Friday, April 21, 2017

Top Law Firms by Number of Accusations in 2016

What is a Patent Accusation?

A Patent Accusation is a more granular way to measure the volume of litigation activity than counting the number of cases or litigants. As used in this report, the term means a request for relief in a U.S. district court, the ITC or the PTAB (AIA proceedings), the resolution of which could determine if a patent has been infringed or the patent’s validity or enforceability.
For example, a civil case with one plaintiff asserting one patent against one defendant would involve one patent accusation, whereas a case with one plaintiff asserting 5 patents against 10 defendants would result in 50 infringement accusation. Multiple claims involving the same parties and patents (e.g., a claim of infringement and a declaratory judgment counterclaim of invalidity or unenforceability) are counted as a single accusation. In a PTAB proceeding, each challenge to the patentability of a patent would create one patent accusation.


Sale of Software and Separate Plug-In Capable of Infringing When Combined Does Not Constitute Direct Infringement​

The court granted defendant's motion for summary judgment that it did not directly infringe plaintiff's dynamic web page generation patent. "[Plaintiff] contends that [defendant] infringed the asserted claims by storing (separately and in different locations) [its] Server software and ARR plug-in on its severs and by selling [the] Server software to customers while also making its optional ARR plug-in available for download. That infringement theory is problematic in light of the Supreme Court's decision in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 526-29 (1972). . . . The Court . . . explained that a patent 'does not cover the manufacture or sale of separate elements capable of being, but never actually, associated to form the invention.' But contrary to the decision in Deepsouth, [plaintiff] argues that [defendant] directly infringed the asserted claims even though, under this theory, [defendant] did not assemble the software components into the accused product."

Parallel Networks Licensing LLC v. Microsoft Corporation, 1-13-cv-02073 (DED April 10, 2017, Order) (Jordan, CJ)

Thursday, April 20, 2017

Until Shaw is Limited or Reconsidered, IPR Estoppel Does Not Apply to Non-Instituted Invalidity Grounds Asserted in Petition​

Following inter partes review of the patent-in-suit, the court denied plaintiff's motion to preclude defendant from contesting validity under 35 U.S.C. § 315(e) with respect to invalidity grounds that were asserted in the IPR petition but not instituted. "[Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir.), cert. denied, 137 S. Ct. 374 (2016)] makes the Federal Circuit’s view of whether § 315(e) estoppel applies to non-instituted grounds crystal clear. So until Shaw is limited or reconsidered, this court will not apply § 315(e)(2) estoppel to non-instituted grounds. . . . For the record, this court is not persuaded by Shaw’s interpretation of the term 'during' in § 315(e). Shaw does not adequately consider the history and purpose of the statutory language, and it does not satisfactorily reconcile the narrow interpretation of 'during' with the broader language 'reasonably could have raised.' What are the grounds that the petitioner 'reasonably could have raised' if the petitioner is limited to raising them after review is instituted, when the opportunity to assert new grounds is exceedingly limited? The more reasonable interpretation is that 'during that inter partes review' includes not only the instituted review itself but also the petition process."

Douglas Dynamics, LLC v. Meyer Products LLC, 3-14-cv-00886 (WIWD April 18, 2017, Order) (Peterson, USDJ)

Wednesday, April 19, 2017

Discovery Concerning Plaintiff’s Investor Funding, R&D Costs, and IPO Valuation Not Proportional to Needs of Case​

The court denied without prejudice defendant's motion to compel further interrogatory responses regarding investor funding, initial public offerings, and research and development costs because the discovery was not proportional to the needs of the case. "While it is conceivable that the documents sought by each of these production requests could contain information relevant to one or more issues in this case, the record does not presently show that they are likely to do so. At the same time, the production sought by each production request is extensive, the burden on [plaintiff] of making the production significant, and the intrusion into [plaintiff's] operations entailed by the production substantial."

Valencell, Inc. v. Apple Inc., 5-16-cv-00001 (NCED April 17, 2017, Order) (Gates, MJ)

Tuesday, April 18, 2017

Claim Construction Appropriate at Pleading Stage Where Patent Provides Explicit Definition​

The court denied defendant's motion to dismiss plaintiff's direct patent infringement claim on the ground that plaintiff's claim was based on an implausible interpretation of its patent, but rejected plaintiff's argument that claim construction of its DNA microarray patent was premature. "[T]he Court concludes that it may properly construe a claim term at the pleading stage in certain circumstances. The purpose of a 12(b)(6) motion is, after all, to determine whether a plaintiff states a legally cognizable claim for relief. . . . Defendant’s argument is premised on what is perhaps one of the most appropriate exercises of claim construction at the pleading stage: a claim of lexicography; that is, that the [patent] itself allegedly provides an explicit definition of parameter 'a.'. . . The Court finds that there is merit to both parties’ arguments and thus the Court cannot say at this stage that Defendant’s construction is correct as a matter of law."

The Scripps Research Institute v. Illumina, Inc., 3-16-cv-00661 (CASD April 14, 2017, Order) (Sammartino, USDJ)

Monday, April 17, 2017

Challenge to Printed Publication Status of Prior Art Reference Does Not Justify Late Disclosure of New Reference​

The court granted plaintiff's motion to strike a previously undisclosed prior art publication from defendant's invalidity contentions and rejected defendant's argument that the reference was necessary to address plaintiff's challenge to another reference. "[W]hile it is true that the printed publication argument was raised only in response to [defendant's] motion for summary judgment of anticipation, [defendant] should not have been caught entirely unawares by [plaintiff's] printed publication defense to [defendant's] reliance on the [originally disclosed] reference as anticipating prior art. Given the obscurity of the [original] reference, it is not surprising that [plaintiff] would raise an issue as to whether the [original] publication was sufficiently in the public domain to qualify as prior art. . . . Nothing prevented [defendant] from citing both [the original] and the [new] reference in its original invalidity contentions. . . . [I]t would be highly prejudicial to [plaintiff] for [defendant] to be allowed to use the [new] reference after having raised it for the first time only a few weeks before trial and after the close of discovery."

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED April 13, 2017, Order) (Bryson, CJ)

Friday, April 14, 2017

Defendant’s Multiplication of Proceedings No Basis for Reducing Attorney Fees Award for Plaintiff’s Exceptionally Weak Claims

​ The court granted in part defendant's requested attorney fees under 35 U.S.C. § 285 and rejected plaintiffs' objection that the fees should be reduced on the ground that defendant unreasonably multiplied the proceedings. "In the Court’s [prior] Order, it found that [defendant] engaged in some activity that prolonged the litigation, including 'unreasonably' refusing to designate representative products. . . . Where a plaintiff’s case is exceptionally weak on the merits, as here, rather than because of litigation misconduct, this rule counsels full fee shifting from the time the case became exceptionally weak on the merits. The entire case from that point on is exceptional and the extra legal effort required to counteract the lawsuit includes the entirety of a vigorous defense. In the context of this case, [defendant] did not exceed that limitation."

Technology Properties Limited, LLC v. Canon, Inc. et al, 4-14-cv-03640 (CAND April 12, 2017, Order) (Wilken, USDJ)

Thursday, April 13, 2017

Production of Non-Public, Unaccused Products Not Proportional to the Needs of the Case​

The court denied plaintiff's motion to compel defendant to produce non-public unaccused products for testing because the discovery was disproportional to the needs of the case. "In light of the Court's determination that certain asserted claims are indefinite for reasons related to (among other things) the type of testing [plaintiff] seeks to perform, and for other reasons (including documents already produced to [plaintiff] and that the unaccused products are still in development and their design(s) could change in ways material to the patent claims), the Court finds that the requested production for testing is not proportional to the needs of the case."

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC et al, 1-15-cv-01168 (DED April 11, 2017, Order) (Stark, USDJ)

Wednesday, April 12, 2017

Attorney Fees for Resisting Motion to Compel Not Recoverable

The court denied without prejudice a third party's motion to shift cost of discovery to plaintiff after the court granted plaintiff's motion to compel a third party to produce documents regarding five of its drug products. "[T]he Court has not at this time seen any evidence that enforcement of [plaintiff's] subpoena . . . would impose an undue burden or expense on [movant]. . . . The Court does not regard the attorneys’ fees incurred in resisting the motion to compel as recoverable costs of complying with the subpoena. [Movant] was not required to resist the motion to compel, and it has been unsuccessful in so doing. For those reasons, there is no sense in which the attorneys’ fees were necessary expenses incurred in responding to the subpoena. As to any other costs associated with [movant's] compliance efforts, the Court has no other evidence before it regarding the costs of compliance that were imposed on [movant]."

Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al, 2-15-cv-01455 (TXED April 10, 2017, Order) (Bryson, CJ)

Tuesday, April 11, 2017

Demonstrating Device at Tradeshow May Constitute Infringing Use​

The court denied defendants' motion to dismiss plaintiff's direct patent infringement claims for failing to sufficiently allege that they used the accused product or that the infringement was de minimis. "[D]efendants appear to suggest that demonstration of an infringing device at a trade show cannot constitute 'use' for purposes of § 271 as a matter of law. . . . I likewise decline to hold that demonstration of an infringing device at a trade show can never constitute 'use' for purposes of § 271. . . . It can reasonably be inferred that in showing potential customers how the device operated, the defendants used the [accused device] to check the diameter of a part. . . . [T]he defendants' alleged infringement is not limited to their use of the [accused device] at [one trade show]. . . . Further, at this stage, I am unable to accept the defendants' contention that their alleged infringing conduct is unlikely to recur."

Marposs Societa Per Azioni et al v. Jenoptik Automotive North America, LLC et al, 1-16-cv-09041 (ILND April 7, 2017, Order) (Bucklo, USDJ)

Monday, April 10, 2017

Willful Infringement Claim Based Solely on Post-Filing Conduct Fails as a Matter of Law​

The court granted defendants' motion to dismiss plaintiff's willful infringement claim because it was based on post-filing conduct. "Although [Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016)] rejected the [In re Seagate Tech, LLC, 497 F.3d 1360 (Fed. Cir. 2007)] test of what constitutes a reckless state of mind to support an award of § 284 damages as too rigid, it did not discuss whether such damages are limited to the alleged infringer's pre-filing conduct, other than to state that culpability for willful infringement purposes is 'measured against the knowledge of the actor at the time of the challenged conduct.' The Federal Circuit in Seagate stated that 'in ordinary circumstances, willfulness will depend on an infringer's prelitigation conduct.' Other cases, post-Halo, have concluded that Seagate's conclusion with respect to the unavailability of a claim for willful infringement based upon post-filing conduct is still good law. Further, a court in this district has held that a claim for enhanced damages based on willful infringement 'must necessarily be grounded exclusively in the accused infringer's pre-filing conduct. . . when an accused infringer's post-filing conduct is reckless, a patentee can move for a preliminary injunction.' . . . Accordingly, the Court finds that Plaintiffs willful infringement claim, which is based solely on Defendants' post-filing conduct, fails as a matter of law."

Cooper Lighting, LLC v. Cordelia Lighting, Inc. et al, 1-16-cv-02669 (GAND April 6, 2017, Order) (Cohen, USDJ)

Friday, April 7, 2017

Invalidity Opinion Delivered After Product Launch No Defense to Willful Infringement​

Following a jury trial, the court granted plaintiff's motion for entry of judgment and found that defendant's patent infringement was willful because defendant's invalidity defenses were not relied upon at the time the accused products were introduced. "[T]he Court in [Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016)] has eliminated the ability of an accused infringer to posit reasonable invalidity defenses which were not relied upon at the time the accused products were introduced into the market. . . . '[C]ulpability is generally measured against the knowledge of the actor at the time of the challenged conduct.' There is no indication in the record that [defendant's expert] provided [defendant] his opinion on invalidity before the accused products went into production. . . . [T]here is no record evidence that [defendant] had knowledge of the invalidity defense derived from the combination of prior art and SAE standards at the time of the challenged conduct."

Omega Patents, LLC v. Calamp Corp., 6-13-cv-01950 (FLMD April 5, 2017, Order) (Byron, USDJ)

Thursday, April 6, 2017

Vehicle Camera System Patent Not Invalid Under 35 U.S.C. § 101 at Pleading Stage​

The special master recommended denying defendant's motion for judgment on the pleadings on the ground that plaintiff’s vehicle camera system patent encompassed unpatentable subject matter because defendant failed to establish that the asserted claims were directed toward an abstract idea. "[T]he claims specify a particular imaging array sensor configuration and a particular approach of using data acquired from the sensor. That approach includes a step that the patent argues to depart from a conventional data processing approach by the inclusion of a reduced image data set. Also, because the imaging array sensor is taught and claimed to be useful in a misaligned condition, applying reasonable inferences in favor of Plaintiff, it can be said that the sensor as well is used in an unconventional manner, instead of the more conventional aligned technique. In this manner, the patent purports to provide an improved and unconventional approach to addressing misalignment of the image array sensor and the resulting data."

Magna Electronics, Inc. v. Valeo, Inc. et al, 2-13-cv-11376 (MIED March 31, 2017, Order) (Dobrusin, Special Master)

Wednesday, April 5, 2017

$1 Billion Valuation of Inventor’s Non-Asserted Patents Excluded as Prejudicial​

The court granted in part defendants' motion in limine to exclude the value of non-asserted patents from plaintiff's inventor under Rule 403. "Defendants move to exclude Plaintiff from discussing the technology or value of non-asserted patents that list [the same inventor] as the named inventor and that Plaintiff purports were valued at over $1 billion. . . . Plaintiff may provide a limited discussion of these non-asserted patents and their general subject matter at trial when discussing [the inventor's] background. Nevertheless, the Court agrees with Defendants that a discussion of the value of these non-asserted patents would likely lead to unfair prejudice and jury confusion substantially outweighing the limited probative value of such evidence."

Carucel Investments, L.P. v. Novatel Wireless, Inc. et al, 3-16-cv-00118 (CASD April 3, 2017, Order) (Huff, USDJ)

Tuesday, April 4, 2017

Patent Assignment Agreement Providing Outcome-Based Compensation to Fact Witness Does Not Justify Award of Attorney Fees ​

Following claim construction and a stipulated judgment of noninfringement, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation tactics were not exceptional. "Defendants rely on the compensation arrangement in the Agreement with [a third party], coupled with Plaintiff’s initial disclosures identifying certain principals from [the third party] as fact witnesses, to argue that Plaintiff has agreed to pay fact witnesses to testify and the payment is contingent on the outcome of the case. However, the Agreement involves assignment of the Patent, not an agreement to pay fact witnesses to testify, and the witnesses identified included the inventor. . . . [T]he Agreement provides for [the third party] to be compensated based on the outcome of a patent infringement lawsuit and requires cooperation from [the third party]. The Agreement’s compensation arrangement is not so out of the ordinary to make this case exceptional."

Rembrandt Gaming Technologies, LP v. Boyd Gaming Corporation, et al, 2-12-cv-00775 (NVD March 31, 2017, Order) (Du, USDJ)

Monday, April 3, 2017

Technical Expert Unqualified to Offer Opinion on Apportionment Value​

The court granted in part defendant's motion to exclude the testimony of plaintiff's technical expert regarding apportionment as unqualified. "An apportionment analysis is performed as part of a damages calculation. As such, there is an inherently economic quality to an apportionment analysis. . . . [Plaintiff's expert], with his Ph.D. in computer science and academic and industry experience in hardware and software design and development, is qualified to review the technical information in this case and opine regarding the importance of the various features of the accused products from a technical perspective. However, due to [his] limited experience with economic apportionment, he is not qualified to provide an ultimate opinion with respect to a damages value attributable to the patented invention. . . . [His] opinions . . . may be an input into the damages expert’s opinion about the proper apportionment value, but may not be the final apportionment value itself."

Realtime Data LLC d/b/a IXO v. Oracle America, Inc., 6-16-cv-00088 (TXED March 30, 2017, Order) (Love, MJ)

Friday, March 31, 2017

Defendant's and Counsel's Lack of Cooperation Justify Service on Foreign Entity by Alternate Means​

The court granted plaintiff's motion to serve its declaratory relief complaint by alternate means on a Japanese defendant following defendant and its counsel's lack of cooperation. "[Defendant's] contention that it is 'simply' standing on its 'right' to service under the Hague Convention is ill-taken. . . . [Counsel's email exchange] shows that [defense] counsel declined to accept service in an apparent fit of pique, and the record of events after that indicates that [defendant] has been unduly difficult to serve in a manner reflecting the uncooperative spirit manifested in [defendant's lead attorney's] words. . . . In our circuit, Rule 4(f)(3) allows for service 'by other means' so long as it is directed by the court and is not prohibited by international agreement. There is no hierarchy of procedures, as [defendant] suggests, that requires [plaintiff] to attempt service through the Hague Convention or other means before seeking an order under Rule 4(f)(3). . . . [Defendant] has been uncooperative at every turn in responding to [plaintiff's] attempts to serve the complaint. It has not shown that service under Rule 4(f)(3) would violate an international agreement, and the Hague Convention is certainly no bar. Consequently, [plaintiff's] motion for an order of service under Rule 4(f)(3) is granted. . . . In situations like this, service on a foreign corporation’s counsel in the United States is an effective and reasonable method, and is not prohibited by the Hague Convention."

Xilinx, Inc. v. Godo Kaisha IP Bridge 1, 3-17-cv-00509 (CAND March 29, 2017, Order) (Donato, USDJ)

Thursday, March 30, 2017

Narrowing Asserted Patent Claims Precludes Validity Determination as to Unasserted Claims​

The court granted in part plaintiff's motion to reconsider an earlier order granting defendant's motion for judgment on the pleadings that plaintiff's remote monitoring patents encompassed unpatentable subject matter and agreed with plaintiff that it lacked jurisdiction over the unasserted claims. "[N]arrowing patent litigation to asserted claims pursuant to local patent rules can appropriately limit the court’s reach over other unasserted claims in the patent, even if those claims were at issue when the plaintiff filed its original complaint. . . . [Defendant also] urges that disclosures under this court’s local patent rules are insufficient to limit the scope of an invalidity counterclaim. . . . The parties’ patent contentions do not control the reach of the court’s jurisdiction, but they do influence the determination of whether there is, before the court, a substantial controversy. . . . [Defendant] effectively argues that because the case was before the court on a Rule 12(c) motion, the court must limit its analysis to the pleadings and must therefore exercise jurisdiction over the entire counterclaim. But the court is not constrained by jurisdictional assertions; in fact, the court will always independently examine whether it has jurisdiction over a particular declaratory judgment counterclaim. . . . The court in this case concludes it is not appropriate to ignore the impact of the parties’ contentions, even though they occurred after the pleadings."

Joao Control & Monitoring Systems, LLC v. Telular Corporation, 1-14-cv-09852 (ILND March 28, 2017, Order) (Pallmeyer, USDJ)

Wednesday, March 29, 2017

Mobile Navigation System 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 mobile navigation system patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "Defendants argue that under step one, claim 15 is directed to an abstract idea because the claim is specifically directed to the idea of providing directions in a natural language. . . . Defendants argue that claim 15 is directed to an abstract idea because the claim is directed to a process that could be performed by a human with a pencil and paper. But a human with a pencil and paper cannot format route data into a natural language description that is generated on a server and then transferred to a local database. . . . [C]laim 15 is not directed to some abstract result or effect. Rather, claim 15 provides a specific technological means for remedying the specific problems with real-time mobile navigation systems that the [patent] sought to address: formatting the route data using a non-proprietary, natural language description."

InfoGation Corp. v. ZTE Corporation et al, 3-16-cv-01901 (CASD March 27, 2017, Order) (Huff, USDJ)

Tuesday, March 28, 2017

Plaintiff’s Inability to Obtain Manufacturing Process Information from Chinese Manufacturer Justifies Presumption of Infringement Under 35 U.S.C. § 295​

The court denied plaintiff's motion for summary judgment of infringement of a fungicide patent, but found that the burden to establish noninfringement should be shifted to defendant under 35 U.S.C. § 295. "[Plaintiff] contends that it made reasonable efforts to discover [defendant's Chinese manufacturer's] process for producing azoxystrobin technical, but that it has been thwarted by [defendant's] lack of full cooperation and its inability to get information from [the manufacturer]. . . . [Defendant] asserted that it had no written communications with [the manufacturer], because they corresponded only in person, via telephone, or via a chat program that did not save correspondence. . . . At his deposition . . . [the manufacturer's representative] affirmed that [the manufacturer] has production records with the ratios and quantities of materials used in the manufacturing process . . . but that no one associated with [defendant] informed him that [plaintiff] was asking for those documents, apart from sharing [a] July 28 letter about a month before his deposition. He did not produce any of these documents at his deposition, despite being aware that [plaintiff] had asked for them. . . . While [plaintiff] did not seek discovery directly from [the manufacturer] . . . it 'is extremely difficult, if not impossible . . . to compel the Manufacturer [in China] to produce any documents' . . . . Moreover, given [the manufacturer's] location in China, requesting voluntary facility inspections or observing the process firsthand are unlikely possibilities for discovering information."

Syngenta Crop Protection, LLC v. Willowood, LLC et al, 1-15-cv-00274 (NCMD March 24, 2017, Order) (Eagles, USDJ)

Monday, March 27, 2017

Interactive Toy Patents Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s interactive toy patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "Here, the Patents-In-Suit involve toys that communicate or interact amongst one another, with humans, or with computers. The toys generate, receive, and analyze sounds. They transmit, receive, and respond to a signal. They generate acoustic signals, receive the acoustic signals, analyze the signal, and then perform a responsive function. At core, the patents attempt to state methods for toys to communicate by sending, receiving, and responding to signals. The claims do not state a means by which to communicate, but rather are directed at the abstract process of communication itself. . . . Plaintiff attempts to characterize the patents as 'tangible toys or devices' and therefore not abstract. . . . The mere inclusion of tangible elements in an otherwise abstract idea does not render the subject matter any less abstract."

Dialware Communications, LLC v. Hasbro, Inc., 2-16-cv-09012 (CACD March 22, 2017, Order) (Real, USDJ)

Friday, March 24, 2017

SCA Hygiene Products Bars Laches Defense During 6-Year Limitations Period​

Having previously observed that "the doctrine of laches likely bar[s] the plaintiff’s claims," the court denied defendant's motion for summary judgment on its laches defense in light of the Supreme Court's decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927 (U.S. Mar. 21, 2017). "That decision has now been rendered, the Court holding that '[l]aches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by [35 U.S.C.] § 286. Accordingly, it appearing proper, it is ordered [that] [defendant's] Motion for Summary Judgment Based on Laches is denied."

Artrip v. Ball Corporation et al, 1-14-cv-00014 (VAWD March 22, 2017, Order) (Jones, USDJ)

Thursday, March 23, 2017

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

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s voting system patent lacked an inventive concept. "According to the complaint, the auto-verification voting system is made of generic computer components performing generic computer functions, including: inputting voting information, printing out a paper ballot, having the voter personally verify the vote, and inputting the verified vote into a 'tabulating' computer. There is nothing inventive or transformative about the functions claimed in the patent, as they encompass computer functions which are 'well-understood, routine, conventional activit[ies] previously known to the industry,' and thus, there is no transformative feature between the abstract ideas of voting and verification and the input of the given steps into a computer system."

Voter Verified, Inc. v. Election Systems & Software, LLC f/k/a Election Systems & Software, Inc., 1-16-cv-00267 (FLND March 21, 2017, Order) (Walker, USDJ)

Wednesday, March 22, 2017

eBay Listing Is Not eBay’s Offer to Sell​

The court granted defendant's motion for summary judgment that it did not directly infringe plaintiff's bee trap patent because defendant's online marketplace listing was not defendant's offer to sell within the meaning of 35 U.S.C. § 271(a). "[Defendant's] website contained descriptions of the allegedly infringing products and a price at which the items could be obtained. As [plaintiff] observes, [defendant] tells users that bidding on a product creates a contract that obligates the bidder to purchase the product. . . . [Defendant] explicitly identifies a 'seller,' rather than a 'supplier,' on each listing, and no evidence is in the record that users pay [defendant] rather than the seller. . . . [T]he context of an exchange on [defendant's online marketplace website] demonstrates that no reasonable consumer could conclude that by bidding on [a] listing, he was accepting an offer from [defendant] itself. [Defendant's] terms of service explicitly advise users that [defendant] is not making an offer through a listing, and . . . [defendant] lacks title and possession of the items listed."

Blazer d/b/a Carpenter Bee Solutions v. eBay Inc., 1-15-cv-01059 (ALND March 20, 2017, Order) (Bowdre, USDJ)

Tuesday, March 21, 2017

Expert’s Consideration of Pre-Issuance Value of Patented Invention Does Not Render Damages Opinion Unreliable​

The court denied defendant's motion in limine to exclude the testimony of plaintiff's damages expert for considering the pre-issuance value of the patented invention. "[T]here is no merit to [defendant's] argument that '[the expert's] opinion regarding the alleged value [of] the [patent’s] invention before it even issued is improper and should be excluded.' The economic data from the period before the issuance of the [patent] provided a sound basis from which to determine the value of the invention that was ultimately patented. . . . A patent does not have to be in existence in order to calculate the value that the invention would have, particularly if others are already practicing the invention in the market when the patent issues. . . . [Defendant] is correct that those earlier sales were not infringing sales, and therefore may not be included as contributing to the assessment of damages. But [the expert] committed no such error. . . . [He] began with the number in dispute and then accounted for several other variables, including deducting noninfringing profits, before ultimately deriving his estimated reasonable royalty rate. The initial number was an essential part of [his] model for calculating damages and is therefore a legitimate and relevant part of his damages analysis."

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED March 17, 2017, Order) (Bryson, CJ)

Monday, March 20, 2017

Market Participant's Subjective Beliefs Not Relevant to Lost Profits Claim​

The court granted a third party customer's motion to quash defendants' deposition subpoenas regarding plaintiff's lost profits claim because the discovery was not relevant. "Defendants argue that showing that [their customer] would not have purchased Plaintiff’s [product] even if the [accused product] was not on the market would defeat Plaintiff’s lost-profits claim to the extent that it is based on Defendants’ sales to [their customer] because it would demonstrate that Plaintiff would not have made the sales 'but for' the [accused product]. . . . Defendants contend that there is no need to look to [a] hypothetical marketplace when evidence about a what market participant would have done is available from the market participant itself -- in this case, [defendant's customer]. . . . The parties have not provided, nor has this Court’s independent research discovered any case law directly addressing the relevance of a market participant’s belief that if the infringing product had not been available, the market participant would have purchased no product rather than purchasing the patented product. . . . [T]he focus is not the subjective desires or retroactive beliefs of market participants, but rather the appropriate focus is the objective analysis of whether other acceptable noninfringing substitutes were available. . . . None of the factors for consideration under either the Panduit test or the two-supplier market test includes contemplation of subjective buying decisions by market participants, which is the information Defendants’ subpoena seeks to elicit."

Cutsforth, Inc. v. LEMM Liquidating Company, LLC et al, 0-12-cv-01200 (MND March 15, 2017, Order) (Brisbois, MJ)

Friday, March 17, 2017

Patent Expiring Prior to Issue Date Has No Enforceable Term​

The magistrate judge recommended granting defendants' motion to dismiss plaintiff's patent infringement claims for one patent-in-suit because the patent expired before it issued. "A patent’s term begins on the date of issuance and ends twenty years after the filing date of the earliest filed non-provisional application to which it claims priority. . . . [One patent-in-suit] expired on June 8, 2015 -- more than a month before it issued on July 28, 2015 -- and therefore it had no enforceable term. . . . If the statute were construed as [plaintiff] proposes, i.e., so that an expired-when-issued patent had some indefinite term extension past the ordinary twenty-year mark to be determined by the Court, then the public would have no notice as to when such patent term would end. Clearly, that cannot be the case."

Bartonfalls LLC v. Turner Broadcasting System, Inc., 2-16-cv-01130 (TXED March 15, 2017, Order) (Payne, MJ)

Implausible Infringement Allegations Subject to Dismissal at Pleading Stage​

The magistrate judge recommended granting defendants' motion to dismiss two of plaintiff's patent infringement claims for failure to state a claim. "Defendants argue that the no plausible construction of the claim term 'TV Channel' results in a uniform resource locator (‘URL’) meeting the TV Channel limitation as alleged. The Court agrees. . . . Having reviewed the parties’ arguments, the specification, and the portions of the prosecution history cited in the briefing, [plaintiff] has no plausible basis for alleging that the plain and ordinary meaning of ‘TV Channel’ (or ‘TV Channel’ properly construed) covers URLs, i.e., a unique address for a web page that makes content addressable on the Internet. The Supreme Court has opined that 'determining whether a complaint states a plausible claim is context-specific, requiring the reviewing court to draw on its experience and common sense.'. . . [T]his case falls squarely into the narrow slice of cases where based on the claims, specification, its experience, and common sense, the Court can readily conclude that plaintiff’s infringement allegations are implausible on their face."

Bartonfalls LLC v. Turner Broadcasting System, Inc., 2-16-cv-01130 (TXED March 15, 2017, Order) (Payne, MJ)

Thursday, March 16, 2017

Computer Virus Protection Patent Not Invalid Under 35 U.S.C. § 101​

Following a jury trial, the court denied defendant's motion for partial judgment that plaintiff’s malware monitoring patent encompassed unpatentable subject matter because the asserted claims did not lack an inventive concept. "[T]he claims recite an inventive concept when taken as an ordered combination and considered in context. The [patent] notes that, prior to its invention, malware protection programs were only able to detect and protect against known viruses and were installed on particular user computers. The [patent] details a new kind of virus protection: one that is located on a network computer, rather than the end-user computer, and which is able to detect unknown viruses by identifying suspicious components in unique and novel code. The [patent] therefore includes a 'non-conventional and non-generic arrangement of known, conventional pieces' such that, when taken as an ordered combination, it recites an inventive concept."

Finjan, Inc. v. Sophos, Inc., 3-14-cv-01197 (CAND March 14, 2017, Order) (Orrick, USDJ)

Wednesday, March 15, 2017

Plaintiff Precluded From Referencing "Presumption of Validity" at Trial​

The court granted defendant's motion in limine to preclude plaintiff from referring to the presumption of validity as unduly prejudicial. "[Defendant] contends that the phrase 'presumption of validity' is potentially confusing to the jury and should not be used at trial. . . . What is clear from the case law . . . is that prohibiting the use of that phrase is not error. . . . In the Court’s judgment, the use of the phrase 'presumption of validity' would add little to the jury’s understanding of the burden of proof on the validity issues. Moreover, the phrase might be confusing to the jury, to the extent that the jury is required to consider both that phrase and the Court’s instructions on the burden of proof. At minimum, the use of the term 'presumption' would require a further definitional instruction by the Court, without leading to any greater insight on the jury’s part as to the nature of the burden of proof on the validity issues. Accordingly, the Court will exclude the use of the phrase 'presumption of validity' and instead will address the burden of proof in its instructions to the jury."

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED March 13, 2017, Order) (Bryson, CJ)

Tuesday, March 14, 2017

Patent for Providing and Using Feedback Based on Data Gathered From Subjects 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 patent for providing and using feedback based on data gathered from subjects encompassed unpatentable subject matter and found that the claims were directed to an abstract idea. "[T]he Asserted Claims recite the abstract idea of providing and using feedback based on data gathered from subjects. . . . [H]umans have received and assessed information and thereafter provided feedback to one or more people from time immemorial. The aggregation of information and the use of information to provide advice to people is a practice that has long existed. . . . Information gathering from particular sources through the use of sensors, absent uniqueness of a sensor, does not change the nature of the information gathering. . . . [T]he [patent] does not disclose any unique sensor or require any special hardware or programming. . . . [T]he Asserted Claims are directed to the abstract idea of providing and using feedback based upon data gathered from subjects. Controlling precedent establishes that the idea of collecting and analyzing information or data, even when particularly limited, is an abstract idea under Section 101."

Icon Health & Fitness v. Polar Electro Oy, 1-11-cv-00167 (UTD March 10, 2017, Order) (Jenkins, SJ)

Monday, March 13, 2017

Patent for Extracting and Embedding Digital Images Within a Video Not Invalid Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s patent for extracting and embedding digital images within a video encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "Users of the [accused] product are . . . able to select a portion of . . . captured images along with a portion of [an] original video data stream. The product’s digital processing unit then uses its memory and processing components to 'spatially match[] the second image (from the user input video data stream) to the first image (from the original video stream).' This process substitutes the first image with the second image—i.e., the 'user-selected "Best Face."' . . . [Plaintiff] alleges that the above violates [the patent-in-suit]. . . . [Defendant] seeks to oversimplify the [patent] in arguing that the 'Best Face' invention uses a generic computer function to perform an action that could be performed by a human by cutting-and-pasting. The Court declines to equate the 'Best Face' technology with 'arts and craft classes' or making collages. . . . [T]he [patent] describes more than just a 'generic computer performing a generic function.' To grant [defendant's] Motion to Dismiss on the basis of patent-ineligibility would run contrary to the warnings in [Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)] and [Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012)] that courts not construe the categories of patent ineligible subject matter too broadly."

Prisua Engineering Corp. v. Samsung Electronics Co., Ltd. et al, 1-16-cv-21761 (FLSD March 9, 2017, Order) (Moore, USDJ)

Friday, March 10, 2017

974 Patent Claims Invalid Under 35 U.S.C. § 101 Based on Analysis of 10 Representative Claims

The court granted defendants' motion to dismiss because the asserted claims of plaintiff’s ten financial product patents encompassed unpatentable subject matter and rejected plaintiff's argument that it was improper to invalidate all 974 claims based on ten representative claims. "[Plaintiff] argues that Defendants’ mere mention of ten claims is not clear and convincing evidence that all of the claims in all of the asserted patents (totaling 974 claims) are directed to ineligible subject matter. . . . On balance, the Court finds Defendants’ use of ten representative claims that summarize claimed features from all asserted claims is permissible and reasonable under the circumstances. . . . Defendants’ selection of representative claims and their diligence in explaining how those representative claims address features covered by all asserted claims [is] not only reasonable, but necessary, considering how the Court would be unduly burdened if it had to entertain 'rigorous analysis of every single claim [out of potentially 974 total claims], and of each limitation individually and as an ordered combination' as [plaintiff] suggests."

Phoenix Licensing, LLC et al v. Consumer Cellular, Inc., 2-16-cv-00152 (TXED March 8, 2017, Order) (Payne, MJ)

Thursday, March 9, 2017

Disclosure of Confidential Information to Competitor’s Product Designer Precluded​

The court granted an intervenor's motion to preclude disclosure of the intervenor's confidential technical information to plaintiff's expert because the expert designed products for intervenor's competitor. "While the Court recognizes and appreciates the difficultly for Plaintiff in obtaining qualified experts, the risk of inadvertent disclosure that arises from [the expert's] ongoing design work for a competitor company outweighs that difficultly. Moreover, the difficulties here are alleviated by the fact that Plaintiff has another technical expert. . . . [Plaintiff's expert] is free to review [a defendant’s] confidential materials as there is no dispute over [his] review of those materials. The only exception of course is those documents produced by [the defendant] that contain [intervenor's] confidential information. In addition, the Court is willing to accommodate the special circumstances in providing testimony from the experts at trial."

Iridescent Networks, Inc. v. AT&T Inc. et al, 6-16-cv-01003 (TXED March 7, 2017, Order) (Love, MJ)

Wednesday, March 8, 2017

Two Way Location Tracking Patents Not Patent Ineligible Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s two way location tracking patents encompassed unpatentable subject matter because the asserted claims did not lack an inventive concept. "Combining the dynamic 'buddy list' and 'use specific group' systems to GPS tracking constitutes a 'non-conventional and non-generic arrangement of known, conventional pieces.'. . . Instead of requiring a manufacturer to permanently link the two wireless devices, as in the child-tracking prior art, the users of the [patents-in-suit] can add or remove persons being tracked through modifications of the buddy list or through the creation of a use specific group. . . . [T]he combination of a dynamic buddy list or use specific group and GPS technology transforms the abstract idea of the gathering, transmission, and display of the location information of a certain subset of individuals from a list or individuals requested to perform a service into a 'specific, discrete implementation' of this idea that is sufficient to qualify as patent-eligible subject matter."

X One, Inc. v. Uber Technologies, Inc., 5-16-cv-06050 (CAND March 6, 2017, Order) (Koh, USDJ)

Tuesday, March 7, 2017

Willfulness Summary Judgment Requires Evidence of Subjective Beliefs​

The court denied defendant's motion for summary judgment that it did not willfully infringe plaintiff's prostate treatment patent because defendant failed to present evidence of its subjective beliefs. "The Court recognizes that the arguments [defendant] has made in its summary judgment motions of noninfringement and invalidity provide some support for its contention that it was at least not clear that the patent was both valid and infringed. The Supreme Court has made clear, however, that the issue of willfulness turns not on the objective reasonableness of the defendant’s conduct, but on the defendant’s subjective beliefs. A jury might well conclude from the objective evidence . . . that [defendant] did not subjectively believe it was infringing a valid patent. . . . But [defendant] has offered no other summary judgment evidence going to the subjective beliefs of its decisionmakers."

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED March 3, 2017, Order) (Bryson, CJ)

Monday, March 6, 2017

Asserted Claims of Two of Three Challenged Fitbit Patents 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 physical activity detection patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] argues that Defendants’ conception of the asserted claims is too high-level, and overlooks the fact that they claim a specific structure (e.g., a wearable band with a motion detection component and LEDs) that provides this technological improvement. The Court agrees with Defendants that claim 20 is directed to an abstract idea. . . . [T]he wearable band with a motion detection component and LEDs 'merely provide a generic environment in which to carry out the [] idea of [collecting and reporting data on cumulative physical activity].' This adds little to the substance of the claim. Instead, the focus remains on the collecting and reporting functions themselves. So characterized, the 'character as a whole' of claim 20 is an abstract idea."

Fitbit Inc. v. AliphCom et al., 5-16-cv-00118 (CAND March 2, 2017, Order) (Freeman, USDJ)


The court granted defendant's motion for judgment on the pleadings because the asserted claims of plaintiff’s physical activity monitoring notification patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] responds that the asserted claims are not drawn to an abstract idea because they recite a specific improvement in portable activity monitoring devices: a notification solution that ensures that a user will receive the notification at the time he will be able to view and comprehend it. . . . Assessing their 'character as a whole,' these claims are directed to collecting and analyzing information to detect a particular condition, and notifying a user at a particular time when that condition is detected. They are not directed to anything more technically specific -- the claims do not focus on (or even recite) specific algorithms or give technical details about structures that must be used to perform the claimed functions. Instead, they focus on the high-level functions of collecting, analyzing, and notifying themselves. This focus is an abstract idea."

Fitbit Inc. v. AliphCom et al., 5-16-cv-00118 (CAND March 2, 2017, Order) (Freeman, USDJ)


The court denied defendant's motion for judgment on the pleadings that the asserted claims of plaintiff’s biometric monitoring device patent encompassed unpatentable subject matter because the claims were not directed toward an abstract idea. "Evaluating the claims in light of the specification for their 'character as a whole,' the Court finds that the asserted claims are directed to a particular variant of heart rate data collection: selective heart rate data collection through minimized user interaction. . . . [T]hese restrictions comprise a substantial portion of the collective substance of the claims and color their character as a whole. . . . By automating the point at which data collection stops and combining that with a single-gesture trigger, the [patent] claims focus on an improvement to heart rate monitors as a technological tool, which overcomes the problem of bulky user interfaces and provides a way to more easily and efficiently gather a selective heart rate reading."

Fitbit Inc. v. AliphCom et al., 5-16-cv-00118 (CAND March 2, 2017, Order) (Freeman, USDJ)

Friday, March 3, 2017

Post-IPR Estoppel Not Limited by Joinder​

The court granted plaintiff's motion for summary judgment that its server load balancing patents were not invalid as obvious because defendant was estopped from asserting its prior art combinations following inter partes review. "[Defendant] seeks to invalidate the asserted claims based on prior art combinations of which it was aware before it filed its IPR petitions. . . . In [defendant's] view, the fact that it sought joinder with [another petitioner's] IPR proceedings means that it would have been unreasonable for it to have raised any invalidity arguments that were not presented in [the other petitioner's] IPR. Despite [defendant's] claims to the contrary, there is no 'mirror image' rule for joinder. To the contrary, the cases [defendant] cites for support explicitly contemplate that requests for joinder can involve petitions that assert different grounds of invalidity. . . . Allowing [defendant] to raise arguments here that it elected not to raise during the IPR would give it a second bite at the apple and allow it to reap the benefits of the IPR without the downside of meaningful estoppel."

Parallel Networks Licensing LLC v. International Business Machines Corporation, 1-13-cv-02072 (DED February 22, 2017, Order) (Jordan, CJ)

Thursday, March 2, 2017

Foreign Language Documents Not Exempt From Discovery Obligations​

The court partially granted plaintiff's motion to compel the production of defendant's communications with third parties that referred to plaintiff or the patent-in-suit and rejected defendant's argument that it was not obligated to produce foreign language documents. "[Defendant] argues that it is not obligated to translate documents from Mandarin to English to determine whether the documents are responsive to these and other discovery requests. Its counsel cites no authority supporting this position. Courts have held that the producing party has no obligation to translate documents produced in discovery into English, but I have not located any authority for the proposition that a party can avoid producing documents responsive to a discovery request that are in a foreign language. Accordingly, [defendant] cannot avoid producing responsive documents merely because its counsel cannot comprehend the documents written in a foreign language."

TASER International, Inc. v. PhaZZer Electronics, Inc. et al, 6-16-cv-00366 (FLMD February 28, 2017, Order) (Spaulding, MJ)

Wednesday, March 1, 2017

District Court Verdicts in 2016


Internet Advertising Patent Not Directed to Financial Product or Service​

The Board denied institution of covered business method review of a patent directed to a system for delivery of targeted advertisements, finding the patent was not directed to a financial product or service. "[Petitioner] contends the independent claims 20 and 25 each recite features relating to the presentation and monetization of advertisements. . . . We agree with [patent owner] that, based on the Federal Circuit’s new guidance in [Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016)] [petitioner] has not demonstrated that at least one challenged claim of the ’651 patent is directed to a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. . . .We agree with [petitioner] that these claims generally apply to Internet advertising. The Federal Circuit, however, explained in Unwired Planet that claims broad enough in scope to cover the facilitation of advertisement, without more, are not enough to justify concluding that a patent is a covered business method patent eligible for review. . . . [A]lthough Internet advertising might lead to a sale of a good or service, mere probabilities or possibilities fall short of demonstrating operations necessarily used in the practice, administration, or management of a financial product or service."

Petition for Covered Business Method Patent Review by Google Inc., CBM2016-00096 (PTAB February 27, 2017, Order) (Zecher, APJ)

On-Line Registration Patent Not Directed to Financial Product or Service

​ The Board denied institution of covered business method review of a patent directed to on-line or web-site registration, finding the patent was not directed to a financial product or service. "[O]ur focus is on what the ’792 patent claims, not solely the exemplary embodiments described in the Specification, some of which are related to finance and some of which are not. . . . Petitioner argues that [Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016)] requires the Board to 'strike the proper balance between (1) an invention of general usage that could also be used in the administration of a financial service and (2) an invention that is used in administration of a financial service but that could also be used for non-financial purposes.' Petitioner, however, does not quote anything in Unwired Planet for this proposition, which appears to contradict the Federal Circuit’s direction that covered business method patents 'are limited to those with claims that are directed to methods and apparatuses of particular types and with particular uses ‘in the practice, administration, or management of a financial product or service,’' and '[i]t is not enough that a sale . . . may occur, or even that the specification speculates such a potential sale might occur.'"

Petition for Covered Business Method Patent Review by Twilio, Inc., CBM2016-00099 (PTAB February 27, 2017, Order) (Arbes, APJ)

Targeted Advertisement Patent Not Directed to Financial Product or Service​

The Board denied institution of covered business method review of a patent directed to a system for delivery of targeted advertisements, finding the patent was not directed to a financial product or service. "According to Petitioner, the systems and methods for delivering targeted advertisements are financial in nature because someone receives money to deliver advertisements about a product or service. . . .We agree with Patent Owner that, based on the Federal Circuit’s new guidance in [Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016)], Petitioner has not demonstrated that the challenged claims of the ’393 patent are directed to a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. . . . An advertisement is not considered an 'offer for sale' under traditional contract law and it does not require or guarantee a sale or any financial transaction will occur. . . . Although targeted advertising might lead to a sale of a good or service, mere probabilities or possibilities fall short of demonstrating operations necessarily used in the practice, administration, or management of a financial product or service."

Petition for Covered Business Method Patent Review by Google Inc., CBM2016-00097 (PTAB February 27, 2017, Order) (Braden, APJ)

Tuesday, February 28, 2017

Lift of Lengthy Stay Pending IPR Warrants Addition of 494 New Accused Products​

The court granted plaintiffs' motion to amend their infringement contentions to add 494 accused products and 21 exemplary claim charts after a stay was lifted because defendant was not unduly prejudiced by the amendments. "[Defendant] has not described with any specificity how it would be prejudiced by having to defend against the additional claims in this action, without discovery deadlines or a trial date, as opposed to defending against the claims in a parallel action. Indeed, [defendant] may benefit from the efficiencies of defending against the allegations in a single action. . . . Plenty of time remains to address [plaintiff's] new theories, regardless of how disruptive they are. Addressing these claims in the same action is more efficient and likely less burdensome. . . . The Court does agree with [defendant] that '[t]here must be some reasonable cut-off date after which [the plaintiff] cannot further expand the case simply because [the defendant’s] product cycle has outpaced the resolution of this case.' But because of the lengthy stay of this litigation and the relatively early stage at which the parties find themselves procedurally, that 'reasonable cut-off date' will be the date of this order."

Advanced Micro Devices, Inc. et al v. LG Electronics, Inc. et al, 3-14-cv-01012 (CAND February 24, 2017, Order) (Illston, USDJ)

Monday, February 27, 2017

Statistics on District Court 12(b)(6) Motions under 35 USC 101



Apportionment of Royalty Base Appropriate for Process Claims​

The court denied plaintiff's motion to exclude the testimony of defendant's damages expert regarding apportionment of the royalty base as unreliable and rejected plaintiff's argument that apportionment was inappropriate for process claims. "To the extent [plaintiff] argues [the expert's] opinions are unreliable because the asserted claims cover 'an entire process' rather than a multi-component product such that 'the EMVR, and the related line of cases' do not apply, such an argument misunderstands that apportionment is a fundamental concept in patent damages that is not limited to the EMVR context. This is because a 'key inquiry' in the reasonable royalty analysis 'is what it would have been worth to the [infringer], as it saw things at the time, to obtain the authority to use the patented technology, considering the benefits it would expect to receive from using the technology and the alternatives it might have pursued.'. . . [Plaintiff] cites no authority in support of its argument that apportionment of the royalty base is inappropriate where process claims, rather than multi-component product claims, are concerned."

Kaneka Corporation v. Zhejiang Medicine Co., Ltd. et al, 2-11-cv-02389 (CACD February 22, 2017, Order) (Otero, USDJ)

Friday, February 24, 2017

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

​ The magistrate judge recommended denying defendant's motion to dismiss on the ground that plaintiff’s signal processing patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "[Defendant] argues that the asserted claims of the [first] Patent are 'simply directed to a generic way of communicating information to determine which television program to display.' The Court disagrees. The [first patent's] claims are directed to overcoming problems specific to the distribution of streaming digital television programming and other digital content over computer networks. . . . [T]he claims of the [second] patent are directed at a receiver station that receives and processes signals. The particularized elements of those claims are similar to the claim elements in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)]. . . . [T]he [third patent's] claims address a specific technological problem rooted in signal transmission and processing. . . . Similarly, the [fourth patent's] claims are directed to a process of matching a 'signal processing scheme' to the variable format of a received digital signal to output television programming. Finally, the Court finds that the [fifth patent's] claims are directed to a method of handling information transmissions whose variable-length data must first be decoded before the data can be used to create video images. . . . The asserted claims recite patentable subject matter as defined by precedent interpreting § 101."

Personalized Media Communications, LLC v. Funai Electric Co., Ltd., 2-16-cv-00105 (TXED February 22, 2017, Order) (Payne, MJ)

Thursday, February 23, 2017

Top Patent Classifications by District Court Determinations through 2016

Longer License Term Does Not Support Expert’s Increase in Royalty Rate

​ The court granted defendant's motion to exclude the testimony of plaintiff's damages expert regarding a royalty rate as unreliable for double-counting the duration of the rate. "[The expert] adjusts the hypothetical royalty rate upward by 5 cents to account for the fact that the hypothetical license would be 2.5 years longer than [a third party] license. However, he also opines that the hypothetical license would have resulted in a running royalty, as opposed to a lump sum. A running royalty supposes that the licensee will pay a per unit royalty. Without additional facts or testimony, a running royalty necessarily accounts for any longer duration through an increased royalty base. . . . There is simply no reliable support in the record for [plaintiff's] notion that [defendant] might pay more for earlier, guaranteed access to newer technology. In fact, such notion appears to be contradicted by other statements in [the expert's] report. . . . [T]he Court’s determination here that [the expert's] royalty rate improperly double counts is not a broader statement that Georgia-Pacific Factor 7 is per se inapplicable to a running royalty as a matter of law. . . . However, Plaintiff has not marshaled sufficient facts to show that such is the case here. . . . [A]ccordingly, [the expert] may not testify that an additional 2.5 years on the hypothetical license warrants an increase of 5 cents in his calculated running royalty."

Saint Lawrence Communications, LLC v. ZTE Corporation et al, 2-15-cv-00349 (TXED February 21, 2017, Order) (Gilstrap, USDJ)

Wednesday, February 22, 2017

New District Court Patent Cases through 2016


The judges chart has been updated to reflect the actual number of cases per judge, rather than their percentage of the overall cases. Please note that district judges and magistrate judges are many times on the same cases, so there will be an overlap of those judges' cases. Therefore, the total number of cases will not equal the sum of each individual judge's cases.

Willful Infringement Claim Does Not Require Allegation of Egregious Conduct​

The court denied defendant's motion to dismiss plaintiff's willful infringement claim for failure to state a claim. "Willful infringement requires that the plaintiff plead that the defendants were 'aware of the asserted patent but acted despite an objectively high likelihood that [their] actions constituted infringement of a valid patent.' The complaint adequately alleges that the defendants committed acts of infringement with full knowledge of the plaintiff’s rights in its patents. That is sufficient."

Crypto Research, LLC v. Assa Abloy, Inc. et al, 2-16-cv-01718 (NYED February 17, 2017, Order) (Donnelly, USDJ)

Willful Infringement Claim Requires Allegation of Egregious Conduct​

The court granted defendant's motion to dismiss plaintiffs' willful patent infringement claims for failure to state a claim. "Plaintiffs have failed to state a claim for willful infringement because they have failed to allege any facts suggesting that Defendant’s conduct is 'egregious . . . beyond typical infringement.' Plaintiffs have simply made the conclusory allegations that Defendant was aware of the [patent-in-suit] and that the 'continued offer, use, and promotion of its infringing social casino products . . . constitutes willful and egregious infringement behavior.'. . . [M]erely asserting that Defendant knew about the patent and continued its allegedly infringing activity is not enough to constitute willful infringement."

CG Technology Development, LLC et al v. Zynga, Inc., 2-16-cv-00859 (NVD February 17, 2017, Order) (Jones, USDJ)

Tuesday, February 21, 2017

Digital Data Remote Mirroring Patent Ineligible Under 35 U.S.C. § 101

​ The court granted defendant's motion for summary judgment of invalidity because the asserted claims of plaintiff’s digital data remote mirroring patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] contends that the claimed invention is not directed to an abstract idea because it is an improved system of copying data. . . . [T]he Court agrees with [defendant] that the focus of the claims is the abstract idea of backing up data. . . . It is true, as [plaintiff] observes, that the specification identifies several disadvantages of the prior art back-up methods. . . . But the claims do not support [plaintiff's] contention. The claims do not provide any concrete details that limit the claimed invention to a specific solution to the problem of remote back-up of digital data. . . . Additionally, the claims use existing computer functionality as a tool to better back up data and do not themselves purport to improve anything about the computer or network itself. . . . Rather, the claims rely on the ordinary storage and transmission capabilities of computers within a network and apply that ordinary functionality in the particular context of remote mirroring. The specification's insistence that the claimed invention is an 'advancement' over the prior art does not overcome the Court's conclusion that the claims as written focus on an abstract idea."

Intellectual Ventures I LLC et al v. Symantec Corporation, 1-13-cv-00440 (DED February 16, 2017, Order) (Stark, USDJ)

Friday, February 17, 2017

Discovery Into Commission History of Intellectual Ventures Licensing Executive Allowed​

The court granted defendants' motion to compel the production of documents regarding prior licensing commissions earned by plaintiff's 30(b)(6) witness on licensing because the evidence was relevant and not cumulative. "[The witness] is a licensing executive at [plaintiff] and [plaintiff's] designated corporate representative witness on licensing. . . . Defendants argue that [the witness's] financial stake in the case grows larger as the expert’s damages number increases. Accordingly, Defendants maintain that to effectively assess [the witness's] credibility, a jury needs access to the full details regarding how much [the witness's] compensation will be impacted by the contingent payment. . . .They further assert that [plaintiff's] damages expert relies heavily on [the 30(b)(6)] witness testimony, and thus these opinions hinge on [his] credibility. . . . Defendants have presented a reasonable explanation for why the documents sought are not cumulative: evidence of past commissions received by [the witness] goes to showing the extent of potential bias [he] may exhibit in this current case, based on how much he stands to gain relative to past commissions. In short, Defendants seek information to place [his] potential fee in the current case in context. The information currently in Defendants’ possession speaks to the fact of [the witness's] potential bias; the information they seek relates to the extent of this alleged bias."

Intellectual Ventures II LLC v. AT&T, Inc. et al, 1-13-cv-00116 (TXWD February 14, 2017, Order) (Lane, MJ)

Thursday, February 16, 2017

Success Rates on Requests to Stay Pending IPR, CBM, or PGR through 2016

Survey Based on Rejected Claim Construction Renders Damages Expert’s Opinion Unreliable​

The court granted defendant's motion to exclude the testimony of plaintiff's survey expert regarding one of the patents-in-suit, and all related damages estimates, as unreliable because it was based on a rejected claim construction. "[The expert's] survey for [one] patent measured the value attributed to manual or automatic 'content sharing,' which [he] described as a '[m]ethod of transferring songs, movies, and applications across devices . . . owned by the user.'. . . [I]t appears that [his] questions for [that] patent reflect the claim construction [plaintiff] initially proposed. . . . [which] was rejected in favor of the narrower ‘enabling or modifying communications capabilities.’ In light of that construction, ‘provisioning’ features on a user's device bears no reasonable connection to sharing content across devices. [Plaintiff] suggests that [his] survey was intended to measure the value attributed to automatically provisioning all of one's devices after manually provisioning a single device. But this would still make the survey inaccurate, as the benefit of the invention was tied to remote provisioning, not automatic provisioning. . . . The combined result is a survey question – and survey responses – targeted at an invention other than the one at issue in this litigation. This is a problem of admissibility rather than weight. The . . . survey results must therefore be excluded, along with all damages estimates hinging on those survey results.”

Unwired Planet, LLC v. Apple, Inc., 3-13-cv-04134 (CAND February 14, 2017, Order) (Chhabria, USDJ)

Wednesday, February 15, 2017

Settlement Enforceable Despite Later Finding of Patent Invalidity Under 35 U.S.C. § 101​

Following an order granting summary judgment that the patent-in-suit was invalid for lack of patentable subject matter, the court granted plaintiff's motion to enforce an earlier settlement agreement between plaintiff and a third party supplier who agreed to indemnify a defendant. "Regret is no basis in the law to undo a contract made. . . . Objective indicators demonstrate that a contract was made. First, the August 8th email clearly demonstrates that [the intervenor] believed an agreement had been reached. The August 8th agreement set out the payment terms and a July 21st email set out the boundaries of the license [plaintiff] would offer [the intervenor]. . . . [T]he stipulation filed with this court clearly indicates an agreement had been reached. It represented to this Court that the parties had 'reached an agreement in principle. . . .' That stipulation evidences that [plaintiff] considered the matter settled and that [the indemnified defendant], an interested and close observer of the negotiations, did as well. . . . [The Intervenor] points out there were open contract terms such as assignability, notice, choice of law, and confidentiality. Delaware law, however, explicitly provides that '[a] settlement agreement is enforceable if it contains all essential terms, even though it expressly leaves other matters for future negotiation.'"

CallWave Communication LLC v. Verizon Services Corp. et al, 1-12-cv-01704 (DED February 13, 2017, Order) (Andrews, USDJ)

Tuesday, February 14, 2017

Nonexistent Redesign Warrants Finding of Contempt and Award of Enhanced Damages and Attorney Fees​

Following a bench trial, the court found defendants' purportedly redesigned products infringed plaintiff's radial coupler patent in violation of a permanent injunction because there was insufficient evidence of a redesign. "[Defendants] are certainly vague, or circumspect, about how this purported redesign came about. . . . An actual redesign – as opposed to some after-the-fact, illegitimate claim of redesign used to mask continued infringement – would have been a pointed and considered event that left a distinct trail and explanation from the redesigners and those who ordered it. . . . The evidence here was more than sufficient to demonstrate that there was no 'redesign' in 2008 (in the sense the Federal Circuit uses the term and people acting in good faith purposefully conduct themselves) that included changes to the thread angles. . . . [I]t is quite obvious that there is a global credibility problem with the [defendants’] case. As a result, it is difficult if not impossible to conclude that there was any 'redesign' or 'design-around' because, certainly, modifications done with an eye toward getting around the claims of a patent . . . would have been carefully done, and would have taken place on all the sizes of the accused devices within a brief time and not in dribs and drabs over the course of several months. . . . It must also be noted that [defendants] never mentioned to their customers that they made any changes at all, colorable or otherwise, to their couplers or the angle or number of interior threads. . . . Nothing that seems anything like a design around or changes amounting to a colorable difference happened here. . . . There can be no doubt that [plaintiff] is entitled to a discretionary award of attorneys’ fees under 35 U.S.C. § 285 and Octane Fitness. . . . [A]n appropriate exercise of discretion both warrants and justifies an award to [plaintiff] of treble damages . . . ."

R-Boc Representatives, Inc. v. Minemyer, 1-11-cv-08433 (ILND February 10, 2017, Order) (Cole, MJ)

Monday, February 13, 2017

Number of Patent Litigation Proceedings in 2016

Wireless Device Pairing Patents 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 wireless device pairing patents encompassed unpatentable subject matter because the ordered combination of claim elements contained inventive concepts. "[Plaintiff's] asserted patents relate to a specific approach to pairing a wireless device, such as a wearable activity tracker, to a 'client' and/or 'server.' . . . All of the asserted claims recite a method or system for pairing that involves three discrete entities: a portable monitoring device, a 'client,' and a 'server.'. . . [N]one of the claim elements, assessed individually, provide an inventive concept. . . . Nevertheless, the Court agrees with [plaintiff] that the ordered combination of claim elements, interpreted in the light most favorable to [plaintiff], contains inventive concepts. . . . [O]ne problem that confronted the process of pairing small, portable devices was that they were 'purposefully designed to eliminate keyboards and multiple buttons in order to satisfy other design criteria.' Tapping overcame this problem in an inventive way because it took advantage of the inherent, technical capabilities of the portable monitoring device -- its ability to detect motion with a motion sensor -- to provide a manner of validating the device that was different from traditional forms of input (i.e., buttons and keyboards). . . . [T]he fact that tapping appears in the prior art does not prevent it from supplying an inventive concept here. Second, the use of a server as a part of the claimed pairing process supplies an inventive concept."

Fitbit, Inc. v. AliphCom d/b/a Jawbone et al, 5-15-cv-04073 (CAND February 9, 2017, Order) (Davila, USDJ)

Friday, February 10, 2017

Plaintiff Sanctioned for Doubling-Down on Unsuccessful Motion for Sanctions​

The court granted in part defendants' motion for sanctions under 28 U.S.C. § 1927 and the court's inherent authority for fees incurred in responding to plaintiffs' motion for terminating and disqualification sanctions. "[T]he Court found '[plaintiffs'] . . . suggestion [of a massive conspiracy by [defense] counsel] . . . entirely implausible.'. . . [T]he advancement of serious charges of misconduct involving an alleged conspiracy by multiple attorneys must be supported by evidence and not mere suspicion or coincidence -- especially when a party decides to file such an attack in Court, leveling potentially career-ending allegations in a public forum. . . . [Plaintiff] continued to pursue its accusations of serious misconduct even after its receipt and review of [defense] counsel's unrebutted declarations, which provided detailed, entirely credible explanations for their conduct. . . . Instead, [plaintiff] seemed to 'double-down' on its accusations, insisting that the attorney declarations lacked credibility and continuing to pursue 'powerful' sanctions. [Plaintiffs'] continued pursuit consequently required [defendants], and the Court, to prepare for a lengthy hearing on the Sanctions Motion, and later for the Court to decide that motion (and now [defendants'] Fees Motion as well). . . . From that point forward (i.e., after [defendants filed their opposition]), [plaintiff] multiplied the proceedings, in an unreasonable manner, increasing costs, by intentional misconduct."

W.L. Gore & Associates Inc. et al v. C.R. Bard Inc., 1-11-cv-00515 (DED February 8, 2017, Order) (Stark, USDJ)

Thursday, February 9, 2017

Top Accused Infringers, Patentees, and Law Firms in 2016


What is a Patent Accusation?

A Patent Accusation is a more granular way to measure the volume of litigation activity than counting the number of cases or litigants. As used in this report, the term means a request for relief in a U.S. district court, the ITC or the PTAB (AIA proceedings), the resolution of which could determine if a patent has been infringed or the patent’s validity or enforceability.
For example, a civil case with one plaintiff asserting one patent against one defendant would involve one patent accusation, whereas a case with one plaintiff asserting 5 patents against 10 defendants would result in 50 infringement accusation. Multiple claims involving the same parties and patents (e.g., a claim of infringement and a declaratory judgment counterclaim of invalidity or unenforceability) are counted as a single accusation. In a PTAB proceeding, each challenge to the patentability of a patent would create one patent accusation.


Patent for Changing the Physical Properties of a Structure Through Concurrently Applied Energies Not Ineligible Under 35 U.S.C. § 101​

Following a bench trial, the court found that plaintiff's patent for changing the physical properties of a structure by concurrently applying multiple energies did not encompass unpatentable subject matter because the asserted claims were not directed toward a natural law. "Although the asserted claims of the [patent] encompass descriptions of natural laws, such as the mathematical concepts embodied within the Larson-Miller relationship, the government misinterprets the [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)] test. The relevant inquiry is not whether the claims encompass ineligible subject matter, but whether the claims are 'directed to' ineligible subject matter. . . . [T]he asserted claims . . . are directed to a new and more efficient method for treating metal parts to change their physical properties, removing, reducing, or affecting (and in a few instances introducing) stresses or other characteristics. While the application of the Larson-Miller relationship may be an abstract idea in some contexts, that is not the case here. . . . Rather than attempting to claim the Larson-Miller relationship itself, the [patent] draws upon the Larson-Miller relationship as a baseline or predicate for applying two energies concurrently above an activation energy of the material to be processed."

Hitkansut LLC, et. al. v. USA, 1-12-cv-00303 (COFC February 6, 2017, Order) (Lettow, CFCJ)

Wednesday, February 8, 2017

Expert’s Untimely Disclosure in Reply Report Justifies Cost Shifting of Reasonable Expert Fees ​

The court denied defendants' motion to strike portions of a reply report of plaintiff's expert for introducing previously undisclosed opinions because the prejudice to defendants could be cured by ordering plaintiff to bear 2/3 of the costs of sur-reply reports. "[T]he Court agrees with Defendants that the [reply report] to some extent exceeds 'the proper scope of a reply' and that portions of it are subject to being excluded under Rule 37(c)(1). . . . There is sufficient time in the approximately 11 months before trial to ameliorate the prejudice to Defendants. . . . [Plaintiff] opposes paying Defendants' expert costs, but the Court agrees with Defendants that the costs of having to largely 'redo' their experts' analysis in light of the [reply report] should not be borne entirely by Defendants. [Plaintiff's expert's correction of an] error has had a prejudicial impact on Defendants, including by delaying their ability to complete expert discovery, and it will cost Defendants additional time and money to respond fully and fairly to the [reply report]. Accordingly, the Court will require [plaintiff] to pay two-thirds of the reasonable expert costs incurred in connection with the preparation of sur-reply reports."

Intellectual Ventures II LLC v. T-Mobile USA Inc. et al, 1-13-cv-01633 (DED February 6, 2017, Order) (Stark, USDJ)

Tuesday, February 7, 2017

Non-Lawyer Communications Between Patent Buyer and Seller Concerning Strength and Enforceability of Patents Protected by Common Interest Doctrine

The court denied defendant's motion to compel the production of communications between plaintiff and the prior owner of the patents-in-suit that plaintiffs withheld as privileged and rejected defendant's interpretation of the common interest doctrine. "[A]s long as the communications between buyer and seller concern the strength and enforceability of the patents, they are primarily for a legal purpose and are protected under the common-interest doctrine. . . . Many of the communications . . . are between non-attorneys. [Defendant] . . . argues that the common-interest doctrine only applies to communications between attorneys who are sharing information, while acknowledging, however, that 'there is a split in authority' on this point. As a fallback, [defendant] argues that even where clients with a common legal interest are discussing privileged advice among themselves, the discussion must be directly and explicitly 'at the direction of counsel' in order to be privileged. [Defendant] disregards the realities of communications between attorneys and clients and between non-lawyers who share a common legal interest. . . . [T]he proposed rule is simply unworkable in a case like the present one, where multiple attorneys and executives are working together, with the help of assistants who gather or communicate information for them."

Crane Security Technologies, Inc. et al v. Rolling Optics AB, 1-14-cv-12428 (MAD February 3, 2017, Order) (Kelley, MJ)

Monday, February 6, 2017

Top Attorneys in 2016

Expert Opinions on the Value of 4G Connectivity Excluded as Unreliable​

The court granted plaintiff's motion to exclude the testimony of two defense experts regarding the value of 4G cellular connectivity in certain devices as unreliable. 'First, [the experts] have not taken into account why a consumer might prefer one . . . device or another, and have not excluded factors other than connectivity which might explain preferences. While [one expert] characterizes these differences as 'minor,' he concedes that he did not have the data to control for these differences. Among other things, he did not control for differences in weight, materials, battery life, the presence of GPS, or the inclusion of finger print sensors. The adjustment which he does make for screen size is insufficient. Second, the value of 4G connectivity, which they put at $251 per headset does not translate to the incremental value of which [defendant's] patents add to the 4G standard. Given that this is twice the selling price of the average [plaintiff] hand set and approximately the entire selling price of others in the market . . . the opinion is implausible, and inherently unreliable. . . . Third, the [expert’s] analysis does not answer the question of the incremental value of [defendant’s] patent portfolio to the 4G standard. . . . [The experts] have valued connectivity, in essence the standard, rather than the contribution.”

TCL Communication Technology Holdings, Ltd v. Telefonaktienbolaget LM Ericsson et al, 8-14-cv-00341 (CACD February 2, 2017, Order) (Selna, USDJ)

Friday, February 3, 2017

Expert’s Failure to Explain Basis For Hypothetical Negotiation “Compromise” Renders Opinion Unreliable

The court granted defendant's motion to exclude the testimony of plaintiff's damages expert regarding a reasonable royalty as unreliable for relying on a rule of thumb profit split. "In calculating a reasonable royalty resulting from a hypothetical negotiation, [the expert] determines [the parties'] respective maximum and minimum 'economic positions.' His analysis results in no overlap (i.e., the maximum amount [defendant] is willing to pay for a license is less than the minimum amount [plaintiff] is willing to accept). As [the expert] notes, 'both parties would need to compromise in order to arrive at a reasonable royalty.' He then proceeds to choose a rate between [defendant's] maximum and [plaintiff's] minimum. . . . [T]he Court agrees with [defendant] that [the expert's] failure to expressly account for varying pricing structures and the lack of a sufficiently detailed explanation for how he reached the 'compromises' set out in Table 15 renders [his] reasonable royalty analysis, as presently articulated, insufficiently reliable."

Yodlee Inc. v. Plaid Technologies Inc., 1-14-cv-01445 (DED February 1, 2017, Order) (Stark, USDJ)

Thursday, February 2, 2017

Defendant’s Delay in Seeking Summary Judgment Warrants Denial of Attorney Fees Award Under 35 U.S.C. § 285​

Following summary judgment of laches and equitable estoppel, the court denied defendant's motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions were not unreasonable. "If these defenses were so obvious and irrefutable, it seems to me that Defendant would have been diligently pursing dismissal based on these defenses from the outset. Instead, Defendant included these defenses in its answer along with a plethora of other defenses, but did not file a appropriate motion. . . . If this case were as objectively unreasonable as Defendant now claims, Plaintiff’s delay in asserting infringement would have been the only discovery needed. . . . [I]t wasn’t until over two years after this case was filed, and after thousands of pages of briefing on an array of topics which proved to be unnecessary, the parties addressed the laches or estoppel issue. . . . The point is, if Plaintiff’s claims were as objectively unreasonable and 'exceptionally weak', as Defendant now claims, Defendant would have sought to have the case dismissed years ago. Instead, over a million dollars in attorneys fees were incurred by both sides while the case proceeded. The irony is that Defendant’s delay in asserting the defenses resulted in the accumulation of fees for which they now seek reimbursement."

Cooling & Applied Technology, Inc. v. Morris & Associates, Inc., 4-14-cv-00368 (ARED January 31, 2017, Order) (Wilson, USDJ)

Wednesday, February 1, 2017

Money Transfer Patents Ineligible Under 35 U.S.C. § 101​

The magistrate judge recommended granting defendant's motion to dismiss because the asserted claims of plaintiff’s money transfer system patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The summary of the invention in each patent describes the 'primary objective' of the invention -- 'to provide a method and system for sending money transfers such as cash between a sender and a remotely located recipient without a pre-established relationship, such as an account link, between the parties.'. . . [T]he claims differ in the types of hardware and the means used to transfer the funds. Importantly, however, the patents do not describe the type or configuration of the hardware as inventive. . . . The patents-in-suit describe a way in which funds can be simultaneously transferred between accounts without a pre-established link between those accounts. According to the patents, this is accomplished through an 'electronic escrow agent.' Whether the Court considers this concept 'fundamental' or not, it is impossible to distinguish it from other business methods found to be abstract."

Integrated Technological Systems, Inc. v. First Internet Bank of Indiana, 2-16-cv-00417 (TXED January 30, 2017, Order) (Payne, MJ)

Tuesday, January 31, 2017

Top Petitioners, Patentees, and Firms in the PTAB in 2016


For comparison, check out the 2015 numbers here.

Discovery Abuses Warrant Monetary Sanctions Against Defendant and Lead Counsel

Following settlement of the case, the court granted in part plaintiff's motion to find defendants in contempt for failing to comply with court's order compelling further document production and supplemental disclosures and imposed monetary sanctions, jointly and severally, against defendants and their lead counsel. "Whether the non-infringing alternatives information would have decidedly impacted Plaintiffs case is unimportant; the Court's concerns are Defendant's noncompliance and lack of transparency. . . . It is clear that Defendant failed to disclose crucial documents 'at the right time,' or indeed, at all, before the Court demanded an explanation for Defendant's actions. . . . Trial-related sanctions are inappropriate now. However, the Court finds that other sanctions are warranted 'to ensure the proper functioning of judicial process.'. . . It is impossible from the record to determine who among Defendant's employees and lead counsel were at fault for the discovery violations and to what degree. It is not the Court's duty to unravel the details and determine the actors' degrees of responsibility. What occurred is, at bottom, sanctionable conduct for which Defendant and its principal counsel are both responsible. . . . There was apparently a disconnect among Defendant's lead counsel: some counsel were more successful in locating documents than others, and there may have been disagreement regarding which documents were discoverable. There may well have been a similar disconnect between Defendant and its lead counsel. Significant discovery abuses resulted from these miscommunications. . . . The Court hereby imposes sanctions jointly and severally against Defendant . . . and its principal firm . . . in an amount approved by the Court."

Vir2us, Inc. v. Invincea, Inc. et al, 2-15-cv-00162 (VAED January 27, 2017, Order) (Morgan, SJ)

Monday, January 30, 2017

Counsel Not Liable for Attorney Fees Award Under 35 U.S.C. § 285​

Following summary judgment of noninfringement, the court granted defendant's motion for attorney fees under 35 U.S.C. § 285, but denied defendant's motion to hold plaintiffs' counsel jointly and severally liable for those fees. "[Defendant] seeks to hold Plaintiffs’ attorneys jointly and severally liable for attorneys’ fees under § 285; however, [defendant] cites no authority for its request, and both the text of the statute and applicable authority indicate the contrary. Furthermore, Plaintiffs’ attorneys brought this suit two years before the Supreme Court’s decision in [Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014)], which significantly altered the legal landscape concerning fee-shifting under § 285."

Technology Properties Limited, LLC v. Canon, Inc. et al, 4-14-cv-03640 (CAND January 26, 2017, Order) (Wilken, USDJ)

Friday, January 27, 2017

Non-Party Owner of Undercapitalized Plaintiff Held Personally Liable for 35 U.S.C. § 285​ Attorney Fees Award​

Following summary judgment of noninfringement and post-judgment discovery regarding plaintiff's real party in interest, the court granted defendant's motion for attorney fees under 35 U.S.C. § 285 and found that those fees could be imposed on non-parties. "[Plaintiff] is the first level of two shell corporations which were intended to shield the real actor . . . from personal liability. The Court is persuaded that [the sole shareholder of plaintiff's parent company] and those in active concert with him exploited the corporate form to operate largely in secret and to insulate the true party in interest from the risk associated with dubious infringement suits—that risk being fee shifting under Section 285. . . . [T]he Court concludes that the statutory text, current case law, and statutory purpose behind the Patent Act and Section 285 all support assessing direct Section 285 liability against non-parties, so long as (1) the actor is responsible for conduct that makes the case exceptional, (2) the actor is afforded due process, and (3) it is equitable to do so. . . . [I]f we assume that Section 285 permits recovery only against the originally named non-prevailing party, then the law has perversely incentivized third parties to act in ways that stand out from established litigation norms. This would foster the very type of litigation that the statute was meant to deter. . . . The lack of deterrence caused by empty shell plaintiffs negates the incentive to vigorously defend against meritless claims when there are no practical means by which to recover costs. . . . [T]he Court is persuaded that [this case] never would have been filed but for [the sole shareholder's] calculated assumption that he could insulate himself personally from the possible application of Section 285."

Iris Connex, LLC v. Dell Inc., 2-15-cv-01915 (TXED January 25, 2017, Order) (Gilstrap, USDJ)

Thursday, January 26, 2017

Plaintiff’s Use of Litigation as Fishing Expedition Justifies Attorney Fees Award Under 35 U.S.C. § 285​

The court granted defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions were baseless and the its litigation tactics were exceptional. "[T]here is substantial reason to believe that [plaintiff] initiated this litigation to embark on a fishing expedition into Defendants' operations and proprietary customer lists for the purpose of developing direct patent infringement claims against their customers. In other words, there is substantial reason to believe that [plaintiff] did not institute this litigation for a proper purpose, but rather as a means to obtain evidence of infringement against Defendants' customers it could not otherwise obtain because it did not have a good-faith belief that Defendants' customers were actually infringing the [patent-in-suit]. Indeed . . . [plaintiff] received repeated assurances from Defendants' customers that infringement of the patent was not occurring."

In Re: Bill of Lading Transmission and Processing System Patent Litigation, 1-09-md-02050 (OHSD January 24, 2017, Order) (Beckwith, USDJ)

Wednesday, January 25, 2017

File Access Patent Not Ineligible Under 35 U.S.C. § 101​

The court denied defendants' motion to dismiss on the ground that plaintiff’s computer file access patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "[T]he claimed invention is not merely an abstract idea, but rather the [patent] claims an improved method for accessing files in a data storage system of a computer system. . . . [T]he claimed invention is directed at solving a challenge unresolved by the prior art in which a search in a hierarchical directory structure did not guarantee a result. The claimed invention addressed that concern with the mechanism of allowing the user to search only those terms that are actually contained in the file description, thereby eliminating the possibility that the user may mistype or misspell a search term. . . . The description of the invention and the claims created a technological solution to the problems that had existed with conventional file access methods. Because the Court finds that the patent claims are directed to a specific improvement to computer functionality, the claims are not directed to an ineligible abstract idea."

Speed Track, Inc. v. Amazon.com, Inc. et al, 4-09-cv-04479 (CAND January 23, 2017, Order) (White, USDJ)