defendant's motion for a new trial on anticipation because it was an error to allow the jury to determine whether a patent was prior art to the patent-at-issue. "Because [plaintiff] did not present independent corroborative evidence of [the co-inventor's] testimony regarding the date of conception, [his] testimony regarding inventive facts must be disregarded. Considered as stand-alone documentary evidence, the whiteboard photographs, associated metadata, and Architecture Specification are also insufficient to meet [plaintiff's] burden to produce evidence of the date of conception of the [patent-in-suit]. . . . [B]oth [the co-inventor's] testimony and the documentary evidence are legally insufficient to prove a date of conception prior to the filing date of the [patent-in-suit]. . . . It was error to submit the issue whether [a purported prior art] patent was prior art to the [patent-in-suit] to the jury. The jury should have been instructed that the [patent] is prior art to the [patent-in-suit]. . . . The jury did not specifically find whether the [prior art] patent discloses every limitation of the asserted claims of the [patent-in-suit]. The question whether the [prior art] patent discloses the 'space efficient, probabilistic summary' of the asserted claims cannot be determined as a matter of law and is therefore a fact question for the jury. [Defendant] is thus entitled to a new trial on anticipation of the [patent-in-suit] by the [prior art] patent."

EMC Corporation, et al. v. Pure Storage Inc., 1-13-cv-01985 (DED September 1, 2016, Order) (Andrews, USDJ)

Test Kit Claims, but not Method Claims, of Tuberculosis Testing Patent Invalid Under 35 U.S.C. § 101​

The magistrate judge recommended granting in part defendants' motion to dismiss because the asserted claims of plaintiff’s tuberculosis testing patents encompassed unpatentable subject matter and found that the test kit claims, but not the method claims, lacked an inventive concept. "[T]he patented invention improves on existing methods for diagnosing TB by making diagnosis more convenient, less dependent on a physician’s subjective interpretation of results, and more accurate. There is thus a plausible reading of the patents by which one could find that the plaintiff’s in vitro tuberculosis test involves an inventive concept. . . . At this early juncture, the Court concludes that the in vitro aspect of the plaintiff’s tuberculosis test is an 'inventive concept' because it improves on prior methods of detecting tuberculosis infection. It follows that the method claims, which describe the in vitro test, are potentially drawn to patentable subject matter. In contrast, the kit claims only describe the peptide panel itself and do not involve the 'inventive concept' of an in vitro test, and thus are not drawn to patentable subject matter."

Oxford Immunotec Ltd. v. Qiagen NV et al, 1-15-cv-13124 (MAD August 31, 2016, Order) (Cabell, MJ)

Asserted Claims of Electronic Information Management Patent Invalid Under 35 U.S.C. § 101 ​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s electronic information management patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Defendant] argues that the asserted claims of the [patent-in-suit] 'are directed to the abstract idea of managing information and preferences among members of a community.' . . . [Plaintiff] argues that . . . the claims are not directed to an abstract idea because the 'the plain focus of the claims is on an improvement to computer functionality itself.'. . . [T]he invention of the [patent] seeks to make a non-technological improvement to the non-technological problem of providing a user with information that is better suited to the user. The asserted claims of the [patent] thus are directed to the concept of offering more meaningful information to an individual based on his own preferences and the preferences of a group of people with whom he is in pre-defined relationships. The claimed concept is abstract."

Sound View Innovations, LLC v. Facebook, Inc., 1-16-cv-00116 (DED August 30, 2016, Order) (Andrews, USDJ)