Special Liaison Appointed to Investigate Expert’s Availability to Testify Following Medical Event

The court deferred ruling on defendants' motion to substitute one of its experts and appointed a special liaison to help determine whether the expert would be able to proceed at trial. "Subsequent to his retention, [the expert] experienced a medical event, which occurred at or near the time of his deposition [last month]. . . . [T]he Court has concluded that an experienced non-physician liaison is appropriate to facilitate further informational development in this matter and that appointment of a non-physician liaison is preferable to appointing a different neurologist. . . . As special liaison in this regard, [the liaison] shall gather and report information from [the doctor who examined defendants' expert], and all other available, material sources, regarding [the expert's] ability to recover and testify [at trial in 3 months], or some other future date."

Intellectual Ventures II LLC v. FedEx Corporation et al, 2-16-cv-00980 (TXED February 26, 2018, Order) (Gilstrap, USDJ)

Venue Not Determined When Cause of Action Accrues

The court granted one defendant's motion to transfer for improper venue because defendant lacked a regular and established place of business in the district through its former office that closed shortly before plaintiff filed suit. "⁠[Plaintiff] argues . . . that the location in Plymouth Meeting is sufficient to defeat [movant's] motion to transfer because [it] had a regular and established place of business in this district when the cause of action accrued, and Plaintiff initiated the relevant action on June 30, 2010, a reasonable time after [movant's] office closed in 2009. . . . Some courts have held that venue is proper under § 1400(b) when a defendant had a regular and established place of business in a district, and the plaintiff initiated the action within a reasonable time after the place of business was closed. However, this rule has not been adopted by the Third Circuit Court of Appeals, and this Court declines the invitation to apply said ruling in this patent case."

Infinity Computer Products, Inc. v. OKI Data Americas, Inc., 2-12-cv-06797 (PAED February 23, 2018, Order) (Alejandro, USDJ)

Slot Machine Patent Claims Invalid Under 35 U.S.C. § 101

The court granted defendant's motion for summary judgment that the asserted claims of plaintiff’s gaming machine patents encompassed unpatentable subject matter and found that the claims lacked an inventive concept. "The Court rejects [plaintiff's] argument that the ordered combination of claims results in an inventive concept by virtue of the unique display or configuration of symbols on the simulated reels. While the claims at issue here may disclose a different configuration of the displayed symbols in a slot machine game, they do not disclose a new game or a new technology directed to the slot game. . . . Selecting an identical symbol for a consecutive run of symbols in one simulated digital reel, at least as disclosed in the asserted claims here, does not represent a new form of selection or derive from a new technology associated with slot games. . . . Changes to game rules of a generic slot machine using conventional technology are not patentable."

Konami Gaming, Inc. v. PTT, LLC d/b/a High 5 Games, 2-14-cv-01483 (NVD February 22, 2018, Order) (Boulware, II, USDJ)

Stipulation to Waive §§ 102 and 103 Defenses Weighs in Favor of Stay Pending IPR

The court granted defendant's motion to stay pending its petition for inter partes review because the potential simplification of issues and lack of undue prejudice favored a stay. "The Court agrees with [plaintiff] that at this point it is unknown whether the PTAB will institute IPRs of the asserted patents. . . . Yet the Court’s concerns are assuaged by [defendant's] proposed stipulation that if the Court grants the stay, [it] will waive any argument regarding prior art under 35 U.S.C. §§ 102 or 103 -- regardless of whether or not the IPR proceedings are instituted. The Court finds this proposition persuasive, particularly given [defendant's] representations regarding the heavy monetary burden that instituting the IPRs and defending a lawsuit in district court at the same time will impose on it as a small company. . . . [W]hile the Court agrees that [the parties] are direct competitors and that [defendant] could harm [plaintiff's] competitive standing, [plaintiff] is far too vague regarding this alleged harm."

Blacoh Fluid Controls, Inc. v. Syrinix, Inc., 5-17-cv-04007 (CAND February 21, 2018, Order) (Cousins, MJ)

Aesthetic-Functionality Test Does Not Apply to Design Patents

The court denied plaintiff's motion for summary judgment that defendant's auto body part design patents were invalid and rejected plaintiff's argument that the aesthetic-functionality test should apply to design patents. "For at least three reasons the Court declines to import the aesthetic-functionality doctrine from trademark law to design-patent law. First, no court has done so. This despite that both trademarks and design patents have coexisted for well over a century. . . . Second, trademark law and patent law serve different purposes. . . . [T]rademark law 'seeks to promote competition' . . . patents inhibit competition. Yet the 'policy predicate for the entire [trademark] functionality doctrine stems from the public interest in enhancing competition.' . . . Third, there is greater reason for trademark law to be concerned with functionality (aesthetic or otherwise) than design-patent law. If a trademark could protect function, the mark holder would gain a perpetual monopoly over the product’s function without clearing the hurdles for obtaining any patent—utility or design. In contrast, those seeking a design patent must clear at least some hurdles related to novelty. And the term of monopoly is limited to 15 years. Thus, the inequity of a design patent protecting the aesthetically functional aspect of an article is simply not as great as a trademark doing so."

Automotive Body Parts Association v. Ford Global Technologies, LLC, 2-15-cv-10137 (MIED February 20, 2018, Order) (Michelson, USDJ)

Audio/Visual Playback Patent Invalid Under 35 USC § 101

The court granted defendant's motion for summary judgment because the asserted claims of plaintiffs’ audio/visual playback patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "I agree with Defendant that this claim is, at most, directed to the automation of a process that can be (and has been) performed by humans. . . . Claim 1 includes the additional element of reproducing the recorded signal with either the previously stored or default preferences, but that element is similarly abstract, as it, too, is at most directed to the automation of a process that can be performed by humans. Claim 1 is thus directed to the abstract idea of choosing to play back media with or without playback preferences. It is not directed to an invention that improves this process."

D&M Holdings, Inc., et al. v. Sonos, Inc., 1-16-cv-00141 (DED February 16, 2018, Order) (Andrews, USDJ)

Meritless Invalidity and Unenforceability Claim Justifies Award of Attorney Fees

Following dismissal of plaintiff's invalidity and unenforceability claims for lack of standing and failure to state a claim, the court granted defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics were unreasonable. "The plaintiff should have known from the inception of this litigation that its claim in Count X [seeking a declaration of patent invalidity and unenforceability] lacked substantive and legal merit, and even if it was unaware of such deficiencies at the time it filed its complaint, there is no question that the meet-and-confer communications from the defendants before the filing of their motion to dismiss directly pointed the plaintiff to such deficiencies. Even with such awareness, the plaintiff committed to seeing the claim through to the end, in defiance of the applicable law. Not only did the plaintiff persist in its frivolous claim, but they aggressively litigated the patent issues. This required the defendants themselves to develop their own expert testimony to address patent issues which should have never been present in this case. There is no doubt that the plaintiff’s steadfast commitment to this unfounded patent claim imposed additional expenses on the opposing parties which should never have been experienced."

Technology for Energy Corporation v. Hardy et al (JRG3), 3-16-cv-00091 (TNED February 15, 2018, Order) (Greer, USDJ)