Network Gaming Patent Claims Not Invalid Under 35 U.S.C. § 101​

The court denied defendant's motion to dismiss on the ground that plaintiff’s network gaming patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "Prior communication techniques interconnected all participants using point-to-point connections, and thus, did not 'scale well' as the number of participants grew. The Broadcast Claims are directed to an innovative network structure for the distribution of data as the number of participants in a computer network is scaled. . . . A non-complete, m-regular network is a network where each node is connected to the same number of other nodes, or 'm' number of other nodes, and where each node is not connected to all other nodes. . . . Defendants argue that the Broadcast Claims are analogous to situations such as the schoolyard game of 'telephone'. . . . Defendants' analogies do not present the same communication scaling issues as those that arise in computer networks. Defendants gloss over the claim requirement of a non-complete, m-regular network that is implemented on an application level. The claims require a specific and apparently innovative structure of message-forwarding, which none of Defendants' analogies are known to employ."

Acceleration Bay LLC v. Activision Blizzard, Inc., 1-16-cv-00453 (DED August 29, 2017, Order) (Andrews, USDJ)

Predictive Analytics Patent Claims Invalid Under 35 U.S.C. § 101

​ The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s predictive analytics patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff's] claims are directed to a mental process and the abstract concept of using mathematical algorithms to perform predictive analytics. The method of the predictive analytics factory is directed towards collecting and analyzing information. The first step, generating learned functions or regressions from data -- the basic mathematical process of, for example, regression modeling, or running data through an algorithm -- is not a patentable concept. . . . While [plaintiff] claims that this shows it would be impossible for a human to perform such a task, just because a computer can make calculations more quickly than a human does not render a method patent eligible. . . . [Plaintiff] fails to identify any previously existing technology that its claims improve upon, or that its claims do more than carry out regression analysis and evaluation."

Purepredictive, Inc. v. H2O.AI, Inc., 3-17-cv-03049 (CAND August 29, 2017, Order) (Orrick, USDJ)

Employing Two Full-Time Direct Sales Representatives Creates Regular and Established Place of Business​

The court denied defendant's motion to dismiss or transfer plaintiff's patent infringement action for improper venue because defendant had a regular and established place of business in the forum through the work of its sales representatives. "[Defendant] employs at least two full-time direct sales representatives who are based in this District and who work exclusively for [defendant]. These two representatives work from their personal residences. . . . [Defendant's] direct sales representatives receive the infringing helmets in this District, keep samples in this District, and display and show these samples in this District. They also give sales presentations for [defendant] in this District and provide promotional materials about the infringing products. [Plaintiff] further alleges that [defendant] has sales showrooms in this District for the purpose of displaying samples of the infringing helmets. . . . [Defendant] views its local sales representatives as an intended point of interaction between the public and [defendant] in each region."

Kranos IP Corporation et al v. Riddell, Inc., 2-17-cv-00443 (TXED August 28, 2017, Order) (Gilstrap, USDJ)

Unnecessary Verdict of Zero Damages And Brief Deliberations Do Not Indicate Juror Bias​

Following a jury verdict of noninfringement and invalidity, the court denied plaintiffs' motion for a new trial on the ground that the verdict was arbitrary and anti-patent. "After a four-day trial, the jury deliberated for almost three and a half hours before reaching a unanimous verdict of non-infringement on fourteen claims and invalidity on nine claims from three of [plaintiffs'] patents and three of [defendant's] patents. Despite an instruction in the verdict form to answer the questions on damages for each patent 'only if [the jury] found at least one claim of a patent valid . . . and the same claim of that patent infringed,' the jury indicated 'zero' for all damages. . . . There is no 'minimum deliberation time' required before a jury may reach a verdict. . . . [U]nder [plaintiffs'] logic, any unanimous verdict of non-infringement and invalidity returned under four hours is 'a uniformly anti-patent verdict.'. . . Although the jury should not have answered the damages section of the verdict form, the jury’s finding of non-infringement is clear and disposes of the damages issues."

Metaswitch Networks Ltd. et al v. Genband US LLC et al, 2-14-cv-00744 (TXED August 28, 2017, Order) (Gilstrap, USDJ)

Defendant’s Stipulation to Infringement "Under the Present Claim Construction" Does Not Justify Change in Order of Proof at Trial​

The court denied defendants' motion to stipulate to infringement "under the present claim construction" and change the order of proof at trial to begin with defendants' invalidity claims. "[T]he Court anticipates that in light of the parties’ positions [at summary judgment], it will likely be necessary to construe the term 'acrylate/C10-30 alkyl acrylate cross-polymer' at trial, and that the Court expects the parties to provide additional evidence on that issue at trial. Because that issue bears on infringement as well as invalidity, the defendants’ stipulation to infringement under the 'the present claim construction' is no real stipulation at all. . . . [C]ourts have on occasion acquiesced in the request of the accused infringer to present its case first at trial. In several of those instances, however, the courts have allowed the patentee to present background information at the outset before the accused infringer begins its invalidity challenge. That sequence seems fair to the Court in this case, particularly in light of [plaintiff's] having organized the appearance of its background witnesses around the assumption that it would go first at trial."

Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al, 2-15-cv-01455 (TXED August 25, 2017, Order) (Bryson, CJ)

One Year Delay Seeking to Disqualify Counsel Waives Objection to Conflict​

The court denied plaintiff's motion to disqualify its former counsel as counsel for defendant because plaintiff waived its argument by delaying its motion for a year after it learned of the representation and the delay substantially prejudiced defendant. "[19 months ago], [plaintiff's former counsel] entered notices of appearance on the public docket as [defendant's] counsel. . . . [Plaintiff] had knowledge of both sides of the conflict coin: [counsel's] prior work for [plaintiff] and its current work for [defendant]. And although not necessary to show waiver, [counsel] also put forward evidence that [plaintiff's current counsel] was aware of [defense counsel's] prior relationship with [plaintiff]. . . . [T]he Court is convinced that [plaintiff] knew about the . . . conflict for a year before it decided to file this motion to disqualify. And one year qualifies as an extended delay. . . . In . . . the year during which [plaintiff] knew of the alleged conflict but took no action [its former counsel] billed over 3,400 hours to prepare this matter for trial. Although the Court has not yet set a trial date, this expenditure of time and resources weighs in favor of waiver."

Eolas Technologies Incorporated v. Amazon.com, Inc., 3-17-cv-03022 (CAND August 24, 2017, Order) (Tigar, USDJ)

Multimedia Messaging Patents Invalid Under 35 U.S.C. § 101​

The court granted defendants' motion to dismiss because the asserted claims of plaintiff’s multimedia messaging patents encompassed unpatentable subject matter and found that the asserted claims were directed toward an abstract idea. "Defendants argue that claim 17 covers an abstract idea because it addresses the problem of 'incompatability in communication.' In Defendants' view, such a problem 'has existed ever since human languages diverged' and claim [plaintiff's] solution 'is equally ancient' because it involves 'conversion to and from a common format.' The Court agrees. . . . [Plaintiff] counters that claim 17 is not directed to an abstract idea because it is 'limited to the transmission of multimedia messages in a multi-carrier environment.' But claims that 'limit [an] abstract idea to a particular environment' are 'no less abstract for the step 1 analysis.'"

Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al, 1-13-cv-01632 (DED August 23, 2017, Order) (Stark, USDJ)

Wireless Data Transmission Patents Not Invalid Under 35 U.S.C. § 101​

The court denied defendants' motion to dismiss because the asserted claims of plaintiff’s data transmission patent encompassed unpatentable subject matter and found that the asserted claims were not directed toward an abstract idea. "Broadly speaking, claim 1 is directed to the idea of improving data transmission over wireless networks. . . . The invention described by claim 1 is directed to improving the transmission of data in a wireless communication system, while avoiding transmission problems, such as fading. The specification of the [patent] confirms that this concept is the essence of the claimed invention. The Court further agrees with [plaintiff] that the claims are 'directed to an improvement of an existing technology.'. . . Instead of simply reciting a mathematical relationship, the [patent] employs that relationship to aid in the high-speed transmission of data without compromising bandwidth efficiency."

Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al, 1-13-cv-01632 (DED August 23, 2017, Order) (Stark, USDJ)

Success and Notoriety of Asserted Patents Does Not Show Defendant's Knowledge of Patents Sufficient to Plead Willfulness Claim​

The court granted defendant's motion to dismiss plaintiffs' willful infringement claims for failing to sufficiently allege knowledge. "Plaintiffs allege that Defendant must have known of Plaintiffs’ patents simply by virtue of operating a business in the same industry. The [operative complaint] states that [plaintiff] is 'among the most prominent innovative vaporizer companies in the United States and throughout the world[,]' and the 'inventions . . . in [plaintiff's] patents have been recognized by those in the industry as major milestones in the field.' Furthermore, Plaintiffs allege that Defendant 'is aware that [plaintiff] has established one of the most successful vaporizer companies in the world' and has 'sought to replicate [plaintiff's] success by infringing on [its] intellectual property.' Defendant asks the Court to make a logical leap. Simply because [a plaintiff] is successful and well-known in the industry and Defendant purchased Plaintiffs’ products for resale prior to the alleged infringement, does not mean that Defendant had knowledge of Plaintiffs’ patents, and it certainly does not necessarily follow that [defendant's] conduct is so egregious as to warrant increased damages."

Atmos Nation, LLC et al v. BnB Enterprise, LLC, 0-16-cv-62083 (FLSD August 21, 2017, Order) (Dimitrouleas, USDJ)

Employing Part-Time Field Technicians and Registering to Do Business Create Regular and Established Place of Business​

The court denied defendant's motion to transfer for improper venue because defendant had a regular and established business in the forum through its part-time field technicians who regularly provided service to purchasers of the accused product. "A fixed physical presence in a district is not dispositive, and the guiding question is whether the corporate defendant does it business through a permanent and continuous presence in the district. . . . [T]he defendant is registered to do business in the State of North Carolina . . . . Defendant claims that it has six part-time field technicians, who are paid hourly. According to defendant, these technicians do not solicit orders, enter into contracts, or make sales, but instead service existing accounts. . . . [T]he contacts in the instant case involve technicians who actively work on-site throughout the District. . . . [T]he court here finds that venue is appropriate in this district as defendant employs six field technicians who regularly service customers in this district who have purchased defendant’s allegedly infringing product."

InVue Security Products Inc. v. Mobile Tech, Inc. d/b/a Mobile Technologies Inc. and MTI, 3-15-cv-00610 (NCWD August 21, 2017, Order) (Cogburn, Jr., USDJ)

Biometric Identification Patent Invalid Under 35 U.S.C. § 101

​ The court granted defendants' motion to dismiss because the asserted claims of plaintiffs’ biometric identification patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[H]umans have long compared images of faces they have seen previously (an old-fashioned registration template) to faces they encounter in the world to determine or confirm an individual’s identity. . . . Plaintiffs argue that the [patent] 'focus[es] on a specific means or method that improves the relevant technology of a global biometric authentication system.' But neither the template receiver nor the verifier has any relation to the creation of a template; the plain language of claim 1 states that the system components only receive and compare the templates. . . . Nor does the patent discuss how the templates are compared. And even though part of the system operates remotely, that does not evidence a nonabstract concept."

IQS US Inc. et al v. Calsoft Labs Incorporated et al, 1-16-cv-07774 (ILND August 18, 2017, Order) (Lefkow, USDJ)

Waiver of Objection to Personal Jurisdiction Does Not Establish Residency for Purposes of Venue​

The court granted defendant's motion to dismiss plaintiff's patent infringement action for improper venue and rejected the argument that defendant's failure to object to personal jurisdiction established residency for purposes of venue. "[Plaintiff] agues [defendant] failed to object to personal jurisdiction and accordingly is deemed to 'reside' here for purposes of venue. In support of this argument, [plaintiff] cites several cases in which courts have denied a motion to dismiss for improper venue when the defendant waived its objection to personal jurisdiction. The reasoning in these cases is that 'not challenging personal jurisdiction in a motion to dismiss challenging venue concedes personal jurisdiction, which in turn establishes venue.' This argument fails. A defendant’s waiver of personal jurisdiction can only 'establish' venue if venue is proper everywhere the defendant is subject to personal jurisdiction."

The Procter & Gamble Company v. Ranir, LLC, 1-17-cv-00185 (OHSD August 17, 2017, Order) (Black, USDJ)

Objection to Venue Under § 1391(c) Does Not Preserve Objection to Venue Under § 1400(b)​

The magistrate judge recommended denying defendant's motion to dismiss or transfer for improper venue because defendant waived that defense by limiting its venue challenge in its answer to its personal jurisdiction challenge. "[Defendant] did not generally deny that venue is proper. Instead, [Defendant] specifically denied venue is proper 'for the reasons set forth in the Complaint' -- namely, that [its] acts of infringement subject it to personal jurisdiction in this District. In other words, [defendant's] objection was based solely on the argument this District does not have personal jurisdiction over [defendant] because it does not infringe, and [defendant] admits as much. This Court has already concluded a defendant’s acknowledgement of the applicability of [28 U.S.C. § 1391(c)], without more, results in waiver. . . . [Defendant] conceded the applicability of § 1391(c) while omitting from its Answer an objection to venue because it had no 'regular and established place of business' in this District. That waives any such objection."

MyMail, Ltd. v. Yahoo!, Inc., 2-16-cv-01000 (TXED August 17, 2017, Order) (Payne, MJ)

Wireless Messaging Patent Not Invalid Under 35 U.S.C. § 101​

Following a jury trial, the court denied defendant's renewed motion for judgment as a matter of law on the ground that plaintiff’s messaging patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The Court concludes that the asserted claims in the [patent] are not directed to an abstract idea, but that they instead implement a specific improvement in cellular networking. . . . [At trial, plaintiff's expert] testified that [the manual process of call switching] formerly performed by the switchboard operator 'is now being done by computers.'. . . [The expert's] testimony at trial was merely an analogy to assist the jury in understanding a complex process. It does not disturb the Court’s previous conclusion that the [patent] 'can only be performed on a computer.'. . . [T]he claims of the [patent] 'set out a method for achieving a specific goal -- obtaining information about a wireless terminal with a dynamic network address -- by applying the abstract idea of matching identifiers to retrieve information in the cellular network.' [Recent Federal Circuit decisions] do not affect that ruling."

Comcast Cable Communications, LLC et al. v. Sprint Communications Company LP et al, 2-12-cv-00859 (PAED August 16, 2017, Order) (Dubois, SJ)

Failure to Provide Examiner With Copy of PTAB Decision Does Not Establish Inequitable Conduct​

The magistrate judge recommended granting plaintiffs' motion for summary judgment that their patents were not unenforceable for inequitable conduct or unclean hands because the failure to submit a copy of a disclosed PGR institution decision was not material. "Defendants’ position practically assumes there is some requirement to submit relevant PTAB decisions to the Examiner during prosecution. But Defendants do not cite any authority for this kind of requirement. Regardless, knowing that the Examiner was indeed aware of the decision, Defendants’ position assumes that Examiner is somehow incapable of finding the PTAB’s PGR Institution Decision on his own (otherwise the patentee’s duty of candor would have been discharged by informing the Examiner). . . . It would be difficult to understand how the USPTO could not obtain the necessary publicly available documents from its own administrative agency when needed."

Tinnus Enterprises, LLC et al v. Telebrands Corporation, 6-16-cv-00033 (TXED August 15, 2017, Order) (Love, MJ)

TC Heartland Applies to Unincorporated Associations, Such as LLCs​

The court transferred plaintiff's patent infringement action for improper venue and rejected plaintiff's argument that TC Heartland did not apply to limited liability companies like defendant. "The Supreme Court explicitly limited its analysis in [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017)]: 'we confine our analysis to the proper venue for corporations' and reserved the applicability of its holding to unincorporated entities. . . . Unincorporated associations, such as limited liability companies, are generally treated like corporations for purposes of venue, whereby the 'residence' is the association’s principle place of business. Now that the Supreme Court has reinforced that 'residence' for corporate defendants in a patent infringement case is limited to the state of incorporation, [plaintiff] is hard-pressed to present a reason why unincorporated associations should be treated differently."

Maxchief Investments Limited v. Plastic Development Group, LLC (TWP2), 3-16-cv-00063 (TNED August 14, 2017, Order) (Phillips, USDJ)

Court-Appointed Expert Required to Determine Scope of IPR Estoppel​

The court ordered the parties to choose an expert to help determine whether defendant reasonably could have raised certain prior art in its petition for inter partes review. "In its [prior] opinion, the Court did not resolve whether [defendant] reasonably could have raised three prior art references in its IPR petition. The Court orders the parties to confer and choose an agreed, independent, court-appointed expert to offer an opinion on whether a skilled searcher conducting a diligent search reasonably would have discovered these references. The parties will split the cost of the expert evenly."

Oil-Dri Corporation of America v. Nestle Purina Petcare Company, 1-15-cv-01067 (ILND August 14, 2017, Order) (St. Eve, USDJ)

Offering Products for Sale Online Does Not Create a Regular and Established Place of Business​

The court granted defendants' motion to dismiss plaintiff's patent infringement action for improper venue because defendants did not have a regular and established place of business in the forum. "At the time of this action's filing, [one defendant] was a sole proprietorship operated by [another defendant], a Texas resident, and the three individual Defendants are each residents of Texas. There is no evidence that any of the Defendants reside in Virginia. Additionally, the fact that [the sole proprietorship defendant] has made its product available online through [an online marketplace] is not sufficient to create a regular and established place of business for the purposes of the patent venue statute."

Glasser v. Barboza et al, 1-17-cv-00322 (VAED August 11, 2017, Order) (Hilton, SJ)

Single Retail Store Sufficient to Create Regular and Established Place of Business​

The court denied defendant's motion to dismiss plaintiff's patent infringement action for improper venue because defendant failed to establish that it did not have a regular and established place of business in the forum. "[Defendant] does not dispute [plaintiff's] allegation it has a retail store in Delaware, it argues one retail store is not enough to establish a 'permanent and continuous presence.' We disagree; [defendant's] retail store is a permanent and continuous presence where it sells the alleged infringing technology to consumers on a daily basis. [Defendant] does not meet its burden of showing it does not have 'a regular and established place of business' in this District."

Prowire LLC v. Apple Inc., 1-17-cv-00223 (DED August 9, 2017, Order) (Kearney, USDJ)

Attendance at CES​ and Single Product Sale Do Not Create Regular and Established Place of Business in Nevada​

The court granted defendant's alternative motion to transfer plaintiff's patent infringement action to the District of Delaware because defendant did not have a regular and established place of business in the District of Nevada. "Plaintiff argues that based on Defendant’s attendances at the CES conferences, as well as one alleged infringing product sale to a Nevada resident, the Court has specific personal jurisdiction over [defendant], and therefore venue is proper in the District of Nevada. The Court disagrees that, under the patent venue statute, the alleged conduct is sufficient to make venue in Nevada appropriate. Additionally, [defendant] does not have a 'regular and established place of business' in Nevada. [Defendant's] only offices in the U.S. are in California. [Defendant] does not have any offices, employees, or land in Nevada."

Percept Technologies, Inc. v. Fove, Inc., 2-15-cv-02387 (NVD August 8, 2017, Order) (Boulware, II, USDJ)

$30 Million Judgment Set Aside Due to Federal Circuit's Invalidation of Patent Under 35 U.S.C. § 101 in Separate Case​

The court granted defendant's motion for relief from a $30 million judgment because the Federal Circuit invalidated the patent in another case under 35 U.S.C. § 101. "The patent claims at issue in the [other] case which were invalidated by the Federal Circuit were and are the same claims at issue here. . . . Given that the Federal Circuit has conclusively adjudged the patent claims, which provide the very basis for [plaintiff's] $30 million judgment, to be invalid; the Court finds no just reason why such a judgment ought to stand when the claims 'are predicated on a nullity' and unenforceable to the rest of the world."

Prism Technologies, LLC v. Sprint Spectrum, LP, 8-12-cv-00123 (NED August 8, 2017, Order) (Strom, USDJ)

Personal Residence of CEO Does Not Establish Corporate Defendant’s Regular and Established Place of Business

​ The court granted defendant's motion to dismiss plaintiff's patent infringement action for improper venue because a CEO's residence was insufficient to establish defendant had a regular and established place of business in the forum. "[Defendant] asserts that it does not engage in business operations, own or lease office space, or maintain a public presence in this State, much less this District. . . . The gravamen of [plaintiff's] venue-based arguments appears to be that the mere presence of a high-level employee of a corporate defendant within a particular judicial district is sufficient to satisfy the rigors of Section 1400(b). Case law and common sense dictates that it is not, and [plaintiff] cites to no authority, either binding or persuasive, suggesting otherwise."

Prolacta Bioscience, Inc. v. Ni-Q, LLC et al, 2-17-cv-04071 (CACD August 7, 2017, Order) (Otero, USDJ)

Patents for Diagnosing Cardiovascular Disease Invalid Under 35 U.S.C. § 101

After the Federal Circuit found the parent patent to the patents-in-suit invalid, the court granted defendant's motion to dismiss because the asserted claims of plaintiffs’ cardiovascular disease diagnosis patent encompassed unpatentable subject matter and found that the claims were directed toward a law of nature. "According to plaintiffs . . . because the [patents] merely claim a laboratory method of 'detecting' [myeloperoxidase] activity, as opposed to a diagnostic method, they are not directed to patent ineligible subject matter. Plaintiffs' argument is overly superficial. . . . It is not a general laboratory technique for detecting MPO levels. Because the method is directed at detecting the correlation that is the natural law, rather than MPO levels generally, it is clear that the method is directed to the natural law. Accepting plaintiffs' argument to the contrary would permit artful drafters to recast any diagnostic patent as a laboratory method patent, frustrating the purpose of the natural law exception."

The Cleveland Clinic Foundation et al v. True Health Diagnostics LLC, 1-17-cv-00198 (VAED August 4, 2017, Order) (Brinkema, USDJ)

Patent for Diagnosing Neurotransmission Disorder Invalid Under 35 U.S.C. § 101

The court granted defendant's renewed motion to dismiss because the asserted claims of plaintiffs' neurotransmission disorder diagnosis patent encompassed unpatentable subject matter and found that the claims were directed toward a law of nature. "Contrary to Plaintiffs' argument, the [patent] is not a composition patent directed at the creation of the [laboratory-created molecule]. Rather, the patent is directed at a method for the diagnosis of a disease. Although the patented method uses man-made [laboratory-created molecules], the use of a man-made complex does not transform the subject matter of the patent. The focus of the claims of the invention is the interaction of the [laboratory-created molecule] and the bodily fluid, an interaction which is naturally occurring. . . . Counter to Plaintiffs' argument, because the patent focuses on this natural occurrence, it is directed to a patent-ineligible concept."

Athena Diagnostics, Inc. v. Mayo Collaborative Services d/b/a Mayo Medical Laboratories et al, 1-15-cv-40075 (MAD August 4, 2017, Order) (Talwani, USDJ)

Failure to Challenge Venue in First-Filed Motion to Dismiss Does Not Waive Venue If Defendant Supplements the Motion Prior to Decision​

Following the Supreme Court decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017), the court denied defendant's motion to dismiss plaintiff's patent infringement action for improper venue but rejected plaintiff's argument regarding waiver because defendant's motion to dismiss under Rule 12(b)(6) remained pending. "There is authority supporting both sides of the waiver issue. But the Court need not choose a side, because [defendant's] original motion to dismiss is still pending. . . . [A] party that files a Rule 12(b) motion and fails to raise the issue of improper venue can avoid waiving that issue if the party supplements its motion 'before the . . . court [takes] up the matter.' To the extent that 'prompt' amendment is a requirement to avoid waiver, the Court finds that [defendant's] filing of a motion raising improper venue within a month of the Supreme Court’s decision in TC Heartland is sufficiently prompt as this case has not progressed past the pleading stage."

Lit v. Zazzle, Inc., 1-16-cv-07054 (ILND August 3, 2017, Order) (Durkin, USDJ)

PTAB Dicta Does Not Trigger IPR Estoppel​

The court denied plaintiff's motion to exclude invalidity contentions on the ground that inter partes review estoppel precluded defendant from asserting two individual references after the PTAB instituted review on the combination of those references. "[T]he PTAB explicitly considered in its final written decision whether a subset of the instituted grounds was properly before it, and determined that it was not. . . . Though the PTAB then noted in dicta that '[e]ven if we were to consider [one reference] alone, we find that [reference] does not render the challenged claims obvious,' it is clear the PTAB did not believe any subset of the instituted grounds were properly before it. Given the PTAB’s explicit statements of what was 'properly part of [the IPR]' and what was not, the Court concludes that . . . only the instituted ground (obviousness based on the combination of [the two references]) gives rise to estoppel . . . ."

Oil-Dri Corporation of America v. Nestle Purina Petcare Company, 1-15-cv-01067 (ILND August 2, 2017, Order) (St. Eve, USDJ)

Seattle's Collective Bargaining Ordinance Immune from Sherman § 1 Challenge by Uber, Lyft, et al

The court granted defendant City of Seattle's motion to dismiss plaintiffs' Sherman § 1 claims because Seattle was protected by state action immunity. The court first found that Seattle's ordinance was clearly articulated as a state policy. "The statute [from which the ordinance derives its authority] specifically states that 'it is the intent of the legislature to permit political subdivisions of the state to regulate for hire transportation services without liability under federal antitrust laws.' . . . The Ordinance, by its terms, is an attempt to exercise the authority granted by [this and similar] state statutes to ensure safe and reliable for-hire and taxicab transportation services within the City of Seattle. . . . The statutes on which the City relies clearly delegate authority for regulating the for-hire transportation industry to local government units and authorize them to use anticompetitive means in furtherance of the goals of safety, reliability, and stability. The state 'affirmatively contemplated' that municipalities would displace competition in the for-hire transportation market, a situation which satisfies the 'clearly articulated and affirmatively expressed' requirement for state immunity."

Chamber of Commerce of the United States of America v. City of Seattle et al, 2-17-cv-00370 (WAWD 2017-08-01, Order) (Robert S. Lasnik)

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Lack of Physical Presence Alone Does Not Establish Lack of Regular and Established Place of Business​

Following the Supreme Court's decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514 (2017), the magistrate judge recommended denying defendant's motion to dismiss plaintiff's patent infringement action for improper venue because defendant did not establish that it did not have a regular and established place of business in the forum. "[Defendant's] underlying affidavit to support this assertion simply states, '[Defendant] does not directly or indirectly own business, sales, or distribution locations or other physical facilities in the Eastern District of Texas.' But lack of physical presence in the District is insufficient to establish improper venue. . . . By solely making statements regarding physical facilities in the District, [defendant] fails to set forth sufficient facts to support its argument that it lacks a regular and established place of business in the District."

Realtime Data LLC d/b/a IXO v. Exinda Inc., 6-17-cv-00124 (TXED August 1, 2017, Order) (Love, MJ)

Significant Disparity in Valuation of Complex Case Justifies "Bellwether" Trial on Subset of Asserted Patent Claims​

The court scheduled a "bellwether" trial on ten claims from three of defendant's patents due to the complexity of the case and the discrepancy in the parties' valuation of suit. "More than a dozen patents are asserted in this highly complex, highly contentious litigation. . . . [Defendant] contends that it is entitled to approximately $10 billion in reasonable royalties, while [plaintiff] counters that (assuming it is found to infringe valid patents, which it denies) it is liable only for around $10 million, a disparity of about 1000 times. . . . A three-patent liability and damages trial will have the virtue of giving the parties a near-term opportunity to obtain certainty -- in this Court, and then on appeal -- as to the value of a substantial subset of their disputes. . . . Whether this case will ever be amenable to settlement is an open question, but the Court believes that obtaining clarity on the value of one-third (even a non-representative one-third, if that is what it is) of the case is at least as likely to promote settlement as would an advisory damages verdict on the entirety of the case."

Intel Corporation v. Future Link Systems LLC, 1-14-cv-00377 (DED July 31, 2017, Order) (Stark, USDJ)

Failure to Challenge Venue Before TC Heartland Does Not Waive Venue Objection​

Following the Supreme Court decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017), the court granted defendants' motions to transfer for improper venue and rejected plaintiffs' arguments that defendants waived their defense. "Federal Circuit precedent clearly foreclosed the venue defense. It would be inequitable to expect Movants to have objected to venue, especially where the Supreme Court had already denied certiorari on the exact question in [VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990)] itself. . . . Both reconsideration of certiorari and reconsideration of merits rulings are, strictly speaking, possibilities, so arguments directed to those results are, strictly speaking, available. But in fairness, neither possibility is great enough upon which to base a finding of waiver where circuit precedent forecloses an argument, particularly in cases such as this one where the relevant circuit is the only one with jurisdiction over the issue, such that even the possibility of a future circuit split does not exist."

CG Technology Development, LLC et al v. FanDuel, Inc., 2-16-cv-00801 (NVD July 27, 2017, Order) (Jones, USDJ)