December 2012

Medical Malpractice Insurance Patent Claims Invalid on Motion to Dismiss

Patent claims drawn to compiling medical credentialing information, and transferring the information to a medical malpractice insurance application, have been held invalid under 35 U.S.C. § 101 on the Defendants’ Rule 12(b)(6) Motion to Dismiss.  Sinclair Allison v. Fifth Ave. Physician Servs., No. CIV-12-360-M (W.D. Okla. Dec. 19, 2012). The claims of U.S. Patent Number 6,862,571 and U.S. Patent Number 7,469,214 were drawn to “compiling healthcare professional credentialing information and transferring said information to an application for medical malpractice insurance,” and “ensuring current information for liability insurance underwriting, wherein associated credentialing information may be updated and analyzed to determine if a policy should be underwritten or renewed.”  The Defendants brought a Rule 12(b)(6) motion to dismiss for failure to state a claim on which relief could be granted, arguing that the patents sought to protect a business method that was “an unpatentable abstract idea.” The Court noted that “[w]hether asserted patent claims are invalid for failure to claim statutory subject matter under  § 101 is a question of law.”  Further, claim construction was neither required, nor in this case necessary, prior to determining whether the patent claims recited patentable subject matter under Section 101.  Thus, the Court here applied the analysis mandated by Bilski  v. Kappos,… Read More »Medical Malpractice Insurance Patent Claims Invalid on Motion to Dismiss

Broad Grant of Patent Rights Includes Reissues

The Federal Circuit has upheld Intel’s licensing defense where asserted reissue patents issued after the relevant license agreement was terminated.  Intel Corp v. Negotiated Data Solutions, No. 2011-1448 (Fed. Cir. Dec. 17, 2012). Intel and National Semiconductor entered into a broad patent cross-licensing agreement in 1976.  Under that agreement, National licensed to Intel patents including the following: all classes or types of patents and utility models of all countries of the world, applications for which have a first effective filing date in any country prior to the date of expiration or termination of this Agreement, in respect of which, as of the EFFECTIVE DATE, or thereafter during the term of this Agreement, NATIONAL owns or controls . . . [or has] the right to grant licenses of the scope granted herein . . . . National subsequently assigned certain patents to a third party.  After filing the reissue applications at issue here, the third party in turn assigned the patents, and rights in the reissue applications, to N-Data.  The reissue applications then issued in 2005 and 2006, well after the cross-licensing agreement had expired. Intel intervened after N-Data sued Intel’s customers.  Among other things, Intel sought a declaratory judgment that it… Read More »Broad Grant of Patent Rights Includes Reissues

Patent Complaint Satisfying Form 18 (Reluctantly) Allowed

Although denying a motion to dismiss a complaint of direct patent infringement, a Massachusetts District Court has pointedly stated that “[i]t is difficult to reconcile the simplistic approach for asserting a patent infringement claim contemplated by Rule 84 and Form 18 [of the Federal Rules of Civil Procedure] with the pleading standards announced in [Ashcroft v. Iqbal, 556 U.S. 662, (2009)] and [Bell Atlantic Corp v. Twombly, 550 U.S. 544 (2007)].” Select Retrieval, LLC v. Bulbs.Com Inc., No. 12-10389-TSH (D. Mass. Dec. 4, 2012). However, the Court did grant, albeit with leave to amend, the defendant’s motion to dismiss claims of indirect and willful infringement. While this case is cumulative of other patent infringement notice pleading cases discussed in this blog, it is worth noting for the Court’s clear, and, I think, widely shared, frustration with the patent infringement pleading standard presently mandated by the Federal Circuit. The Court summarized the plaintiff’s Complaint as alleging that the defendant is the assignee and owner of the United States Patent No. 6,128,617 (“’617 Patent”) entitled “DATA DISPLAY SOFTWARE WITH ACTIONS AND LINKS INTEGRATED WITH INFORMATION.” Without license or authorization, Bulbs.com has directly and indirectly infringed and continues to directly and indirectly infringe one or… Read More »Patent Complaint Satisfying Form 18 (Reluctantly) Allowed

Federal Circuit Reverses Failure to Impose Rule 11 Sanctions

The Federal Circuit has reversed a decision from the Eastern District of Texas not to impose Rule 11 sanctions where the plaintiff’s theory of patent infringement was objectively baseless.  Raylon, LLC v. Complus Data Innovations, Inc., Nos. 2011-1355, -1356, -1357, -1358, -1359 (Fed. Cir. Dec. 7, 2012). Raylon, the plaintiff, alleged that three defendants infringed U.S. Patent No. 6,655,589, directed to a hand-held “[i]dentification investigating and ticket issuing system.”  The patent’s independent claims recited that the device included, among other elements, a housing and a display, “said display being pivotally mounted on said housing.”  The accused devices did not include displays that pivoted on a housing.  Nonetheless, Raylon pressed a theory of infringement according to which, as Judge Prost described it, “a display with a fixed-mounted screen meets the ‘pivotally mounted on said housing’ limitation when the user pivots the device by moving his elbow, wrist, or other joint.” Under Fifth Circuit law, which applied here, decisions on Rule 11 motions are reviewed for an abuse of discretion.  Further, “the standard under which an attorney is measured is an objective, not subjective standard of reasonableness under the circumstances.”  (Citation omitted.)  Here, the District Court had abused its discretion because Raylon’s conduct was objectively unreasonable.… Read More »Federal Circuit Reverses Failure to Impose Rule 11 Sanctions

Patent Exhaustion Based on Foreign Sales

Sales outside the United States exhausted a patent owner’s rights in its U.S. patent, according to Multimedia Patent Trust v. Apple, Inc., No. 10-CV-2618-H (KSC), 2012 U.S. Dist. LEXIS 167479 (S.D. Cal. Nov. 9, 2012). Therefore, among rulings on summary judgment motions addressing a myriad of issues, the Court granted summary judgment to Canon on its affirmative defense of patent exhaustion based on Canon’s purchase of accused products from Fujitsu outside the United States. Fujitsu held an unconditional worldwide license to the patent in question, having received this license from AT&T, the patent’s former owner. MPT, the plaintiff, had alleged that Canon and other defendants variously infringed four patents related to video compression technology, including U.S. 5,136,377. Canon was accused of infringing only the ’377 patent, based on encoding and decoding functions of Fujitsu chips in Canon products. Fujitsu had licensed the ’377 patent from AT&T, its prior owner. Licensed patents, of which the ’377 patent was one, included those “issued at any time in any or all countries of the world.” The Fujitsu chips at issue were indisputably covered products under the patent license agreement. Contrary to MPT’s arguments, there were no genuine issues of material fact concerning whether the… Read More »Patent Exhaustion Based on Foreign Sales