“Unsettled and Rapidly Evolving” Patent Eligibility Landscape Weighs Against Award of Attorney Fees

Following summary judgment of invalidity for lack of patentable subject matter the court denied plaintiff's motion for attorney fees under 35 U.S.C. § 285 because defendant's litigation positions were not baseless. "[T]he patent issued after the Supreme Court’s decision in Alice. The patent is presumed valid, 'and this presumption exists at every stage of the litigation.' Defendant also notes that it did not initiate the litigation. In Defendant’s view, it merely defended 'a presumptively valid patent and preserve[d] its counterclaims in an action it did not initiate in a forum it did not choose.' In addition, Defendant correctly points out that post-Alice, the landscape of patent ineligibility under 35 U.S.C. § 101 is unsettled and rapidly evolving. Defendant argues that while it was aware Alice 'would create difficultly[,]' it defended the patent in good faith. On this record, the Court declines to find that the substantive weakness of Defendant’s position was so objectively apparent as to render the case exceptional."

Clarilogic, Inc. v. FormFree Holdings Corporation et al, 3-15-cv-00041 (CASD April 27, 2016, Order) (Sabraw, J.)

Patents for Digitally Labeling Websites Invalid Under 35 U.S.C. § 101

The court granted defendant's motion for summary judgment that the asserted claims of plaintiff’s patents for digitally labeling websites were invalid for lack of patentable subject matter and found that the claims were directed toward an abstract idea. "[T]he asserted claims are directed to the abstract idea of gathering and labeling information to facilitate efficient retrieval of the labeled information. . . . As the Court recently found in . . . a case in which the asserted patent was similarly directed to the abstract idea of storing and labeling information, 'the claimed idea represents routine tasks that could be performed by a human.'”

Gonzalez v. InfoStream Group, Inc., 2-14-cv-00906 (TXED April 26, 2016, Order) (Gilstrap, J.)

MPEG Decoder Patent Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s MPEG decoder patent encompassed unpatentable subject matter because the asserted claims were not directed to an abstract idea. "[T]he [Alice] step one inquiry may be a complicated matter if only because it is not clear what abstract means in the first place. The step one inquiry is further complicated by the fact that it is not always easy to say what a patent claim is 'directed to.' . . . Unfortunately, the fundamental concept or purpose of a claim can be expressed at varying levels of generality or specificity, which could then impact whether it is directed to an abstract idea (i.e., the more general the purpose, the more likely to be abstract). . . . [T]he purpose of the claims at issue is to decompress digital video using a single memory. That is the gist of the invention at issue. Given this purpose, the Court is satisfied that there is no genuine risk of preempting future research and development – i.e., [plaintiff] is not simply claiming an abstract idea in the attempt to lay claim to a building block of future research and development; the invention has specific configuration, not a broad abstract idea. . . . Because [defendant] has failed to establish that the claims at issue are directed to a patent-ineligible concept, i.e., an abstract idea, the Court need not address step two of Alice which embodies the inventive concept test."

Avago Technologies General IP (Singapore) Pte. Ltd. v. ASUSTeK Computer, Inc. et al, 3-15-cv-04525 (CAND April 25, 2016, Order) (Chen, J.)

PTAB Grants Motion to Amend Vehicle Wheel Hanger Patent

The Board granted the patent owner's contingent motion to amend, granting entry of proposed claims 6-10 for original claims 1-5 which had been found unpatentable, because the proposed amended claims were patentable over the prior art of record. "[N]one of the tire/wheel hangers of either [U.S. patent '144], [U.S. patent '690], [U.S. patent '228], or [a European patent application publication] recognize the desire to reduce bending over while handling a heavy object, as required by the claimed method. Instead, they pertain, generally, to hanging a wheel somewhere on a wall or rail, but are silent as to where that somewhere might be, let alone a location conducive to avoiding back injury from lifting the wheel. This is not a matter of simply slapping a known wheel hanger on an automotive lift; rather, it is a matter of taking a known structure and utilizing it in a specific manner on a specific structure for a specific purpose.Thus, we are not persuaded that it would have been obvious to a skilled artisan to affix any one of the known wheel hangers of [the four references] to an automotive lift in the specific manner and for the specific purpose, as required by substitute claim 6."

Petition for Inter Partes Review by Shinn Fu Company of America, Inc., IPR2015-00208 (PTAB April 22, 2016, Order) (DeFranco, APJ)

Plaintiff’s Assertion of Baseless Direct Infringement Claim Warrants Attorney Fees Award

The court granted defendant's motion for attorney fees under 35 U.S.C. § 285 following plaintiff's post-Markman voluntary dismissal because plaintiff's direct infringement claim was baseless. "Notably, in the Complaint, plaintiff alleged that the [patent-in-suit] was 'directed to a portable computer having an integral case.' At the same time, plaintiff alleged that defendant had infringed his patent by selling or manufacturing only portable computer cases. In other words, although plaintiff’s patent was directed toward a computer and an integral case, defendant only manufactured cases. . . . In light of plaintiff’s own construction of the [patent] from the outset of this case, and the known fact that defendant did not manufacture or sell a product that was covered by that construction, the Court is at a loss to explain why plaintiff chose to initiate and then continue litigating his direct patent infringement claim. . . . [T]o the extent plaintiff’s knowledge of defendant’s manufacturing or sale habits was shaky, those habits were made abundantly clear in defendant’s Counterclaim — filed less than four months after the initiation of this case, and nearly a year before plaintiff moved to dismiss the direct patent infringement claim."

Bovino v. Levenger Company, 1-14-cv-00122 (COD April 21, 2016, Order) (Moore, J.)

Exchange of Editorial Comments Among Experts Requires Production of Draft Expert Reports

The court granted defendant's motion to compel draft reports exchanged between plaintiff's experts. "It is clear from [one expert's] testimony that he and [another expert] both reviewed the comments of the other during the course of forming and completing their final expert reports. While the Pretrial Scheduling Order does provide that drafts of expert reports shall not generally be discoverable, the Federal Rules of Civil Procedure also provide that a party is entitled to all the facts and data considered by another party’s expert in forming that expert opinion. At issue here is not an unadulterated expert report draft copy. At issue here are three expert report drafts with editorial comments prepared by a different expert, which each issuing expert reviewed and considered before finalizing their respective expert report. As such, [defendant] is entitled to the comments on the drafts and the portions of the drafts (for context) to which those comments relate."

Bombardier Recreational Products, Inc. et al v. Arctic Cat, Inc. et al, 0-12-cv-02706 (MND April 19, 2016, Order) (Brisbois, M.J.)

Database Security Patent Unpatentable Under 35 U.S.C. § 101

In a final written decision, the Board found claims of a database security patent 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. We are not persuaded by Patent Owner that the claims are not directed to an abstract idea, because Patent Owner’s argument is based upon elements not required by the claims. Given our construction of 'data portion' and 'database' . . . the claims do not require protection on the data element level based on rules stored in a separate database, where the first database calls out to the second database. Patent Owner’s argument is not commensurate with the scope of the claims."

Petition for Covered Business Method Patent Review by Epicor Software Corporation, CBM2015-00006 (PTAB April 18, 2016, Order) (Petravick, APJ)