Defendant Granted Leave to Assert Claim Under Florida “Patent Troll Prevention Act”

The court granted defendant's motion to amend its pleadings to add a claim under Florida's recently-enacted Patent Troll Prevention Act and rejected plaintiff's arguments regarding delay, harassment, and futility. "Defendant sought the amendment mere weeks after the statute was enacted. Plaintiff provides no legal basis to find that the statute cannot be applied retroactively. . . . Further, any new claim would result in additional discovery and additional potential liability, but that does not make an amendment unduly prejudicial. Indeed, if that was the test, no amendment would ever be permitted. Furthermore, the case is in the early stages, as shown by the fact that there is no scheduling order in effect."

ArrivalStar SA et al v. Demandware, Inc., 9-15-cv-80098 (FLSD August 31, 2015, Order) (Marra, J.)

Plaintiff’s Lack of Standing Warrants Award of Attorney Fees Under Section 285

The court granted defendants' motion for attorney fees under 35 U.S.C. § 285 after a non-practicing entity plaintiff's infringement claims were dismissed for lack of standing. "Although [patent assertion entities] rarely win the lawsuits they bring, that is because they rarely litigate them to judgment. The threat of costly and disruptive litigation is their strongest tool, and it is a potent threat. . . . Exploiting the patent-in-suit in these cases . . . was [plaintiff's] sole reason for being. The only precondition to Plaintiff's fulfilling its singular purpose was its acquisition of title to the [patent-in-suit]. Obtaining ownership of the patent was . . . the only thing Plaintiff absolutely had to accomplish in order to fulfill its destiny. At this simple task it proved an abysmal failure. . . . I have never before had a case on my docket in which the purported owner of the patent-in-suit did not in fact own the patent -- that alone makes this case 'exceptional,' for I have no basis on which to believe that suing on a patent one does not own falls within the bounds of normal litigation behavior. . . . Bluffing is what [plaintiff] did: it bluffed by confidently asserting that it owned the patent, knowing that no one was likely to call its bluff and force it to prove what it knew it could not really prove. That cannot be equated with having an objectively reasonable belief that there was no defect in [plaintiff's] title to the [patent-in-suit]."

Advanced Video Technologies LLC v. HTC Corporation et al, 1-11-cv-06604 (NYSD August 28, 2015, Order) (McMahon, J.)

FRE 408 Does Not Prohibit Evidence of Settlement Offer to Show Lack of Irreparable Harm

The court denied plaintiff's motion for a preliminary injunction to preclude defendant from selling its accused email products and determined that plaintiff failed to establish irreparable harm. "[Plaintiff's] own actions belie its assertion that it requires immediate, equitable relief. . . . [O]utside of the conclusory allegations of its Chief Executive Officer and Founder, [plaintiff] has produced no substantive evidence of loss of revenue, market share, goodwill, shelf space or any of the other factors which combine to prove injuries which cannot be made whole by monetary damages. . . . Evidence presented by the parties which was filed under seal but briefly discussed during oral argument raises ER 408 questions. . . . As highlighted by [defendant], Rule 408 prohibits the use of offers to compromise when offered to prove liability for, invalidity of, or amount of a claim that was disputed as to validity or amount, or to impeach through a prior inconsistent statement or contradiction. [Defendant], however, does not offer the evidence in dispute to establish liability, validity or amount of a claim. Rather, the evidence is presented to establish whether there would be irreparable harm to [plaintiff] which could not be compensable by money damages, not the validity of the claim or amount of the harm."

BitTitan, Inc. v. SkyKick, Inc., 2-15-cv-00754 (WAWD August 27, 2015, Order) (Martinez, J.)

Failure to Show Nexus Between Patented Invention and Alleged Harm Precludes Preliminary Injunction

The court denied plaintiff's motion for a preliminary injunction to preclude defendant from selling its accused semiconductor inspection products because plaintiff failed to establish irreparable harm based on incumbency/vendor lock-in. "[Plaintiff'] argument of irreparable harm without an injunction is focused on 'incumbency' or vendor lock-in—the idea that customers who purchase [the accused product] will be unlikely to switch to a [plaintiff's] product because of the substantial switching costs. . . . [Plaintiff] has failed to proffer any customer based evidence — either directly from a customer or in survey form — indicating that the [patent-in-suit] influences customers’ purchasing decisions or makes the product significantly more desirable. . . . [T]hese systems have numerous features permitting inspection of increasingly smaller components. Because of this complexity, the causal nexus requirement is not easily satisfied. Also cutting against [plaintiff's] causal nexus arguments is the sizable price difference of the [accused] and [plaintiff's] systems [$2.8 million and $4.4 million.]. . . While price always influences purchasing decisions, the sizeable disparity here suggests price difference would play a significant role in the purchase decision."

Rudolph Technologies, Inc v. Camtek Ltd., 0-15-cv-01246 (MND August 26, 2015, Order) (Montgomery, J.)

Physician’s Instructions Constitute Direction and Control of Patients for Determining Divided Infringement Under Akamai

Following a second bench trial, the court found that the defendant drug manufacturers induced infringement of plaintiff's chemotherapy drug patent because all steps of the claimed methods could be attributed to physicians. "[T]he factual circumstances are sufficiently analogous to those in [Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 2009-1372, 2015 WL 4760450 (Fed. Cir. Aug. 13, 2015) (en banc) (per curiam)] to support a finding of direct infringement by physicians under § 271(a), and thus inducement of infringement by Defendants under § 271(b). . . . Although the parties present extensive arguments as to whether [the physician's instructions] constitutes the physician 'administering' the folic acid, whether or not this satisfies the definition of 'administer' is not relevant. What is relevant is whether the physician sufficiently directs or controls the acts of the patients in such a manner as to condition participation in an activity or receipt of a benefit—in this case, treatment with pemetrexed in the manner that reduces toxicities—upon the performance of a step of the patented method and establishes the manner and timing of the performance. Defendants argue that there is no way of knowing whether the patient will or will not actually take the folic acid, thus the physician lacks 'control or direction' over this step of the patented process. . . . The Court cannot base a finding of non-infringement upon the mere possibility that some patients might not follow their physician’s instructions and instead must look to the ANDA Products’ labeling to determine, if all the patented steps are followed, whether it would infringe the Asserted Claims."

Eli Lilly and Company v. Teva Parenteral Medicines, Inc., et al, 1-10-cv-01376 (INSD August 25, 2015, Order) (Pratt, J.)

Promotional Games Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s promotional games patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[T]he court finds that the concept of promotional games -- 'random drawing sweepstakes, instant win packaging, lotteries, collect & win and match & win contests' -- is an abstract idea. Though perhaps some would dispute whether such games are a 'fundamental' economic principle, there can be little doubt that they qualify as a 'longstanding commercial practice' and a 'method of organizing human activity.'. . . Promotional games are marketing tools. Though a precise definition of 'abstract idea' is deliberately elusive, in the court's view, these tools fit squarely within any understanding of the category."

Everglades Game Technologies, LLC v GSN Games, Inc. et al, 1-14-cv-00641 (DED August 21, 2015, Order) (Sleet, J.)

Limited Liability Company Not Required to Identify Sole Member as Real Party in Interest in IPR Petition

The Board denied the patent owner's motion to terminate the proceeding based on a failure to name the petitioner limited liability company's sole member as a real party in interest. "[T]here is a rebuttable presumption that a petitioner’s identification of real parties in interest is accurate. However, when a patent owner provides sufficient rebuttal evidence that reasonably brings into question the accuracy of the petitioner’s identification, the ultimate burden of proof remains with the petitioner to establish that it has complied with the statutory requirement of 35 U.S.C. § 312(a)(2) . . . We . . . determine that [the sole member of the petitioner LLC] was not a RPI in this proceeding at the time Petitioner filed its Petition. In general, 'rarely will one fact, standing alone, be determinative' of the RPI issue. . . . [N]o evidence before us indicates that [the member company] is accused of infringing Patent Owner’s patent. . . . [Petitioner] contributed funds towards this proceeding, but not [the member company] . . . [The member company] is the sole member of [the petitioner]. In that sense, [the member company] exercises control over [the petitioner] generally. . . . [However] Patent Owner has only provided evidence of theoretical control, by way of corporate structure, but has not provided sufficient evidence that [the member company] had any actual control over [the petitioner's] participation in this proceeding. . . .[The member company] and [petitioner] share the same officers, but Patent Owner has not provided sufficient evidence that persuades us that the officers had the ability to, or in fact did, blur the lines between their respective roles in the organizations."

Petition for Inter Partes Review by Jiawei Technology (USA) Ltd., IPR2014-00936 (PTAB August 21, 2015, Order) (Saindon, APJ)