Defendant's and Counsel's Lack of Cooperation Justify Service on Foreign Entity by Alternate Means​

The court granted plaintiff's motion to serve its declaratory relief complaint by alternate means on a Japanese defendant following defendant and its counsel's lack of cooperation. "[Defendant's] contention that it is 'simply' standing on its 'right' to service under the Hague Convention is ill-taken. . . . [Counsel's email exchange] shows that [defense] counsel declined to accept service in an apparent fit of pique, and the record of events after that indicates that [defendant] has been unduly difficult to serve in a manner reflecting the uncooperative spirit manifested in [defendant's lead attorney's] words. . . . In our circuit, Rule 4(f)(3) allows for service 'by other means' so long as it is directed by the court and is not prohibited by international agreement. There is no hierarchy of procedures, as [defendant] suggests, that requires [plaintiff] to attempt service through the Hague Convention or other means before seeking an order under Rule 4(f)(3). . . . [Defendant] has been uncooperative at every turn in responding to [plaintiff's] attempts to serve the complaint. It has not shown that service under Rule 4(f)(3) would violate an international agreement, and the Hague Convention is certainly no bar. Consequently, [plaintiff's] motion for an order of service under Rule 4(f)(3) is granted. . . . In situations like this, service on a foreign corporation’s counsel in the United States is an effective and reasonable method, and is not prohibited by the Hague Convention."

Xilinx, Inc. v. Godo Kaisha IP Bridge 1, 3-17-cv-00509 (CAND March 29, 2017, Order) (Donato, USDJ)

Narrowing Asserted Patent Claims Precludes Validity Determination as to Unasserted Claims​

The court granted in part plaintiff's motion to reconsider an earlier order granting defendant's motion for judgment on the pleadings that plaintiff's remote monitoring patents encompassed unpatentable subject matter and agreed with plaintiff that it lacked jurisdiction over the unasserted claims. "[N]arrowing patent litigation to asserted claims pursuant to local patent rules can appropriately limit the court’s reach over other unasserted claims in the patent, even if those claims were at issue when the plaintiff filed its original complaint. . . . [Defendant also] urges that disclosures under this court’s local patent rules are insufficient to limit the scope of an invalidity counterclaim. . . . The parties’ patent contentions do not control the reach of the court’s jurisdiction, but they do influence the determination of whether there is, before the court, a substantial controversy. . . . [Defendant] effectively argues that because the case was before the court on a Rule 12(c) motion, the court must limit its analysis to the pleadings and must therefore exercise jurisdiction over the entire counterclaim. But the court is not constrained by jurisdictional assertions; in fact, the court will always independently examine whether it has jurisdiction over a particular declaratory judgment counterclaim. . . . The court in this case concludes it is not appropriate to ignore the impact of the parties’ contentions, even though they occurred after the pleadings."

Joao Control & Monitoring Systems, LLC v. Telular Corporation, 1-14-cv-09852 (ILND March 28, 2017, Order) (Pallmeyer, USDJ)

Mobile Navigation System Patent Not Invalid Under 35 U.S.C. § 101​

The court denied defendant's motion for judgment on the pleadings on the ground that plaintiff’s mobile navigation system patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "Defendants argue that under step one, claim 15 is directed to an abstract idea because the claim is specifically directed to the idea of providing directions in a natural language. . . . Defendants argue that claim 15 is directed to an abstract idea because the claim is directed to a process that could be performed by a human with a pencil and paper. But a human with a pencil and paper cannot format route data into a natural language description that is generated on a server and then transferred to a local database. . . . [C]laim 15 is not directed to some abstract result or effect. Rather, claim 15 provides a specific technological means for remedying the specific problems with real-time mobile navigation systems that the [patent] sought to address: formatting the route data using a non-proprietary, natural language description."

InfoGation Corp. v. ZTE Corporation et al, 3-16-cv-01901 (CASD March 27, 2017, Order) (Huff, USDJ)

Plaintiff’s Inability to Obtain Manufacturing Process Information from Chinese Manufacturer Justifies Presumption of Infringement Under 35 U.S.C. § 295​

The court denied plaintiff's motion for summary judgment of infringement of a fungicide patent, but found that the burden to establish noninfringement should be shifted to defendant under 35 U.S.C. § 295. "[Plaintiff] contends that it made reasonable efforts to discover [defendant's Chinese manufacturer's] process for producing azoxystrobin technical, but that it has been thwarted by [defendant's] lack of full cooperation and its inability to get information from [the manufacturer]. . . . [Defendant] asserted that it had no written communications with [the manufacturer], because they corresponded only in person, via telephone, or via a chat program that did not save correspondence. . . . At his deposition . . . [the manufacturer's representative] affirmed that [the manufacturer] has production records with the ratios and quantities of materials used in the manufacturing process . . . but that no one associated with [defendant] informed him that [plaintiff] was asking for those documents, apart from sharing [a] July 28 letter about a month before his deposition. He did not produce any of these documents at his deposition, despite being aware that [plaintiff] had asked for them. . . . While [plaintiff] did not seek discovery directly from [the manufacturer] . . . it 'is extremely difficult, if not impossible . . . to compel the Manufacturer [in China] to produce any documents' . . . . Moreover, given [the manufacturer's] location in China, requesting voluntary facility inspections or observing the process firsthand are unlikely possibilities for discovering information."

Syngenta Crop Protection, LLC v. Willowood, LLC et al, 1-15-cv-00274 (NCMD March 24, 2017, Order) (Eagles, USDJ)

Interactive Toy Patents Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s interactive toy patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "Here, the Patents-In-Suit involve toys that communicate or interact amongst one another, with humans, or with computers. The toys generate, receive, and analyze sounds. They transmit, receive, and respond to a signal. They generate acoustic signals, receive the acoustic signals, analyze the signal, and then perform a responsive function. At core, the patents attempt to state methods for toys to communicate by sending, receiving, and responding to signals. The claims do not state a means by which to communicate, but rather are directed at the abstract process of communication itself. . . . Plaintiff attempts to characterize the patents as 'tangible toys or devices' and therefore not abstract. . . . The mere inclusion of tangible elements in an otherwise abstract idea does not render the subject matter any less abstract."

Dialware Communications, LLC v. Hasbro, Inc., 2-16-cv-09012 (CACD March 22, 2017, Order) (Real, USDJ)

SCA Hygiene Products Bars Laches Defense During 6-Year Limitations Period​

Having previously observed that "the doctrine of laches likely bar[s] the plaintiff’s claims," the court denied defendant's motion for summary judgment on its laches defense in light of the Supreme Court's decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927 (U.S. Mar. 21, 2017). "That decision has now been rendered, the Court holding that '[l]aches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by [35 U.S.C.] § 286. Accordingly, it appearing proper, it is ordered [that] [defendant's] Motion for Summary Judgment Based on Laches is denied."

Artrip v. Ball Corporation et al, 1-14-cv-00014 (VAWD March 22, 2017, Order) (Jones, USDJ)

Voting System Patent Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s voting system patent lacked an inventive concept. "According to the complaint, the auto-verification voting system is made of generic computer components performing generic computer functions, including: inputting voting information, printing out a paper ballot, having the voter personally verify the vote, and inputting the verified vote into a 'tabulating' computer. There is nothing inventive or transformative about the functions claimed in the patent, as they encompass computer functions which are 'well-understood, routine, conventional activit[ies] previously known to the industry,' and thus, there is no transformative feature between the abstract ideas of voting and verification and the input of the given steps into a computer system."

Voter Verified, Inc. v. Election Systems & Software, LLC f/k/a Election Systems & Software, Inc., 1-16-cv-00267 (FLND March 21, 2017, Order) (Walker, USDJ)