October 2013

Pleading Indirect and Willful Patent Infringement Requires Specific Allegations

Claims for induced, contributory, and willful patent infringement were dismissed (without prejudice) because the plaintiff failed to allege facts sufficient to support its claims.  Unisone Strategic IP, Inc. v. Life Techs. Corp., No. 3:13-cv-1278-GPC-JMA (S.D. Cal. Oct. 22, 2013).  The plaintiff had alleged infringement of U.S. Patent No. 6,996,538, directed to “[a] system and method which allows third-parties to monitor company inventory via the Internet . . . and automatically order needed items.” Induced infringement requires knowledge of a patent and specific intent to encourage infringement.  The court here adopted the “post-filing” rule, i.e., held that the defendant’s knowledge of the patent gained after filing of a suit was sufficient to meet the knowledge requirement for pleading inducement.  However, the plaintiff failed to allege “that the filing of the Complaint satisfied the knowledge requirement for induced infringement,” and therefore “fail[ed] to state a claim for induced infringement.” Further, the “Plaintiff also fail[ed] to sufficiently allege Defendant had the specific intent to induce others to infringe.” Allegation of specific intent to induce infringement must amount to more than allegations of intent to cause acts of infringement; the plaintiff must plead that the defendant specifically intended to cause direct infringement.  Here, the… Read More »Pleading Indirect and Willful Patent Infringement Requires Specific Allegations

When Can a Patent Plaintiff Amend Infringement Contentions?

Where a plaintiff demonstrated that it could not have known of certain alleged bases for infringement prior to inspecting a defendant’s source code, the court allowed the plaintiff to add certain claims to its infringement contentions.  United States Ethernet Innovations v. Acer, Inc., No. C 10-3724 CW (N.D. Cal. Oct. 11, 2013). Intel had intervened in this action on behalf of its defendant customers in January, 2010.  The plaintiff had asserted certain claims of United States Patent Nos. 5,307,459, 5,434,872, 5,732,094, and 5,299,313.  In September, 2013, the plaintiff “moved to amend its infringement contentions to drop a total of nineteen claims and add three claims” from the various asserted patents.  The plaintiff asserted that it had only recently received relevant technical documents, while Intel argued that the plaintiff could not show it had acted diligently because it “failed to investigate its own information.” The applicable local patent rule allowed a plaintiff to amend infringement contentions “upon a showing of good cause and by order of the Court.”  The party seeking to amend had the burden of establishing its diligence to make the required showing of good cause. The court looked at claims from each of the two patents from which… Read More »When Can a Patent Plaintiff Amend Infringement Contentions?

Attorney General Ordered Enjoined from Issuing Order to Cease and Desist Filing Patent Lawsuits

Holding that a patent owner had standing to contest a cease and desist order directed to its counsel, the U.S. District Court in Nebraska has entered a preliminary injunction prohibiting the Nebraska Attorney General from enforcing that cease and desist order. Activision TV, Inc. v. Pinnacle Bancorp, Inc., No. 8:13CV215 (D. Neb. Sept. 30, 2013). The court had “previously enjoined enforcement of the cease and desist order as to this case and future federal court cases.” The only question here, therefore, was whether the Nebraska Attorney General could order the plaintiff “to cease and desist initiation of all new patent infringement enforcement efforts in Nebraska.” The plaintiff, Activision, had sued Pinnacle Bancorp alleging patent infringement, after its counsel, Farney Daniels, sent letters to companies throughout the United States, including five in Nebraska, “asking for information to determine” if the companies were infringing Activision’s patents. Six days after the lawsuit was filed, the Nebraska Attorney General entered a cease and desist order prohibiting Farney Daniels “from initiating new patent infringement enforcement actions within the State of Nebraska.” Activision moved for a preliminary injunction, arguing that it’s First Amendment free-speech rights, and its Fifth and Fourteenth Amendment due process rights, were violated,… Read More »Attorney General Ordered Enjoined from Issuing Order to Cease and Desist Filing Patent Lawsuits

Patent Invalidity for Indefiniteness When a Claim Recites Two Statutory Classes

A patent claim directed to a “computer readable medium encoded with computer program for performing contextual searches on an Internet Phone (IP) phone” was held invalid under 35 U.S.C. § 112, ¶ 2, as indefinite because the claim recited user actions in the context of steps that otherwise functionally limited the claimed apparatus. H-W Tech., L.C. v. Overstock.com, Inc., No. 3:12-CV-636-G (N.D. Texas Aug. 30, 2013). The magistrate judge based her recommended holding of invalidity on her finding that the claim confusingly recited two statutory classes of invention, following IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), and In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011). Claim 17 of United States Patent No. 7,525,955 recites: A tangible computer readable medium encoded with computer program for performing contextual searches on an Internet Phone (IP) phone comprising the steps of: receiving a command to perform a contextual search; receiving a search criteria from a user of said IP phone; submitting said search criteria to a server couple to said IP phone; and receiving from said server a list of merchants matching said search criteria and information regarding each of said merchants in… Read More »Patent Invalidity for Indefiniteness When a Claim Recites Two Statutory Classes