Posted on

NantWorks, LLC v. Niantic, Inc.: Reconciling Transactions Between Players of an Online Video Game is not Patent-Eligible

In Nantworks v Niantic., the Northern District of California held that peer-to-peer online transaction reconciliation that uses a physical location of one of the participants is an abstract idea that is not patent-eligible subject matter under 35 U.S.C. § 101. No. 20-cv-06262 (N.D. Cal. Jan. 4, 2021). Plaintiff NantWorks asserted U.S. Patent No. 10,614,477 against Niantic. The ‘477 patent is directed to reconciling transactions between two players of a computer-based video game based on the first player’s physical location. Niantic’s Pokemon Go and Harry Potter: Wizards Unite augmented reality mobile games allow for player-to-player exchange of in-game currency and items, and NantWorks alleged that this exchange feature infringed claim 20 of the ‘477 patent: A reconciliation system, comprising: at least one processor communicatively coupled with at least one memory storing instructions that, when executed by the at least one processor, cause the at least one processor to: determine, within a…

Read more

Posted on

Conclusory Legal Statements are not Factual Allegations to Survive Section 101 Eligibility: Dropbox Inc. v. Synchronoss Techs, Inc.

Conclusory legal statements that attempt to invoke a factual allegation do not sufficiently allege an inventive concept to satisfy patent eligibility under 35 U.S.C. § 101. Dropbox Inc., Orcinus Holdings, LLC v. Synchronoss Techs. Inc, 2019-1765, 2019-1767, 2019-1823 (Fed. Cir. June 19, 2020) (nonprecedential). Plaintiff Dropbox asserted infringement of U.S. Patent Nos. 6,178,505, 6,058,399, and 7,567,541 against Defendant Synchronoss. The patents are directed to data security and data uploading to websites and networks. The district court granted Defendant’s motion to dismiss under Rule 12(b)(6), holding that all three patents as ineligible under 35 U.S.C. § 101. In particular, the district court held that Plaintiff failed to allege an inventive concept to satisfy the second part of the two-part Alice test. The details of the specific patents would warrant their own posts, so we will focus on the Court’s discussion of Plaintiff’s factual allegations of an inventive concept. Some courts have…

Read more

Posted on

Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim

The Northern District of California dismissed a complaint of patent infringement for failing to adequately plead direct or joint infringement. Sentius Int’l LLC v. Apple Inc., No. 4:20-cv-00477 (N.D. Cal. June 2, 2020). The Court held that merely selling software did not constitute direct infringement and that Sentius did not adequately allege the requisite direction or control required for joint infringement. Plaintiff Sentius alleged infringement of U.S. Patent Nos. RE43633 and 7,672,985 by Defendant Apple. Defendant filed a motion to dismiss under Rule 12(b)(6), alleging that Plaintiff failed to sufficiently plead direct and joint infringement of the asserted patents. Claim 62 of the ‘633 patent is too long to recite in full, but the relevant part to consider is “a computer-implemented method for linking textual source material to external reference materials for display….” Of note is that a “computer-implemented method” has specific requirements for direct and joint infringement, as the…

Read more

Posted on

Attorney-Client Privilege Granted to Canadian In-House Counsel on U.S. Law

The District of Kansas held that documents produced by a Canadian attorney working as in-house counsel on U.S. patent infringement matters qualify for attorney-client privilege in a U.S. patent infringement case. Sudenga Indus., Inc. v. Global Industries, Inc., No. 18-2498-DDC (D. Kan. May 15, 2020). Plaintiff Sudenga Industries sent a cease and desist letter alleging patent infringement to Defendant Global Industries. Defendant is based in Canada, and their General Counsel is licensed in Canada, but not in any U.S. state. Plaintiff filed a motion to compel documents from Defendant drafted by the Canadian General Counsel regarding the cease and desist letter. Plaintiff argued that the Canadian attorney did not have attorney-client privilege for this U.S. matter. Defendant argued that privilege attached because Canadian privilege would attach in this situation if it involved a Canadian patent and no U.S. case has held that communications from Canadian counsel on U.S. patent matters…

Read more

Posted on

On Remand, Software Patents Held Invalid for Lacking Sufficient Factual Allegations

While software patents have recently survived Rule 12 motions to dismiss on the pleadings, a lack of an inventive concept doomed a set of software patents as ineligible under 35 U.S.C. § 101. MyMail Ltd. v. ooVoo, LLC, 17-cv-04487 (N.D. Cal. May 7, 2020). Plaintiff MyMail sued Defendants ooVoo and IAC for infringement of U.S. Patent Nos. 8,275,863 and 9,021,070. After remand by the Federal Circuit vacating the Court’s judgment on the pleadings for lack of claim construction on the term “toolbar,” the parties briefed the claim construction and Defendants refiled motions to dismiss under Rule 12(c). As with Rule 12(b)(6), factual allegations in a complaint are considered true and construed in favor of the movant, and if no dispute of fact remains, the motion to dismiss is granted. The Court applied the two-part Alice/Mayo test, holding that the asserted claims were directed to the abstract idea of updating toolbar…

Read more