Federal Circuit’s Judgment of Noninfringement Precludes New Trial on Doctrine of Equivalents

The court denied plaintiff's motion to reopen the case and conduct a new trial on infringement under the doctrine of equivalents after the Federal Circuit reversed the Court’s construction of the term "virtual machine" and entered judgment of noninfringement. "[Plaintiff] states that it did not argue Defendants infringed the Patents-in-Suit under the doctrine of equivalents at trial, and, therefore, [plaintiff] contends the 'issue was never before the appellate court' and was not part of the appellate court’s judgment of non-infringement. . . . The Federal Circuit, on appeal, entered 'judgment of no infringement as a matter of law' because by 'failing to respond to [Defendant’s] argument in the briefing, [plaintiff] effectively conceded that the accused devices' run applications in a manner that does not meet the 'virtual machine' element of the claims. The mandate enters 'judgment of no infringement as a matter of law,' and the Court, under no circumstance, can order a new trial in which a jury may reach a verdict that is contrary to law."

Cardsoft, Inc., et al v. Verifone Holdings, Inc., et al, 2-08-cv-00098 (TXED March 15, 2016, Order) (Payne, M.J.)

Subsidiary’s Implied License Sufficient to Establish Standing to Sue for Lost Profits

The magistrate judge recommended denying defendants' motion to dismiss plaintiffs' second amended complaint on the ground that the original plaintiff's wholly-owned subsidiary lacked standing. "Defendants contend that [the subsidiary] is not a licensee at all — exclusive or otherwise — whereas [plaintiff] maintains that [its subsidiary] holds an implied exclusive license to practice the patents in certain retail channels. . . . [I]t is not incumbent upon [plaintiff] to produce a written license in order to join [its subsidiary]. . . . [The subsidiary] must only show that it received the right to practice [plaintiff‘s] patents in a particular area and [plaintiff‘s] express or implied promise that others would be excluded from practicing the patents in that area. . . . Defendants cite no authority to support their argument that an exclusive license — and specifically, one between related companies — must contain particular financial terms. Rather, all that is required is [plaintiff‘s] express or implied promise that [the subsidiary] would be permitted to use the invention in a defined market to the exclusion of others."

Mars, Inc. v. TruRX LLC et al, 6-13-cv-00526 (TXED March 14, 2016, Order) (Mitchell, M.J.)

Lack of Clarity for Patent-Ineligibility Weighs Against Decision at the Pleading Stage

The court denied without prejudice defendant's motion to dismiss on the ground that plaintiff’s electronic component placement system patent encompassed unpatentable subject matter because claim construction had not yet occurred. "'Courts . . . have denied motions to dismiss where the factual record is not yet sufficiently developed, such that the general character of a patent and its limitations are unclear.' . . . 'In this case, the parties dispute the basic character of the claimed subject matter.' Consequently, even construing the claims in Plaintiff’s favor, as the Court must at this stage, the Court is unable to identify the purpose of the [patent-in-suit], a necessary step in determining whether the [patent’s] claims are directed toward an abstract idea. Perhaps because the Supreme Court has declined 'to delimit the precise contours of the "abstract ideas" category,' the Court simply does not yet 'know it when [it] see[s] it.' Accordingly, the Court treads lightly, particularly given the Supreme Court’s admonition that the 'exclusionary principle' of patent-ineligible subject matter must be construed carefully 'lest it swallow all of patent law.'"

Palomar Technologies, Inc. v. MRSI Systems, LLC, 3-15-cv-01484 (CASD March 11, 2016, Order) (Sammartino, J.)

Network Communications Patents Not Invalid Under 35 U.S.C. § 101

Following an evidentiary hearing, the ALJ found that two asserted network communications patents were not invalid for lack of patentable subject matter because the claims were not directed to an abstract idea and they contained an inventive concept. "The Private VLAN Patents are not directed to an abstract idea, but rather to a specific device, namely a switch or a router, configured in a specific way to have new types of ports and new types of VLANs in order to isolate users' traffic. The claims all recite a switch or router comprising a VLAN, which is a definite structure. . . . Far from being the types of claims that present issues under Section 101, the Private VLAN Patents do not claim an algorithm or computerize an approach that was implemented manually in the prior art, but rather claim a new, specific and useful device to solve a problem that existed in the networking field in the prior art. . . . [T]he Private VLAN Patents solved the problem in the prior art of separating users' traffic on a LAN. . . . All the asserted claims, therefore, require special purpose devices, and not routine or conventional structures, such as switches and routers with specific defined structures that implement the new types of ports and new types of VLANs, and which transform the networking device into a special purpose machine that can enforce the private VLAN mechanism."

Network Devices, Related Software and Components Thereof (I), 337-TA-944 (ITC March 2, 2016, Order) (Shaw, ALJ)

Computer Navigator Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s computer navigation patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[M]aps of cities have long existed that depict structures and include identifying marks that direct a user to information about those structures. . . . The Plaintiff makes much out of the fact that their invention is a 'non-text based system' that does not require, for example, the numbers used on [defendant's demonstrative] map to provide a user with information about a particular store. The Court finds this fact inapposite. . . . The Court also finds the use of multiple layers of maps that enables users to zoom into and out of a geographic area is an unpatentable abstract idea. . . . The Court does not agree that the [patent-in-suit] addresses a challenge particular to computers or the Internet. Rather, the [patent] addresses a problem 'known from the pre-Internet world': navigating through maps and locating information about structures appearing on those maps."

Peschke Map Technologies LLC v. Rouse Properties, Inc., 1-15-cv-01365 (VAED March 8, 2016, Order) (O'Grady, J.)

No Early Claim Construction or Summary Judgment to Address Section 101 Challenge

The court denied defendants' motion for early claim construction and summary judgment proceedings regarding their defense of lack of patentable subject matter. "While the Court previously raised the possibility of seeking early claim construction in its Report & Recommendation, the Court finds that the claim construction issue raised by the parties in the letter briefs does not present a clearly dispositive issue that warrants special scheduling under the Court’s Docket Control Order. Indeed, in asking the Court to construe the term 'data' in an early proceeding, Defendants’ contend that the patents-in-suit broadly discuss all types of data 'some easily recognizable to humans and some not.' Thus, even accepting Defendants’ position, an early claim construction proceeding would not necessarily result in a clear finding that the patents are directed towards patent-ineligible subject matter in this case."

Realtime Data LLC d/b/a IXO v. Actian Corporation et al, 6-15-cv-00463 (TXED March 8, 2016, Order) (Love, M.J.)

Docket Navigator CEO to Present at PLI Post-Grant Patent Trials 2016

Docket Navigator CEO Darryl Towell will be speaking at the USPTO Post-Grant Patent Trials 2016, co-chaired by Scott McKeown (Oblon) and Robert Greene Sterne (Sterne, Kessler) in New York, NY on March 14, 2016. The program will begin with an update on USPTO post-grant practice, rule changes, and best practices by Hon. Grace Karaffa Obermann, Lead Administrative Patent Judge. Other segments will focus on the role of post-grant USPTO proceedings as a component of a litigation strategy, including pre-trial and post-trial options. New for 2016 are notable rule changes to PTAB practice, increasing feedback from the CAFC, and emerging trends driven by the expanding PTAB workflow. Perspectives of the judiciary are presented by PTAB and District Court Judges, including case studies of well-known disputes.

To register, click here.