Thursday, November 30, 2017

In re Cray Does Not Address Whether Place of Affiliate, Alter Ego, or Agent May be Attributed to Defendant in Determining Venue

The court granted in part plaintiff's motion for additional venue discovery. "In my view, [In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017)] does not address whether a physical place of a corporate affiliate or subsidiary or alter ego or agent can, for venue purposes, be attributed to the named defendant in a case. . . . [Defendant] seems to acknowledge that at least an alter ego or a sham entity . . . would allow the place of business of . . . that sham entity to be attributed to the named defendant for purposes of assessing regular and established place of business for purposes of determining proper venue. . . . [Defendant] emphasizes repeatedly that the record in [its] view already establishes that there is no relationship between any of the other related entities and the ANDA at issue in this case. I have not yet been pointed to where Cray or any other case at least from the Court of Appeals tells me that such a relationship is required in order for venue to be appropriate."

Bristol-Myers Squibb Company et al v. Aurobindo Pharma, USA Inc., 1-17-cv-00374 (DED November 28, 2017, Order) (Stark, USDJ)

Wednesday, November 29, 2017

Check Processing Patent Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion for summary judgment of invalidity on the ground that plaintiff’s check processing patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "⁠[Defendant's] characterization [of the claims] omits the physical processing of checks from the point of sale to a different location, and in a particular sequence. In so doing, [defendant] improperly construes Claim 1 to 'a high level of abstraction.' The character of Claim 1 . . . is directed to a physical process for processing paper checks in which data captured from a paper check at the merchant’s point of purchase is used to credit a merchant’s account, while the same paper check is scanned at a later time and in a different location to create an image of that check. . . . [T]he [patent] purportedly improves upon the prior art through the processing of paper checks, via two-paths, at different times and locations, and the physical movement of paper checks. This claimed advance is not directed to an abstract idea. Additional language found in the [patent] emphasizes that the claimed invention is rooted in an enhanced processing method and a palpable application of that process, in a different time and place."

Solutran, Inc. v. US Bancorp et al, 0-13-cv-02637 (MND November 27, 2017, Order) (Nelson, USDJ)

Tuesday, November 28, 2017

In re Micron Notwithstanding, Substantial Engagement in Litigation Waives Venue Objection

The court denied defendants' motion to dismiss plaintiff's patent infringement action for improper venue and found that defendants waived their venue defense through litigation conduct. "⁠[I]t was not until a few days after their IPR petitions were denied and more than two months after [TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017)] was decided that Defendants finally sought to dismiss this case for improper venue. [In re Micron Tech., Inc., No. 2017-138 (Fed. Cir. Nov. 15, 2017)] does not invite defendants who have substantially engaged in a case to reassert an abandoned defense once it becomes convenient or advantageous for them. . . . Moreover, before TC Heartland was decided . . . Defendants sought to transfer this case to the Western District of Tennessee under § 1404 rather than § 1406. This is particularly significant because a motion under § 1404 is premised on venue being proper in the transferor court whereas a motion under § 1406 reflects an objection to the current venue as being improper."

Intellectual Ventures II LLC v. FedEx Corporation et al, 2-16-cv-00980 (TXED November 22, 2017, Order) (Gilstrap, USDJ)

Monday, November 27, 2017

Pre-Suit Delay Seeking Preliminary Injunction Negates Claim of Irreparable Harm

The court denied plaintiff's motion for a preliminary injunction because plaintiff's delay of at least a year and a half negated plaintiff's claim of irreparable harm. "Defendant contends that Plaintiff delayed more than four years after the initial patent issued to bring suit. Plaintiff, however, points out that the last patent did not issue until June 28, 2016 and contends that [defendant] did not launch [the accused service] until February 2016. Furthermore, Plaintiff explains that, in 2016, it was preoccupied with other litigation and therefore waited to file the instant suit until late July of 2017. Even assuming Plaintiff’s version of the facts as true, the Court concludes that Plaintiff’s delay, at a minimum, of at least one and a half years, to seek preliminary injunctive relief militates against a finding of irreparable harm. . . . It is the delay from the time the movant becomes aware of the alleged injury to the time injunctive relief is sought that is controlling, not the time between initiating litigation and seeking injunctive relief in the ongoing litigation. . . . Plaintiff’s argument that it was busy with other litigation and therefore could not timely address the alleged infringement is not compelling."

CustomPlay, LLC v., Inc., 9-17-cv-80884 (FLSD November 21, 2017, Order) (Marra, USDJ)

Wednesday, November 22, 2017

In re Micron Forecloses Waiver and Forfeiture of Venue Challenge Arguments

The magistrate judge recommended granting defendant's motion to transfer for improper venue and rejected plaintiff's argument that defendant waived its venue defense. "The Federal Circuit's decision in [In re Micron Technology, Inc., (Fed. Cir. Nov. 15, 2017)] establishes that [defendant] did not waive its venue defense under Rule 12(h)(l) and Rule 12(g)(2) because the Supreme Court's decision in [TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017)] represents an intervening change in the law. . . . Application of the forfeiture test set forth in In re Micron pursuant to Rule 1 and the Supreme Court's decision in [Dietz v. Bouldin, Inc., 136 S. Ct. 1885, 1891 (2016)] does not alter this conclusion. The present record reflects that trial is not scheduled to take place [for 20 months], and the court does not find that [defendant] failed to seasonably assert its venue defense, having previously contested venue in its [prior] motion to transfer under § 1404(a), and having filed the present motion promptly after the Supreme Court's issuance of its decision in TC Heartland. Given the circumstances of the present case schedule and the Federal Circuit's caution that 'the lee-way to find such forfeiture' is not broad, the court concludes that [defendant's] motion cannot properly be denied on grounds relating to its timeliness."

Treehouse Avatar LLC v. Valve Corporation, 1-15-cv-00427 (DED November 20, 2017, Order) (Fallon, MJ)

Tuesday, November 21, 2017

Patents for Generating Screen Displays for Interactive Applications Not Invalid Under 35 U.S.C. § 101

The court denied defendant's renewed motion for judgment on the pleadings on the ground that plaintiff’s patents for generating screen displays for interactive applications encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The claims of the [patents] are directed to a specific computer functionality improvement -- improving the capabilities of networks hosts and computer networks -- and are patent-eligible under step 1. . . . This method allows the computer to function more quickly by speeding the data storage process and reducing memory requirements, allowing the computer to serve more users. . . . [T]he claims of the [patents] are not directed to local data storage generally, but recite specific features for improving computer functionality by generating screen displays and partitions by breaking the data content of applications or advertisements into objects, storing them locally, and selectively retrieving them when needed. This method reduces the processing demand on the host system, allowing the host to function more efficiently."

International Business Machines Corporation v. Groupon, Inc., 1-16-cv-00122 (DED November 17, 2017, Order) (Stark, USDJ)

Monday, November 20, 2017

Counsel's Ethical Wall Does Not Establish Intent to Deceive For Inequitable Conduct Defense

The court denied plaintiff's motion for summary judgment that defendant's patent was unenforceable due to inequitable conduct because plaintiff failed to establish an intent to deceive through prosecution counsel's use of an ethical wall. "⁠[Plaintiff] cites to numerous pieces of evidence to support its arguments, including the ethical wall put in place at [defendant's prosecution counsel]. [Plaintiff] implies that ethical wall 'demonstrates an intent to deceive the PTO and supports a finding of inequitable conduct rendering the [patent-in-suit] unenforceable.' However, [defendant] offers an equally plausible inference from the ethical wall, which is that [counsel] was simply trying 'to preclude exchange of information between attorneys representing [a third party represented by defense counsel] and [defendant][.]⁠' Much of the other evidence [plaintiff] relies on is likewise susceptible to more than one reasonable inference, which precludes summary judgment in [plaintiff's] favor."

Ameranth, Inc. v. Pizza Hut, Inc., et. al., 3-11-cv-01810 (CASD November 16, 2017, Order) (Sabraw, USDJ)

Friday, November 17, 2017

Omission of Venue Challenge From First Rule 12(b) Motion Precludes Defendant From Invoking Intervening Change of Law to Excuse Waiver

The court denied defendant's motion to dismiss or transfer plaintiff's consolidated patent infringement actions for improper venue because defendant waived its venue defense. "It is well settled that an improper venue defense is waived if it is not included in 'a responsive pleading or in an amendment allowed by Rule 15(a)(1) as a matter of course.' [Defendant's] Motion to Dismiss the Complaint in [the first action] did not raise a defense of improper venue. The defense was therefore waived. . . . Even if the TC Heartland decision was an intervening change in law, the 'omission of improper venue from [a party]⁠'s first 12(b) motion constitutes a "procedural misstep,"' which precludes a party from '"invok[ing] intervening Supreme Court case law" in order to "correct" it.'. . . As to [defendant's] venue challenge in [the second action], [defendant] has already admitted that venue is proper. It may not now 'take back' this admission or otherwise seek to avoid its effects."

Nichia Corporation v. VIZIO, Inc., 2-16-cv-01453 (TXED November 15, 2017, Order) (Gilstrap, USDJ)

Thursday, November 16, 2017

In re Cray is Intervening Change of Law Excusing Waiver of Venue Challenge Through Participation in Litigation

The court granted defendant's motion to transfer for improper venue and rejected plaintiff's argument that defendant waived its venue defense. "⁠[P]laintiff argues alternatively that defendant waived its venue objection through participation in this case, which both implicitly and explicitly amounted to consent to venue. Normally, plaintiff would have a good argument. However, [In re Cray, Inc., 871 F.3d 1355 (Fed. Cir. 2017)] constitutes an intervening change of law, such that defendant could not have waived its objection to venue. Because In re Cray changed the standard for 'regular and established place of business,' and [defendant] acted promptly in filing the present motion, it was not unreasonable for defendant to object when it did."

Rotex Global, LLC v. Gerard Daniel Worldwide, Inc., 3-16-cv-00523 (WIWD November 14, 2017, Order) (Conley, USDJ)

Wednesday, November 15, 2017

Following the PTAB's Invalidation of Asserted Patent Claims, Oil States Does Not Justify Stay of Litigation

Following the PTAB's invalidation of all asserted claims during inter partes review, the court denied plaintiff's motion to stay pending the Supreme Court decision regarding the constitutionality of IPR proceedings in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, cert. granted in part, 137 S. Ct. 2239 (2017). "The PTAB ultimately invalidated all asserted claims in this case. Plaintiffs have exhausted appeals related to the PTAB's decision. Accordingly, this case is moot. Continuing the stay will only serve to prejudice Defendant by delaying final resolution of this case. . . . Even if the Supreme Court holds that IPRs are unconstitutional, it may choose not to apply the new rule retroactively. Even if the Supreme Court applies the new rule retroactively, it would seemingly only apply to cases still pending on direct review of the PTAB decision."

Leak Surveys, Inc. v. FLIR Systems, Inc., 3-13-cv-02897 (TXND November 13, 2017, Order) (Lynn, USDJ)

Tuesday, November 14, 2017

Written Description Requirement Applies Only to Literal Scope of Claims, Not Equivalents

The court granted plaintiffs' motion for summary judgment that their broadband patents were not invalid for lack of written description and rejected defendant's attempts to reargue the issue after plaintiffs amended their infringement theory. "Despite [defendant's] repeated attempts to broaden the court's claim construction, the court declines to re-cast its earlier constructions to encompass broad limitations to ATM technology to 'the invention' or 'the patents' or to add additional limitations, such as 'connection-oriented,' to the claims. . . . [Defendant] has not identified any case law that supports its contention that, after the written description requirement has been incorporated into the court's claim construction to narrow limitations of asserted claims, those same arguments and the written description requirement extend further to infringement under the doctrine of equivalents. 'This proposition not only has no authoritative support, but also runs counter to what the Supreme Court has said about the doctrine of equivalents.'"

Cox Communications Inc. et al v. Sprint Communications Company LP et al, 1-12-cv-00487 (DED November 9, 2017, Order) (Bataillon, USDJ)

Monday, November 13, 2017

Statement that Patents Are “Potentially Essential to a Standard” Does Not Create Substantial Controversy

The court granted defendant's motion to dismiss nine patents-in-suit added in plaintiff's first amended complaint for lack of subject matter jurisdiction. "[Defendant] has never accused [plaintiff] of infringing the Additional Patents-in-Suit. [Defendant] asserts that the 1,975 page list provided to [plaintiff] . . . is simply an identification of the universe of patents previously declared as potentially essential to a standard. [Defendant] has not stated that the Additional Patents-in-Suit are 'actually essential' to a standard practiced by [plaintiff]. . . . [Plaintiff] has not sufficiently pled that the nine Additional Patents-in-Suit were part of the 'hundreds' of claim charts prepared by [defendant] in the licensing negotiations. . . . [Defendant] may have participated in a similar 'palpable bravura' in suggesting to [plaintiff] to review its entire portfolio. Nonetheless . . . [defendant] has not made specific allegations of infringement as to the Additional Patents-in-Suit, nor has [it] presented claim charts relating to these patents."

Apple Inc. v. Qualcomm Incorporated, 3-17-cv-00108 (CASD November 8, 2017, Order) (Curiel, USDJ)

Thursday, November 9, 2017

Predictive Keyboard Patent Not Invalid Under 35 U.S.C. § 101 at Pleading Stage

The court denied defendant's motion to dismiss on the ground that plaintiff’s predictive keyboard application patent encompassed unpatentable subject matter because defendant failed to establish that the asserted claim was directed toward an abstract idea. "[Defendant] argues that claim 19 is directed to the abstract idea of listing word completion candidates based on partial information, analogizing the claim to the games Hangman and Wheel of Fortune. . . . [C]laim 19 does not automate a mental process previously practiced by humans. The court sees no reasonable scenario in which a mobile device user would type the first letter of a word she wishes to enter, then consult a list of possible completion candidates, then return to entering the text, for she would already know what her intended text was. . . . If less time is required to enter text, then less time is required to operate the device. Plaintiffs argue, therefore, that claim 19 improves the operation of the device. [Defendant] offers no compelling rebuttal. Accordingly, at this early stage of the proceedings, [defendant] has not met its burden to show that claim 19 is directed to an abstract idea."

WordLogic Corporation et al v. Fleksy, Inc., 1-16-cv-11714 (ILND November 7, 2017, Order) (Lefkow, USDJ)

Wednesday, November 8, 2017

Five Work-at-Home Employees Do Not Create Regular and Established Place of Business for Venue

The court granted defendant's motion to dismiss plaintiff's patent infringement action for improper venue because defendant did not have a regular and established place of business in the forum based on its five work-at-home employees in the district. "While these employees' homes are certainly physical places in this District and are in some sense connected to Defendant's business, none of them are a place 'of the defendant.'. . . Defendant does not own or lease these five employees' homes or contribute to their rent or mortgage payments. Nor does it require them to reside at particular locations or even to reside in this District. Defendant also does not publicly advertise or list the employees' homes as a place where it conducts business. . . . Listing an employee's home address on a workers' compensation policy does not show 'possession or control' by the employer over the employee's home, nor does it hold out the employee's home to the public as the employer's place of business."

BillingNetwork Patent, Inc. v. Modernizing Medicine, Inc., 1-17-cv-05636 (ILND November 6, 2017, Order) (Castillo, USDJ)

Tuesday, November 7, 2017

Patent for Controlling Application's Access to Mobile Device Native Software and Hardware Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion for summary judgment on the ground that plaintiff's patent for controlling a mobile device application’s access to native software and hardware encompassed unpatentable subject matter because the asserted claims did not lack an inventive concept. "[T]he [patent-in-suit] describes a system for controlling an application's access to native software and hardware on a mobile device. . . . [T]he claims recite a technological improvement to a problem arising in mobile platform technology, namely the problem of limited memory and resources on mobile phones. The invention is a particularized solution to that problem. . . . The fact that the PTAB concluded that [defendant] failed to establish that a person of ordinary skill in the art would be motivated to combine computer-based security software with the relevant mobile platform technology -- because of the limited memory and resources of a mobile phone -- suggests that the systems claimed by the [patent] are not merely conventional applications of computer technology."

Ericsson Inc. et al v. TCL Communication Technology Holdings Limited et al, 2-15-cv-00011 (TXED November 4, 2017, Order) (Payne, MJ)

Monday, November 6, 2017

In Expanding Market, Long-Term and Second-Order Effects of Lost Sales Create Irreparable Harm Justifying Preliminary Injunction

The court granted plaintiff's motion for a preliminary injunction to prohibit defendant from selling the accused removable wafer carrier products and found that plaintiff established irreparable harm. "Although [plaintiff] may be able to prove with requisite certainty its losses due to lost sales, lost customers, or price erosion in the past or near-term future, the long-term and second-order effects . . . are not likely to be quantifiable with a requisite degree of certainty. . . . [Plaintiff's] loss of customer feedback will hamper its ability to continue innovating its MOCVD designs to remain competitive in the MOCVD market . . . . [Plaintiff's] loss of revenue in the near term, combined with asset impairments and other potential losses of goodwill and market share, will impair [plaintiff's] ability to invest in research and development . . . . Due to the incumbency effects of the MOCVD market, [plaintiff's] lost sales in the near term will hamper its ability to obtain further sales from the same customer going forward, yet those future sales will be extremely difficult to determine with the certainty required to obtain money damages. In addition, the medium- and long-term effects of [plaintiff's] lost market share and other competitive harms will be especially difficult to quantify at trial because the MOCVD reactor market is entering an expansionary period, making historical market data less predictive of future results."

Veeco Instruments Inc. v. SGL Carbon, LLC et al, 1-17-cv-02217 (NYED November 2, 2017, Order) (Chen, USDJ)

Friday, November 3, 2017

Expert's Analysis that Patented Features are Desirable, Important, and Essential Does Not Satisfy Entire Market Value Rule

The court granted defendant's motion to exclude the testimony of plaintiff's damages expert regarding a reasonable royalty for failing to apportion damages to the accused features. "The arguments made by [plaintiff], that the patented features are desirable and important or even essential, are not sufficient to prove that those features alone drive the market for the HEOS products. The flaw in [the expert's] reasoning is underscored by the fact . . . that at least half of all HEOS owners own only one HEOS product. That is to say, at least half of all HEOS owners cannot use the synchronization, group volume control, or pairing features described in [plaintiff's] patents, at least not without purchasing another HEOS unit. Therefore, it can be assumed that those features are not the driving factor in those customers’ purchasing decisions. . . . Because [the expert] neither considered the value of the allegedly infringing features in relation to the product as a whole, nor showed that those features alone drive consumer demand, his opinion as to the amount of a reasonable royalty for the HEOS products is methodologically unsound."

Sonos, Inc. v. D&M Holdings Inc. d/b/a The D+M Group et al, 1-14-cv-01330 (DED November 1, 2017, Order) (Bryson, CJ)

Thursday, November 2, 2017

Copying, False Statements, and Multiple Years of Infringement Warrant Award of Enhanced Damages

The court granted plaintiff's motion for enhanced damages because defendant's copying, lack of a good faith belief in its defenses, litigation conduct, duration of misconduct, motivation for harm weighed in favor of a 1.5 time enhancement of the jury verdict. "It appears from the record that [defendant] examined [plaintiff's] patent and step and tried to design something as close as possible. . . . The Court agrees that [defendant] willfully infringed. . . . [T]he false statement in the original Answer was wrongful behavior because it concerned a key fact: whether [defendant] knew about the patent while designing its step. . . . The fact that counsel remedied [defendant's] bad behavior does not alter the reality that false statements in the Answer are not proper litigation behavior. . . . Wherever courts should draw the line on duration, a party with multiple years of expanded use of an infringing product undoubtedly crosses the line on acceptable duration of infringement."

Cobalt Boats, LLC v. Sea Ray Boats, Inc. et al, 2-15-cv-00021 (VAED October 31, 2017, Order) (Morgan, SJ)

Wednesday, November 1, 2017

3 to 1 Preparation to Deposition Time Appropriate for Awarding Expert Witness Fees

The court granted in part defendants' motion for expert fees for its four expert witnesses. "In this District, courts look to the preparation time in relation to the deposition time to determine whether the preparation time was reasonable. 'These courts have reasonably concluded that a ratio of 3 to 1 preparation to deposition time is reasonable in complex cases[.]'. . . Plaintiff disputes the expert witness fees, arguing that one witness was not called at trial and that the testimony of the other three witnesses was irrelevant or otherwise questionable. It is not appropriate for [plaintiff] to undermine these expert witnesses in a bill of costs motion. Plaintiff had occasion to do so during pre-trial and trial. As for the witness who ultimately was not called, both sides retained experts in a good-faith preparation for trial."

The Medicines Company v. Mylan Inc., et al, 1-11-cv-01285 (ILND October 30, 2017, Order) (St. Eve, USDJ)