Despite Finding of Exceptional Case, Plaintiff’s Failure to Produce Invoices Warrants Denial of Attorney Fee Award

Although the court found that the case was exceptional under 35 U.S.C. § 285, it awarded plaintiff $0 in attorney fees because plaintiff failed to provide sufficient documentation of its claimed fees. "Despite three separate opportunities in its motion for attorneys’ fees, reply, and sur-surreply, [plaintiff] has not documented the work counsel performed in a manner that would allow the court to make its lodestar calculations. Instead, [plaintiff] basically asks the court to take its word for it in terms of what constitutes a reasonable amount of fees and costs. Although the court continues to believe this case was 'exceptional' within the meaning of 35 U.S.C. § 285, [plaintiff] has not met its burden. . . . Further, [plaintiff's] offer to allow in camera review is not sufficient. Opposing counsel has the right to challenge the basis for a fee award, and the court is entitled to opposing counsel’s views. . . . [Plaintiff] argues that it is precluded from producing invoices with descriptions of the work performed because such descriptions are protected by attorney-client privilege. . . . Not only does the case law not support its argument, but [plaintiff] filed motions to seal its motion, reply, and sur-surreply, which should have tempered any privilege concerns."

Novartis Corporation v. Webvention Holdings LLC et al, 1-11-cv-03620 (MDD June 7, 2016, Order) (Blake, J.)

Electronic Message Delivery Patents Not Invalid Under 35 U.S.C. § 101

The court denied plaintiff's motion for judgment on the pleadings that defendant's electronic message delivery patents encompassed unpatentable subject matter because the claims did not lack an inventive concept. "[Plaintiff] argues that the patents-in-suit simply duplicate a pre-internet business practice on the internet because the patents-in-suit allegedly acknowledge that their solution is directed at the same problem that exists with regular mail, namely proof of delivery. The patents-in-suit, however, address more than that. More importantly, the patents-in-suit aim to solve a technical problem of electronic messages, which because of their form, present unique challenges for establishing proof of receipt and delivery. The patents-in-suit thus use an intermediate server between the sender and receiver of an electronic message to address the problem of providing reliable proof of the content and delivery of electronic messages, without requiring the cooperation of the recipient and without requiring special email software. The patents-in-suit’s technical solution thus satisfies step two of the analysis under [Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)]."

Sophos Incorporated v. RPost Holdings, Inc. et al, 1-13-cv-12856 (MAD June 3, 2016, Order) (Casper, J.)

Piecemeal Approach to Document Production Warrants Sua Sponte Sanctions Award

The court sua sponte sanctioned defendant for failing to adequately respond to plaintiff's document requests. "Rather than conduct a complete search of all corporate files, defendant and counsel for defendant have instead taken a piecemeal approach to discovery, reviewing only the files of select corporate employees. This approach is contrary to the Federal Rules of Civil Procedure and to repeated orders of this court. . . . Although plaintiff has not expressly requested an award of attorney’s fees, defendant’s repeated failure to comply with this court’s orders warrants sanctions and an award of fees. . . . The court already has ordered defendant to pay the reasonable attorney’s fees of plaintiff associated with two recent discovery motions. It is evident, however, that defendant’s extended delay in responding to discovery requests has caused plaintiff to incur attorney’s fees and expenses well beyond those associated with the two recent motions."

M-Edge International Corporation v. LifeWorks Technology Group LLC, 1-14-cv-03627 (MDD June 3, 2016, Order) (Gesner, M.J.)

Video Game Updating Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s video game updating patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The claims recite a simple internet-based method of updating the software of sports video games. This is an abstract idea — updating software in sports video games — and it is performed on a conventional computer, server, and network. . . . [T]he Patent claims do nothing more than recite the performance of a long-established business practice — re-writing software to produce an updated version — using a general purpose computer and the internet. . . . The fact that the Patent is limited to the specific field of use of sports video games, or that it is performed over the internet, makes no difference."

White Knuckle Gaming, LLC v. Electronic Arts, Inc., 1-15-cv-00150 (UTD June 2, 2016, Order) (Parrish, J.)

Data Security Patent Unpatentable Under 35 U.S.C. § 101 Despite Enfish

In a final written decision, the Board found claims of a patent directed to a data security system unpatentable under 35 U.S.C. § 101. "[W]e are persuaded by Petitioner that the claims are directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. . . .The databases and access rules recited in claims 1 and 8 perform their normal functions and achieve expected results. The protection of data in a database at the data element level still comports with the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. . . . We are also mindful of recent admonishments by the Federal Circuit that the first step of our analysis should not be pro forma when the claims are directed to improvements in software. See Enfish, LLC v. Microsoft Corp., No. 2015-1244 , 2016 WL 2756255, at *4 (Fed. Cir. May 12, 2016) . . . We are not persuaded, however, that the instant claims are directed to a specific improvement to the way computers operate."

Petition for Covered Business Method Patent Review by Informatica Corporation, CBM2015-00021 (PTAB May 31, 2016, Order) (Turner, APJ)

Computer Memory Hierarchy Patent Invalid Under 35 U.S.C. § 101 Despite Enfish

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s computer memory hierarchy patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[T]he claims are directed to the abstract idea of categorical data storage. Humans have categorized data for many years. . . . This is an 'undisputably well-known' practice that 'humans have always performed.' . . . Courts have routinely found that similar claims are directed to abstract ideas. . . . Plaintiff relies on the Federal Circuit's recent decision in [Enfish, LLC v. Microsoft Corp., (Fed. Cir. May 12, 2016)] for the proposition that claims which 'improve the functioning of a computer itself' are patent eligible. . . . [H]owever, the question of whether a given claim 'improve[s] the way a computer [works]' is not, by itself, determinative. . . . [Enfish] described the central question as 'whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool.' . . . Enfish is thus best understood as a case which cautions against oversimplification during step one of Mayo/Alice, rather than a case which exempts from § 101 scrutiny all patents which purport to improve the functioning of a computer. . . . Here, there is no analog to the 'specific type of data structure' that was found sufficiently un-abstract in Enfish. Although the claims 'touch[] on what is asserted to be an improvement to . . . computer capabilities,' they are not 'directed to a 'specific' or 'concrete' improvement in the way software operates,' but instead are 'directed to . . . the mere idea of' categorical data storage."

Visual Memory LLC v. NVIDIA Corporation, 1-15-cv-00789 (DED May 27, 2016, Order) (Andrews, J.)

Portable Data Storage Device Patent Unpatentable Under 35 U.S.C. § 101

In a final written decision, the Board found claims of a patent directed to a portable data storage device unpatentable under 35 U.S.C. § 101. "Petitioner argues that claims 13 and 14 are directed to the abstract idea of 'licensing/regulating access to copyrighted content.' Although [patent owner] does not concede, in its brief, that claims 13 and 14 are directed to an abstract idea, it does not persuasively explain how the challenged claims escape being classified as abstract. We are persuaded that claims 13 and 14 are drawn to an abstract idea. Specifically, claims 13 and 14 are directed to performing the fundamental economic practice of conditioning and controlling access to content based on payment. . . . Although the specification refers to data piracy on the Internet, claims 13 and 14 are not limited to the Internet. . . .The underlying concept of claims 13 and 14, particularly when viewed in light of the ’720 patent specification, is conditioning and controlling access to content based upon payment. This is a fundamental economic practice long in existence in commerce. We are, thus, persuaded, based on the ’720 patent specification and the claim language, that each of claims 13 and 14 is directed to an abstract idea."

Petition for Covered Business Method Patent Review by Samsung Electronics America, Inc., CBM2014-00190 (PTAB May 26, 2016, Order) (Elluru, APJ)