Defendant May Not Rely on Component of Previously Disclosed Prior Art Reference as a Separate Invalidating Reference

​ The court granted plaintiff's motion to preclude defendant from presenting evidence that a component of a previously disclosed prior art reference invalidated the patent-in-suit because of the undue prejudice to plaintiff. "While [defendant] may argue that [previously disclosed reference] anticipates the patent-in-suit, it does not follow that [defendant] can argue that [the component] alone anticipates or renders obvious the patent-in-suit even though [the component] is a component of [the previously disclosed reference]. [Defendant] should have specifically disclosed in its invalidity contentions its intention to argue that [the component] alone anticipates or renders obvious the patent-in-suit. . . . There is substantial prejudice to Plaintiff from [defendant's] late disclosure because [plaintiff's] expert has not assessed [the component] as potentially invalidating art and [plaintiff] is prevented fact discovery or deposing [defendant's] expert on this issue."

EI du Pont de Nemours and Company v. Unifrax I LLC, 1-14-cv-01250 (DED May 5, 2017, Order) (Andrews, USDJ)

Patent for Efficiently Monitoring and Transmitting Patient Data Not Invalid Under 35 U.S.C. § 101​

The court denied defendant's motion for judgment on the pleadings that plaintiffs’ patent for efficiently monitoring and transmitting patient data encompassed unpatentable subject matter because the asserted claims did not lack an inventive concept. "Claim 9 does not introduce the concept of remote patient monitoring, but it purports to improve upon prior art in the mobile cardiac elemetry field by taking advantage of 'a communications device which selectively establishes a communications link between the remote monitoring unit and the central unit.' In so doing, Claim 9 purports to 'adopt[] a new data transfer architecture with improved selectivity of data transmission but retention of the data accumulation capability to build the patient history and also the emergency capability to assist the patient on an urgent basis when needed.' . . . Claim 9 purports to improve upon the previous technology, which did not allow for selectivity in determining the data set that would be transmitted to the central unit. . . . [T]he patent is 'more than a drafting effort to monopolize the [abstract idea].' Therefore, when read as an ordered combination, the court cannot determine as a matter of law that Claim 9 lacks an inventive concept."

CardioNet, LLC et al v. InfoBionic, Inc., 1-15-cv-11803 (MAD May 4, 2017, Order) (Talwani, USDJ)

3D Camera Exposure Patent Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s 3D camera exposure patent encompassed unpatentable subject matter. "A patent claim that recites a solution to a problem but not the means of achieving it is not drawn to patent-eligible subject matter. It is drawn to an abstraction. . . . Claim 1 of the [patent] is this kind of claim. The claim's preamble recites the technological context of the invention and its end goal; the first element restates the technological context; and the second element restates the end goal. The method of optimizing exposure on a structured-light 3D camera – the how that's nominally the subject of the claimed invention – is absent. . . . Describing the function of the prior-art cameras situates the claimed invention in the technological environment in which it operates, but it doesn't explain the invention itself. . . . By all appearances . . . the only effect of the word 'using' is to disclose the starting point of a method the claim doesn't explain: 'Using' two images, you get an optimal exposure. 'Using' certain inputs, you get a certain result. This is not enough to make claim 1 concrete. A claim cannot recite inputs and end result, then claim everything in between."

SungKyunKwan University, Research and Business Foundation v. LMI Technologies USA Inc., 3-16-cv-06966 (CAND May 3, 2017, Order) (Chhabria, USDJ)

No Exclusion of Expert’s Infringement Theory Plausibly Supported by Vague Infringement Contentions

The court denied defendant's motion to strike portions of the report of plaintiff's technical expert that contained previously undisclosed infringement theories. "[Plaintiff] has pointed to words, sentences, and figures in its contentions that support [its expert's] theories. Although in context, [plaintiff's] contentions may have led [defendant] to assume that [plaintiff] was identifying a particular aspect of the [accused] product, [defendant] did not seek assurances that this was actually the case. . . . It was incumbent on [defendant] to seek clarification, through written discovery, the meet and confer process, or motion practice, on any infringement contention that was slightly vague or unclear, particularly as the case progressed. Plaintiff has raised plausible arguments that its contentions support [the expert's] infringement opinions. . . . The fact that [defendant] had a full opportunity to respond to [the expert's] theories, both through expert report and deposition, also weighs against exclusion of his opinions."

Realtime Data LLC d/b/a IXO v. Actian Corporation et al, 6-15-cv-00463 (TXED April 17, 2017, Order) (Love, MJ)

Expert Testimony Concerning Litigation Funding Agreement Excluded as Irrelevant to Hypothetical Negotiation

​ The court granted plaintiff's motion to exclude the testimony of defendant's damages expert regarding litigation funding agreements as irrelevant to the hypothetical negotiation analysis. "These agreements are not patent licensing agreements and are not otherwise relevant to the hypothetical negotiation between the parties. The best that can be said about litigation funding agreements is that they are informed gambling on the outcome of litigation. They are so far removed from the hypothetical negotiation that they have no relevance. I further note that if they were determined to have some marginal relevance, that I would exclude them under Rule 403 as their probative value is more than substantially outweighed by the danger of unfair prejudice to [plaintiff] and of confusing the issues, as their introduction would just invite a sideshow on the economics of patent litigation."

AVM Technologies LLC v. Intel Corporation, 1-15-cv-00033 (DED May 1, 2017, Order) (Andrews, USDJ)

Domestically Controlled Foreign Breeding Activities Do Not Infringe Plant Patent​

The court granted defendant's motion for summary judgment of noninfringement of plaintiff's strawberry plant patents as to defendant’s breeding activities conducted in Spain. "[Defendant] imports into the United States the seeds developed from the breeding activities in Spain. [Defendant] germinates and grows these seeds alongside [plaintiff]-patented plants . . . 'as a point of comparison,' to evaluate the performance of the seedlings it is developing. . . . [Plaintiff] argues that the 'situs of infringement' is actually domestic because control over the breeding activities was exercised in the United States and [defendant] receives the benefit of its infringing use here. But the control-and-benefit test on which [plaintiff] relies applies to system patents. . . . [Plaintiff] has provided no justification or case law to support the application of [the control-and-benefit test discussed in NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1316-17 (Fed. Cir. 2005)] to the plant patents at issue in this case. The more logical 'situs of infringement' is Spain, the location 'where the offending act is committed.'"

The Regents of the University of California v. California Berry Cultivars, LLC, et al, 3-16-cv-02477 (CAND April 27, 2017, Order) (Chhabria, USDJ)

IPR Request and Post-Institution Fees Not Recoverable as Costs in Related District Court Case​

Following inter partes review that invalidated plaintiff's patent, the court denied defendant's motion to tax $23,000 in IPR request and post-institution fees as costs. "Defendant has raised an issue of first impression in this Court. But courts from two other circuits have considered this issue and declined to tax fees paid for the PTAB review . . . . [Defendant] urges the Court to adopt a broad reading of 'the Clerk' . . . because litigation 'shifts to that venue' and the IPR is a 'substitute for the district court proceeding.' The Court disagrees that the litigation 'shifted' to PTAB; PTAB merely determined the validity of [plaintiff's] patent, and this Court remained the adjudicator of the infringement suit. . . . PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1569 (Fed. Cir. 1988) is inapposite because the court was speaking only to the awarding of attorney fees [under] 35 U.S.C. § 285 . . . . That does not solve the problem that no statute authorizes a court to tax filing fees paid to the PTO. [Defendant] argues that it would be absurd if 'attorney fees within a substitute forum may be available, but the costs of transferring to that (more efficient) substitute forum are unreachable.' But the purported absurdity would hold for all the other deniable costs under 28 USC § 1920, and [defendant] has not made a case for why the IPR filing fee should be given special consideration."

Hockeyline, Inc. v. STATS LLC, 1-13-cv-01446 (NYSD April 27, 2017, Order) (McMahon, USDJ)