Section 112 Does Not Contain Conciseness Requirement Independent of Enablement

The court denied defendant's motion for summary judgment that plaintiff's internet gateway patents were invalid for lack of conciseness. "It is basic hornbook law that Section 112 contains three requirements for an inventor seeking a patent: (1) written description; (2) enablement; and (3) best mode. The word 'concise' is included in the statutory section as part of the second requirement of enablement. . . . [Defendant] would have a fourth requirement be made out of the inclusion of the word 'concise' in the statute. However, [defendant] acknowledges that there are no controlling cases — or any cases — finding this 'concise' language in the statute to be a formal requirement, much less a requirement that can lead to the invalidation of a patent. Therefore, this Court declines the opportunity to create an additional requirement in Section 112."

Nomadix, Inc. v. Hospitality Core Services LLC d/b/a Blueprint RF, 2-14-cv-08256 (CACD January 27, 2016, Order) (Pregerson, J.)

Financing Package Generation Patent Unpatentable Under 35 U.S.C. § 101

In a final written decision, the Board found claims of a financing package generation patent unpatentable under 35 U.S.C. § 101. "The underlying concept of claim 1, when viewed as a whole, simply is to receive information from a customer’s credit application, process that information, and present the processed information as potential financing packages to the dealer. Rephrased, this is the abstract idea of 'processing an application for financing a purchase.' . . . We note that processing an application for financing a purchase is a mere building block of human ingenuity, similar to the building blocks identified by the Supreme Court and the Federal Circuit. . . . [W]e read the Court to say that fundamental economic concepts, by themselves, are examples of the basic tools, or building blocks, of innovation that Section 101 is not intended to protect. They are considered to be available to the public, absent a showing of the incorporation of the fundamental economic concept into a machine or method that amounts to something 'significantly more.'"

Petition for Covered Business Method Patent Review by Westlake Services, LLC d/b/a Westlake Financial Services, CBM2014-00176 (PTAB January 25, 2016, Order) (McKone, APJ)

Plaintiff’s Selective Licensing Activities Preclude Permanent Injunction

Following a bench trial and plaintiff's withdrawal of its claim for monetary damages, the court did not impose a permanent injunction because plaintiff failed to establish irreparable harm due to its licensing activities. "Plaintiff’s licensing of the patents-in-suit to the suppliers of 41% of the global LED market also precludes a finding of irreparable harm. Several of these licensees are significant competitors and considered 'major threats' to [plaintiff's] flagship 757 LED product. Plaintiff claims it has been selective in licensing the patents-in-suit, yet the mere existence of such licenses indicates that the harm for any infringement of the patents-in-suit is not irreparable, but rather can be addressed through other compensatory means."

Nichia Corporation v. Everlight Electronics Co., Ltd. et al, 2-13-cv-00702 (TXED January 25, 2016, Order) (Gilstrap, J.)

ATM Patent Not Invalid Under 35 U.S.C. § 101

The Board denied institution of covered business method review of an ATM patent under 35 U.S.C. § 101. "Petitioner does not identify directly 'the abstract ideas' to which the claims are purportedly directed. . . . [but] implicitly identifies them as: 'providing money to an account holder' and 'trial-and-error.' . . . As Patent Owner points out, Petitioner has oversimplified the challenged claims. The challenged claims are not directed simply to the idea of providing money to an account holder or using trial-and-error until success is achieved. Rather, the claims are directed to particular methods of providing money to an account holder using an ATM via a POS transaction after an ATM transaction has failed. Further, Petitioner’s analysis omits any consideration of the elements of the claims as ordered combinations to determine whether the additional elements transform the nature of the claims into a patent-eligible application. It was Petitioner’s burden to do so. Petitioner has not shown that the claims are more likely than not patent-ineligible."

Petition for Covered Business Method Patent Review by NRT Technology Corp., CBM2015-00167 (PTAB January 22, 2016, Order) (Fitzpatrick, APJ)

Plaintiff’s Statements in IPR “Akin to a Prosecution Disclaimer” and Support Finding of Noninfringement

The court granted defendant's motion for summary judgment that it did not infringe plaintiff's media streaming patent in light of plaintiff's statements during inter partes review. "During the claim construction process, the Court was not asked to construe the term 'The [Control Point Proxy] is invoked.' However, the Court agrees with [defendant] that based on the language of the patent and [plaintiff's] statements during the inter partes review process, dependent claims 2 and 21 require that only the CPP logic is invoked to negotiate media content delivery. . . . [T]his distinction is confirmed by [plaintiff's] preliminary responses to [defendant's] inter partes review petitions of the [patent-in-suit] and the PTAB’s adjudication of the petition. In this regard, [plaintiff's] statements are akin to a prosecution disclaimer. . . . Based on this distinction, the PTAB denied [defendant's] petition for inter partes review of claims 2 and 21. . . . [T]he PTAB’s conclusion was not based on the application of the [broadest reasonable interpretation ] standard of review, but rested on the distinction that [plaintiff] itself articulated in its response to [defendant's] petition."

Aylus Networks, Inc. v. Apple Inc., 3-13-cv-04700 (CAND January 21, 2016, Order) (Chen, J.)

Customizable Merchandise Preview Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s customizable merchandise preview patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "Plaintiff describes the patent as solving 'a problem particular to e-commerce by allowing consumers to design their own products as a way to drive on-line sales.'. . . Plaintiff claims that the [patent-in-suit] is not abstract because it is necessarily rooted in computer technology; rather, it is a method of facilitating sale to a potential customer over a computer network. . . . Presenting various iterations of products with different design elements in order to entice business is not computer or network specific. Furthermore, adding design elements to merchandise and displaying the merchandise is a method that can be performed by human thought alone, and previewing merchandise to potential customers is a longstanding economic practice. The [patent] is an abstract idea."

American Needle, Inc. v. Zazzle Inc., 1-15-cv-03971 (ILND January 19, 2016, Order) (Darrah, J.)

Jury Instructions and Verdict Form Tying Infringement and Validity Did Not Motivate Jury to Find Patents Invalid

The court denied defendant's motion for a new trial and rejected defendant's argument that the verdict form inappropriately tied invalidity and infringement together and motivated the jury to find the asserted patents invalid. "[Defendant] alternatively moves the Court to grant a new trial on invalidity because the Verdict Form was prejudicial against [defendant] for two reasons: (a) invalidity and infringement were tied together on the Verdict Form, and (b) the Verdict Form inappropriately motivated the jury to find invalidity to avoid having to make infringement findings on approximately 3,100 items. . . . [P]rior to the Court reading the jury instructions and giving the jury the Verdict Form, the Court addressed and rejected [defendant's] contention that the Verdict Form inappropriately motivated the jury to find invalidity to avoid having to make infringement findings on approximately 3,100 items. . . . [Defendant's] contention that it was improper to preclude the jury from making a finding on infringement once the jury concluded the patents were invalid is not supported by applicable law. Therefore, the Court rejects [defendant's] argument that it was prejudiced by invalidity and infringement being tied together on the Verdict Form."

Everlight Electronics Co., Ltd., et al v. Nichia Corporation, et al, 4-12-cv-11758 (MIED January 19, 2016, Order) (Drain, J.)