Peter Keros

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 Cir. June 19, 2020) (nonprecedential).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 held that sufficient factual allegations of an inventive concept can present an unresolved question of fact to survive Rule 12(b)(6) and that this should be the norm to better develop the factual record. Other courts, like the district court here, are perfectly happy to hold claims ineligible under Section 101… Read More »Conclusory Legal Statements are not Factual Allegations to Survive Section 101 Eligibility: Dropbox Inc. v. Synchronoss Techs, Inc.

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 Court discussed in the decision. Direct infringement of a method claim, as elucidated in the several Akamai decisions, requires all steps of the claimed method to be performed by or attributable to a single entity. Sale of a product that performs the method, such as software, is not direct infringement… Read More »Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim

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 were not privileged. Privilege is a matter of common law, so the Court looked to Kansas law. In Kansas, an attorney includes “a person authorized…to practice law in any state or nation, the law of which recognizes a privilege against disclosure of confidential communications between client and attorney” (emphasis added)… Read More »Attorney-Client Privilege Granted to Canadian In-House Counsel on U.S. Law

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 software over a network without user intervention. The construction of “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger process or MOT script” did not change the fact that the claims were directed to transmitting data, analyzing data, and updating a toolbar. Notably, the… Read More »On Remand, Software Patents Held Invalid for Lacking Sufficient Factual Allegations

Strike Zone Patent Survives Dismissal: Sportvision, Inc. v. MLB Advanced Media, LP

Major League Baseball may be on hold, but the next inning of baseball patent litigation has just started. Sportvision, Inc. v. MLB Advanced Media, LP, No. 18 Civ. 3025 (S.D.N.Y. Apr. 23, 2020). Like several other courts recently, the Court denied a motion to dismiss a software patent on the pleadings as ineligible under 35 U.S.C. § 101. Plaintiffs Sportvision Inc. and SportsMEDIA Technology Corp. sued Defendant MLB Advanced Media, alleging several counts including contract breach and trade secret misappropriation. In particular, Plaintiffs alleged that Defendant infringed U.S. Patent No. 7,341,530, directed to a system for inserting a strike zone image in a live video feed of a baseball game. Claim 31 is representative and recites, in part: determining a location of a strike zone for a first batter by receiving an indication of one or more positions on said first batter in an image of said first batter and using said indicated positions to automatically calculate height and a three dimensional volume of said strike zone; determining a first position in a video, said first position corresponding to said location of said strike zone; and adding an image for said strike zone to said video at said first position,… Read More »Strike Zone Patent Survives Dismissal: Sportvision, Inc. v. MLB Advanced Media, LP

District Court Considers Challenges of Section 101 Eligibility on the Pleadings, Highlights Need for Factual Record: Slyce Acquisition, Inc. v. Syte-Visual Conception, Ltd.

Should eligibility under 35 U.S.C. § 101 ever be decided on the pleadings? The Western District of Texas says that such decisions should be rare because of the deep factual requirements for a proper § 101 analysis. Slyce Acquisition, Inc. v. Syte-Visual Conception, Ltd., W-19-cv-00257-ADA (W.D. Tex. Jan. 10, 2020). Plaintiff Slyce sued Defendants for infringement of U.S. Patent No. 9,152,624. The ‘624 patent is directed to uploading images and searching for recognized objects in the images without text labels. Defendant initially filed a motion to dismiss under 12(b)(6), alleging that claim 1 of the ‘624 patent is invalid under 35 U.S.C. § 101. The motion was denied, briefly noting that, in light of MyMail, Ltd. v. ooVoo, LLC, the Court would wait until claim construction to consider eligibility on § 101. No. 2018-1758 (Fed. Cir. 2019). Surprisingly, the Court “takes no position on whether there are any factual disputes that preclude dismissal at the pleadings stage.” At the very least, this is unusual because courts typically find a factual dispute in the pleadings as justification to deny motions to dismiss, but the Court did not explore the specific claim language at all. Defendants filed a motion for reconsideration, arguing… Read More »District Court Considers Challenges of Section 101 Eligibility on the Pleadings, Highlights Need for Factual Record: Slyce Acquisition, Inc. v. Syte-Visual Conception, Ltd.

Another Motion to Dismiss Denied by Alleging Inventive Concept: Nice Ltd. v. Callminer, Inc.

Once again, a court has denied a motion to dismiss a patent infringement suit, holding that the question of patent-eligibility under 35 U.S.C. § 101 could not be decided on a Rule 12(b)(6) motion. The Court held that the pleadings alleged an unresolved question of fact of whether the asserted claims contain inventive concepts sufficient to transform an abstract idea into a patent-eligible invention. Nice Ltd. v. Callminer, Inc., No. 18-cv-2024-RGA (D. Del. March 30, 2020). Plaintiff Nice asserted fourteen patents against Defendant Callminer, the patents directed to data collection and classification from phone calls between customers and salespeople. Defendant filed a motion to dismiss under Rule 12(b)(6) on nine of the patents as ineligible under § 101. A Magistrate Judge considered the motion and recommended to deny it because Plaintiffs had pled sufficient facts to present a factual dispute of whether the claims recited an inventive concept, and thus the claims were eligible under § 101. The Court followed the recommendation of the Magistrate Judge. The analysis for all nine patents is nearly identical, so this post will focus on the analysis of U.S. Patent No. 8,611,523. Claim 1 of the ‘523 patent recites: 1. A system for analyzing… Read More »Another Motion to Dismiss Denied by Alleging Inventive Concept: Nice Ltd. v. Callminer, Inc.

Will Dismissal on the Pleadings for Section 101 Eligibility Become Rare?

Should district courts consider eligibility of patent claims under 35 U.S.C. § 101 in a motion to dismiss under Rule 12(b)(6)? The Western District of Texas seems to think this analysis should wait, and only rarely should Section 101 eligibility be decided on the pleadings. Scanning Technologies Innovations, LLC v. Brightpearl, Inc., 6-20-cv-00114 (W.D. Tex. Apr. 11, 2020, Order). Defendant Brightpearl filed a motion to dismiss Plaintiff Scanning Technologies Innovations’ complaint for patent infringement under Federal Rule of Civil Procedure 12(b)(6). The motion was filed on April 10, 2020, a Friday. The next day, Saturday, April 11, the Court issued a text order denying the motion. The order is about half a page long, and the relevant section recites: In light of the Court’s order in Slyce v. Syte, No. 6:19-cv-257-ADA, 2020 WL 278481 (W.D. Tex. Jan. 10, 2020), the Court does not believe this is one of the rare cases where it is appropriate to resolve the Section 101 eligibility of the patents-in-suit as a Rule 12(b) motion to dismiss. It is therefore ORDERED that Defendants’ motion is dismissed WITHOUT PREDJUDICE. Defendants may refile their motion after the opening of fact discovery. Should Defendants elect to refile their motion… Read More »Will Dismissal on the Pleadings for Section 101 Eligibility Become Rare?

Inventive Concept In Gaming-Related Patent Survives Dismissal

An inventive concept allows an abstract idea to be patentable subject matter, but what facts are needed to allege such an inventive concept to survive dismissal? In Savvy Dog Systems, LLC v. Pennsylvania Coin, LLC, the Middle District of Pennsylvania considered whether allegations that a processor for a video game is as an inventive concept in initial pleadings were sufficient to survive a motion to dismiss under F.R.C.P. 12(b)(6). No. 3:19-cv-01470 (M.D. Pa. Apr. 1, 2020). Plaintiffs Savvy Dog Systems, LLC sued Defendants Pennsylvania Coin, LLC and PA Coin Holdings, LLC for alleged infringement of U.S. Patent No. 7,736,233. Defendants filed a motion to dismiss under Rule 12(b)(6), alleging that the claims of the ‘233 patent are ineligible subject matter under 35 U.S.C. § 101. For a motion to dismiss, the Court accepts all factual allegations as true and determines whether there are sufficient facts pled to state a plausible claim. The ‘233 patent is directed to a video game terminal and a game processor that incorporates elements of skill into an electronic game, satisfying state gambling laws that disallow games of chance. Claim 44 is representative and recites: 44. An electronic gaming system comprising: an electronic game terminal including… Read More »Inventive Concept In Gaming-Related Patent Survives Dismissal

Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent

A provisional patent application must include sufficient description to allow a person having ordinary skill in the art to make an invention as claimed in an asserted patent claiming priority to the provisional application, as recently upheld in Speedfit LLC et al v. Woodway USA, Inc. et al, No. 2-13-cv-01276 (E.D.N.Y. Jan. 9, 2020). Plaintiff Speedfit, LLC owns U.S. Patent Nos. 8,308,619 and 8,343,016, directed to a leg-powered treadmill. Speedfit, LLC and Aurel Astilean sued Defendant Woodway USA, Inc. for infringement of these patents. Defendant filed a motion motion for summary judgment of invalidity of the ‘619 and ’016 patents, asserting that Plaintiffs violated the on-sale bar of pre-AIA 35 U.S.C. § 102. The asserted patents have a critical date of October 29, 2009, one year before the filing date of the ‘619 patent. Plaintiffs filed Provisional Patent Application No. 61/280,265 on Nov. 2, 2009, and the asserted patents claim priority to the ‘265 provisional. Plaintiffs conceded that they offered a leg-powered treadmill for sale at a trade show in March 2009, six months before the critical date. Plaintiffs argued that the asserted patents were entitled to the priority date of the ‘265 provisional, filed within a year of the… Read More »Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent