Because of insufficiencies in a plaintiff’s infringement contentions, a plaintiff was precluded from asserting the doctrine of equivalents (DOE) concerning any claim, and was also precluded from asserting any infringement with respect to one means-plus-function claim. Dynetix Design Solutions v. Synopsys, Inc., No. C 11-5973 PSG (N.D. Cal. Aug. 22, 2013). Regarding the doctrine of equivalents, the plaintiff’s infringement contentions stated merely that the defendant “‘practices this element literally or equivalently’ before going on to explain a single way in which [the defendant] infringes.’” There was no “specific analysis” as to how the doctrine of equivalents applied. At a minimum, although no “magic words” were required, a plaintiff was required explain how the “function, way, result” requirements of the Doctrine of Equivalents were met. By failing to provide “adequate notice of these theories during fact discovery, [the plaintiff] severely prejudiced [the defendant’s] ability to refute any DOE theories.” The court also ordered that certain of the plaintiff’s infringement theories be struck because they were not in the plaintiff’s infringement contentions, but surfaced only in a later expert report. The infringement contentions explicitly accused certain instrumentalities, but made no mention of the systems only mentioned in the expert report. These new… Read More »Inadequate Infringement Contentions Are Struck
The Federal Circuit has reversed District Judge Koh’s order that certain confidential documents of both Apple and Samsung be unsealed in those parties’ high-profile patent litigation. Apple, Inc. v. Samsung Electronics Co., Ltd., Nos. 1012-1600, 1606, 2013-1146 (Fed. Cir. Aug. 23, 2013). Because filing papers under seal is such a routine part of patent (and other) litigation, this decision would undoubtedly attract attention even if it had not come in such a notorious case. Because this was an incredibly high profile case, the district court “agreed to seal only a small number of trial exhibits.” After ordering certain documents unsealed, the court ordered the parties to immediately appeal, which they did, although only with respect “to a small subset of exhibits.” As the Federal Circuit, in the opinion by Judge Prost, noted, this case was unusual in that the litigants did not oppose each other’s appeals, although several journalist organizations did. In general, each of the parties sought to protect confidential business and technical information. Documents that the district court ordered unsealed included “the parties’ product specific profits, profit margins, unit sales, revenues, and costs, as well as Apple’s own proprietary market research reports and customer surveys and the non-price… Read More »Federal Circuit Reverses Decision to Unseal Documents in Apple-Samsung Litigation
Following Judge Lourie’s plurality opinion in the recent CLS Bank case heard en banc by the Federal Circuit, the court in Planet Bingo v. VKGS, No. 1:12-CV-219 (W.D. Mich. Aug. 19, 2013), held that claims directed to a computerized bingo game were not patent eligible under 35 U.S.C. § 101. Specifically, the claims of U.S. Patent Nos. 6,398,646 and and 6,656,045 were directed to “managing a Bingo game while allowing a repeat player to play the same sets of numbers in multiple games of Bingo” and “storing preselected Bingo numbers, which allows players to play the same sets of Bingo numbers in multiple sessions.” The court held that these claims were directed to an abstract concept and granted the defendant’s motion for summary judgment of invalidity. The court had previously denied a motion for summary judgment of Section 101 invalidity, saying that the defendant had a strong argument, but that performing claim construction before deciding the patent-eligibility issue would be helpful. The court then performed claim construction, and also invalidated certain claims of the patents-in-suit as indefinite under 35 U.S.C. §112(b). The defendant renewed its motion based on Section 101, which the court this time granted. The court began its analysis by… Read More »Computerized Bingo Claims Held Not Patent-Eligible
The court sua sponte held business method patent claims patent-eligible under 35 U.S.C. § 101 in Applied Innovation v. Commercial Recovery Corp., No. CV-11-00330-JPH (E.D. Wash. Aug. 14., 2013). The claims of US Patent No. 7,167,839 were directed to “[a] method for allowing selective access by a client of a collection agency to information from debt collection by the collection agency.” (Claim 1 of the ’839 patent is reproduced below.) The court thought that these claims were not abstract, and were patentable under Section 101. The plaintiff had brought a motion for summary judgment that the claims of the ’839 patent were invalid as anticipated and obvious, but did not argue for invalidity based on unpatentable subject matter. The court nonetheless stated its intent “to grant summary judgment sua sponte on this issue because Plaintiffs failed to timely raise it and, even had they done so, the method in dispute is not abstract.” Accordingly, under Federal Rule of Civil Procedure 56(c), plaintiffs were given 10 days notice of the court’s intent to enter summary judgment on the issue of whether the ’839 patent recited patent-eligible subject matter. In support of its conclusion that the claims of the ’839 patent were… Read More »Business Methods Claims Sua Sponte Held Patent-Eligible
Litigation misconduct, even without a showing of objective baselessness or bad faith, was enough to justify a finding of an exceptional case, and an award of attorneys’ fees under 35 U.S.C. § 285. Monolithic Power Systems, Inc. v. O2 Micro International, Ltd., No. 2012-1221 (Fed. Cir. Aug. 13, 2013). The parties in this litigation had been involved in various lawsuits concerning O2 Micro’s assertion of its patents for roughly a decade. The district court found, and the Federal Circuit agreed, that O2 Micro had demonstrated a pattern of forcing its adversaries to spend considerable time and money defending infringement claims, and then agreeing to covenants not to sue and dismissals of the claims. The district court and the Federal Circuit were also both offended by O2 Micro’s attempts to circumvent invalidating prior art by presenting what turned out to be false evidence concerning an invention’s conception date. Moreover, after a date stamp on a schematic drawing supposedly showing conception was shown to have been manually created, O2 Micro compounded its error by supplementing interrogatory responses moving to strike an expert’s report, and moving for summary adjudication to establish the conception date, rather than simply addressing the false evidence. The present… Read More »Litigation Misconduct Gives Rise to Exceptional Patent Case
In case you doubted it, seemingly boilerplate provisions in software license agreements that prohibit the creation of derivative works do mean something, as exemplified in EyePartner, Inc. v. Kor Media Group LLC, No. 4:13-10072 (S.D. Fla. July 15, 2013). The court in this case granted a preliminary injunction based on such an anti-modification provision, as well as on the anti-circumvention provisions of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1201, and Florida trade secret law. The court’s analysis followed the standard four-prong preliminary injunction analysis, which under eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) “applies equally to intellectual property cases,” and under which the court must find: (1) the plaintiff’s substantial likelihood of success on the merits, (2) irreparable harm to the plaintiff, (3) that the balance of hardships favors the movant, and (4) that an injunction would not hurt the public interest. Here, the court devoted most of its attention to the first prong, finding that the plaintiff was likely to prevail on its copyright and trade secret claims. The plaintiff had licensed its software to the defendants. The applicable license agreement may have “given Defendants the right to copy the encrypted source code,” but… Read More »Software Licensee’s Creation of Derivative Work Results in an Injunction
The question of whether claims from 23 different patents were “essential” to the IEEE 802.11 standard (popularly known as Wi-Fi) was presented to the court in In re Innovatio Ip Ventures, MDL Docket No. 2303, Case No. 11 C 9308 (N.D. Ill. July 26, 2013). In evaluating these claims, the court addressed a number of different issues related to determining when patent claims are standard-essential. Background The court had conducted a bench trial, to which the parties stipulated, concerning what patent claims were standard-essential. This proceeding came when, “[f]ollowing discovery, but before claim construction, the parties and the court agreed that the best course toward resolving the parties’ dispute would be to pause and evaluate the potential damages available to Innovatio if the Defendants are found to infringe Innovatio’s patents.” Innovatio, the Plaintiff, had acquired the patents from parties who had agreed to provide reasonable and non-discriminatory (RAND) license terms for patents essential to the 802.11 standard. Accordingly, the Plaintiff’s possible damages turned on whether it was obligated to offer the Defendants RAND license terms as required by the IEEE bylaws. The parties agreed that the current version of the IEEE bylaws would apply, even though past versions were in… Read More »When Are Patent Claims Standard-Essential?
July 31, 2013, was a big day for 35 U.S.C. § 101; the statute was used in two different cases as a basis for finding that patent claims failed to recite patent-eligible subject matter, and were thus invalid. The patent claims in Digitech Image Techs., LLC v. Fujifilm Corp., No. 8:12-cv-1679-ODW(MRW) (C.D. Cal. July 31, 2013), were directed to image device profiles describing “the color and spatial properties of a device.” The claims in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nos. 12-2501, 12-6960 (MAS)(TJB) (D. N.J. July 31, 2013), were directed to digitizing hard copy documents, sending the digitized image to an application, and then receiving user input concerning portions of the hard copy document used in the application or for storage. Digitech Image The Digitech court granted the defendants’ motion for summary judgment of invalidity concerning the claims of U.S. Patent No. 6,128,415. The court began with a discussion of Section 101 jurisprudence, including Bilski v. Kappos, 130 S. Ct. 3218 (2010), and CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. May 10, 2013). Then, after a brief review of the law of claim construction, the court found “no reason to construe the… Read More »Two More Courts Hold Patent Claims Invalid for Lack of Patent-Eligible Subject Matter