Predictive Keyboard Patent Not Invalid Under 35 U.S.C. § 101 at Pleading Stage

The court denied defendant's motion to dismiss on the ground that plaintiff’s predictive keyboard application patent encompassed unpatentable subject matter because defendant failed to establish that the asserted claim was directed toward an abstract idea. "[Defendant] argues that claim 19 is directed to the abstract idea of listing word completion candidates based on partial information, analogizing the claim to the games Hangman and Wheel of Fortune. . . . [C]laim 19 does not automate a mental process previously practiced by humans. The court sees no reasonable scenario in which a mobile device user would type the first letter of a word she wishes to enter, then consult a list of possible completion candidates, then return to entering the text, for she would already know what her intended text was. . . . If less time is required to enter text, then less time is required to operate the device. Plaintiffs argue, therefore, that claim 19 improves the operation of the device. [Defendant] offers no compelling rebuttal. Accordingly, at this early stage of the proceedings, [defendant] has not met its burden to show that claim 19 is directed to an abstract idea."

WordLogic Corporation et al v. Fleksy, Inc., 1-16-cv-11714 (ILND November 7, 2017, Order) (Lefkow, USDJ)

Five Work-at-Home Employees Do Not Create Regular and Established Place of Business for Venue

The court granted defendant's motion to dismiss plaintiff's patent infringement action for improper venue because defendant did not have a regular and established place of business in the forum based on its five work-at-home employees in the district. "While these employees' homes are certainly physical places in this District and are in some sense connected to Defendant's business, none of them are a place 'of the defendant.'. . . Defendant does not own or lease these five employees' homes or contribute to their rent or mortgage payments. Nor does it require them to reside at particular locations or even to reside in this District. Defendant also does not publicly advertise or list the employees' homes as a place where it conducts business. . . . Listing an employee's home address on a workers' compensation policy does not show 'possession or control' by the employer over the employee's home, nor does it hold out the employee's home to the public as the employer's place of business."

BillingNetwork Patent, Inc. v. Modernizing Medicine, Inc., 1-17-cv-05636 (ILND November 6, 2017, Order) (Castillo, USDJ)

Patent for Controlling Application's Access to Mobile Device Native Software and Hardware Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion for summary judgment on the ground that plaintiff's patent for controlling a mobile device application’s access to native software and hardware encompassed unpatentable subject matter because the asserted claims did not lack an inventive concept. "[T]he [patent-in-suit] describes a system for controlling an application's access to native software and hardware on a mobile device. . . . [T]he claims recite a technological improvement to a problem arising in mobile platform technology, namely the problem of limited memory and resources on mobile phones. The invention is a particularized solution to that problem. . . . The fact that the PTAB concluded that [defendant] failed to establish that a person of ordinary skill in the art would be motivated to combine computer-based security software with the relevant mobile platform technology -- because of the limited memory and resources of a mobile phone -- suggests that the systems claimed by the [patent] are not merely conventional applications of computer technology."

Ericsson Inc. et al v. TCL Communication Technology Holdings Limited et al, 2-15-cv-00011 (TXED November 4, 2017, Order) (Payne, MJ)

In Expanding Market, Long-Term and Second-Order Effects of Lost Sales Create Irreparable Harm Justifying Preliminary Injunction

The court granted plaintiff's motion for a preliminary injunction to prohibit defendant from selling the accused removable wafer carrier products and found that plaintiff established irreparable harm. "Although [plaintiff] may be able to prove with requisite certainty its losses due to lost sales, lost customers, or price erosion in the past or near-term future, the long-term and second-order effects . . . are not likely to be quantifiable with a requisite degree of certainty. . . . [Plaintiff's] loss of customer feedback will hamper its ability to continue innovating its MOCVD designs to remain competitive in the MOCVD market . . . . [Plaintiff's] loss of revenue in the near term, combined with asset impairments and other potential losses of goodwill and market share, will impair [plaintiff's] ability to invest in research and development . . . . Due to the incumbency effects of the MOCVD market, [plaintiff's] lost sales in the near term will hamper its ability to obtain further sales from the same customer going forward, yet those future sales will be extremely difficult to determine with the certainty required to obtain money damages. In addition, the medium- and long-term effects of [plaintiff's] lost market share and other competitive harms will be especially difficult to quantify at trial because the MOCVD reactor market is entering an expansionary period, making historical market data less predictive of future results."

Veeco Instruments Inc. v. SGL Carbon, LLC et al, 1-17-cv-02217 (NYED November 2, 2017, Order) (Chen, USDJ)

Expert's Analysis that Patented Features are Desirable, Important, and Essential Does Not Satisfy Entire Market Value Rule

The court granted defendant's motion to exclude the testimony of plaintiff's damages expert regarding a reasonable royalty for failing to apportion damages to the accused features. "The arguments made by [plaintiff], that the patented features are desirable and important or even essential, are not sufficient to prove that those features alone drive the market for the HEOS products. The flaw in [the expert's] reasoning is underscored by the fact . . . that at least half of all HEOS owners own only one HEOS product. That is to say, at least half of all HEOS owners cannot use the synchronization, group volume control, or pairing features described in [plaintiff's] patents, at least not without purchasing another HEOS unit. Therefore, it can be assumed that those features are not the driving factor in those customers’ purchasing decisions. . . . Because [the expert] neither considered the value of the allegedly infringing features in relation to the product as a whole, nor showed that those features alone drive consumer demand, his opinion as to the amount of a reasonable royalty for the HEOS products is methodologically unsound."

Sonos, Inc. v. D&M Holdings Inc. d/b/a The D+M Group et al, 1-14-cv-01330 (DED November 1, 2017, Order) (Bryson, CJ)

Copying, False Statements, and Multiple Years of Infringement Warrant Award of Enhanced Damages

The court granted plaintiff's motion for enhanced damages because defendant's copying, lack of a good faith belief in its defenses, litigation conduct, duration of misconduct, motivation for harm weighed in favor of a 1.5 time enhancement of the jury verdict. "It appears from the record that [defendant] examined [plaintiff's] patent and step and tried to design something as close as possible. . . . The Court agrees that [defendant] willfully infringed. . . . [T]he false statement in the original Answer was wrongful behavior because it concerned a key fact: whether [defendant] knew about the patent while designing its step. . . . The fact that counsel remedied [defendant's] bad behavior does not alter the reality that false statements in the Answer are not proper litigation behavior. . . . Wherever courts should draw the line on duration, a party with multiple years of expanded use of an infringing product undoubtedly crosses the line on acceptable duration of infringement."

Cobalt Boats, LLC v. Sea Ray Boats, Inc. et al, 2-15-cv-00021 (VAED October 31, 2017, Order) (Morgan, SJ)

3 to 1 Preparation to Deposition Time Appropriate for Awarding Expert Witness Fees

The court granted in part defendants' motion for expert fees for its four expert witnesses. "In this District, courts look to the preparation time in relation to the deposition time to determine whether the preparation time was reasonable. 'These courts have reasonably concluded that a ratio of 3 to 1 preparation to deposition time is reasonable in complex cases[.]'. . . Plaintiff disputes the expert witness fees, arguing that one witness was not called at trial and that the testimony of the other three witnesses was irrelevant or otherwise questionable. It is not appropriate for [plaintiff] to undermine these expert witnesses in a bill of costs motion. Plaintiff had occasion to do so during pre-trial and trial. As for the witness who ultimately was not called, both sides retained experts in a good-faith preparation for trial."

The Medicines Company v. Mylan Inc., et al, 1-11-cv-01285 (ILND October 30, 2017, Order) (St. Eve, USDJ)