Specification Requiring 3,000+ Hours of Experimentation Does Not Enable Claims

The court granted defendant's motion for summary judgment of invalidity as to plaintiff's online analytical processing cube ("OLAP") patents for lack of enablement. "Relying on [the inventor's] own representations, [defendant] calculates that he spent between 3,159 and 4,212 hours just to reduce the disparate databases limitations to practice. [Defendant] argues that this amount of experimentation is undue, representing between one and a half and two years of labor. . . . Working at an aggressive pace of fifty hours a week during fifty weeks of a year still only amounts to 2,500 hours of work during that period, far below the minimum of 3,159 hour of work that [the inventor] concedes having spent experimenting to enable the disparate databases features. A more reasonable pace of forty hours a week for fifty weeks of the year would result in 2,000 hours of work during the year. At that pace, [the inventor's] own calculations lead to the conclusion that enabling the disparate databases features would require a person of ordinary skill in the art to experiment for eighteen to twenty-five months to enable the features. This extended period of experimentation weighs heavily in favor of a finding of invalidity. . . . Overall, the [In re Wands, 858 F.2d 731,737 (Fed. Cir. 1988)] factors weigh heavily in favor of invalidity due to lack of enablement."

Vasudevan Software, Inc. v. MicroStrategy, Inc., 3-11-cv-06637 (CAND October 17, 2013, Order) (Seeborg, J.)

Claim Involving “Transfer of Money” Qualifies as “Financial Service” Required for CBM Review

The Board denied the petition for CBM review, but determined that the challenged patent satisfied the “financial product or service” requirement for CBM review. "Claim 1 of the [challenged patent] is directed to . . . the electronic sale of digital audio. Claim 1 recites 'transferring money electronically via a telecommunication line to the first party . . . from the second party.' The electronic transfer of money is a financial activity, and allowing such a transfer amounts to providing a financial service. . . . [C]ontrary to Patent Owner’s view . . . the legislative history indicates that the phrase 'financial product or service' is not limited to the products or services of the 'financial services industry' and is to be interpreted broadly. . . . Although claim 1 . . . does not relate to a financial services business, it does recite the electronic movement of money between financially distinct entities, which is an activity that is financial in nature."

Petition for Covered Business Method Patent Review by Apple Inc., CBM2013-00019 (PTAB October 8, 2013, Order) (Arbes, APJ)

Claim Construction Prior to Summary Judgment Denied as Inefficient

The court denied plaintiff's motion for an early claim construction hearing and technology tutorial. "Plaintiff’s request is consistent with this court’s past practice of construing claims in advance of summary judgment. Given the inefficiencies of that practice, the court now considers requests to construe claims alongside any summary judgment motions. The court made this change after repeatedly expending significant resources construing myriad claims, most of which proved immaterial to the core issues of infringement or invalidity. . . . the possibility that claims construction may narrow the issues for summary judgment is true for virtually all patent cases, and is not a legitimate basis for treating this case differently. . . . While the court might consider an early claims construction when both parties agreed that the construction of a few key terms would meaningfully advance the case in some material way (e.g., eliminate the necessity of a further liability determination), no such stipulation or showing has been made here."

Wildcat Licensing WI, LLC v. Johnson Controls, Inc., 3-13-cv-00328 (WIWD October 15, 2013, Order) (Conley, J.)

Withdrawal of FRAND Defense Precludes Use of FRAND in Hypothetical Negotiation

In ruling on the parties' motions in limine, the court clarified that defendants could not assert FRAND as a non-affirmative or business defense after voluntarily withdrawing FRAND counterclaims and affirmative defenses before trial. "Defendants have voluntarily elected to drop their counterclaims and affirmative defenses as to the issue of FRAND. Nonetheless, the parties continue to dispute the impact of such, namely whether Defendants may continue to assert FRAND as a non-affirmative defense in their reasonable royalty analysis or as a 'business' defense in the hypothetical negotiation scenario in response to Plaintiff’s evidence on damages. . . . Defendants have the affirmative burden of proof in this regard and FRAND is not a purely defensive response to Plaintiff’s damages case. . . . [T]he issue of FRAND is an affirmative defense which, in light of Defendants having voluntarily dropped their counterclaims and affirmative defenses as to FRAND, is now out of this case for all purposes."

WI-LAN Inc. v. HTC Corporation, et. al., 2-11-cv-00068 (TXED October 11, 2013, Order) (Gilstrap, J.)

Limiting Prior Art References to One Per Patent Claim Was Clear Error

The court granted defendant's motion to reconsider an earlier order limiting defendant to 20 prior art references where plaintiff was allowed to assert 18 claims. "The court concludes that it committed clear error in its [prior] order and that the results of the order may result in manifest injustice. . . . [I]in attempting to navigate through the parties’ briefs and the Federal Circuit Advisory Council’s proposed order, this court erred and increased the number of [plaintiff's] asserted claims beyond what the parties requested and beyond what is reasonable and manageable for trial. . . . [Defendant] has made a persuasive argument that if the court’s order stands, and [defendant] is limited to . . . 20 references to respond to 18 claims to be asserted before trial, this will have the effect of limiting [defendant] to one reference per claim. . . . The number of prior art references that [defendant] will be allowed to raise as part of its invalidity defense is a function of the number of claims that [plaintiff] will be allowed to assert against [defendant]. . . . [Defendant] may rely on 5 references per independent claim and 8 references per dependent claim before trial."

Unwired Planet, LLC v. Google, Inc., 3-12-cv-00504 (NVD October 10, 2013, Order) (Cooke, M.J.)

Examiner’s Track Record on Appeal Favors Stay of Litigation

The court granted defendant's renewed motion to stay pending inter partes reexamination because the undue prejudice to plaintiff was now outweighed by the potential simplification of issues. "[T]he principal factor weighing in favor of staying this action is that the USPTO has now rejected all claims of the [patent-in-suit] as obvious not once, but twice. The second rejection -- on multiple, independent grounds -- materially impacts the likelihood that the USPTO will ultimately invalidate the [patent]. Plaintiff must overcome seven separate grounds for rejection set forth by the Examiner in this case, who the Court notes has at least 12 years of experience at the USPTO, has experience handling inter partes reexaminations such as this one, and has never been reversed on appeal. . . . The Court weighs this significant risk of prejudice and expenditure of resources against the fact that [plaintiff] only seeks money damages in this action -- not injunctive relief -- and has already been granted the ability to take the trial depositions of any elderly inventors in the interim." Baseball Quick, LLC v. MLB Advanced Media. L.P., et. al., 1-11-cv-01735 (NYSD October 9, 2013, Order) (Forrest, J.)

Summary Judgment of Noninfringement Premature Prior to Close of Discovery

The court denied as premature under FRCP 56(d) plaintiff's motion for summary judgment that its accused products, other than three representative products in defendant's infringement contentions, did not infringe defendant's computer memory patents. "[Defendant] is entitled to avail itself of the remainder of the discovery period, and of expert discovery, prior to responding to such a motion. That [defendant] has not previously moved to compel further discovery from [plaintiff] is irrelevant, because [defendant] may still do so, several discovery requests remain outstanding, and [plaintiff] remains under the obligation to supplement its discovery. Moreover, expert discovery, which has not yet begun, will likely bear on the question of representativeness and will include substantial discovery relevant to [defendant's] infringement contentions. Until discovery is closed, the Court cannot enter judgment against [defendant] for failure to marshal evidence that is still subject to ongoing discovery."

ASUS Computer International v. Round Rock Research, LLC, 3-12-cv-02099 (CAND October 8, 2013, Order) (Tigar, J.)