Patent Civil Procedure

35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The ‘798 patent includes system claims, and the ‘725 and ‘751 patents include method claims. It was important in this case that infringement of the various system and method claims have different requirements to qualify for pre-suit damages. Pre-suit damages for the system claims are controlled by the marking requirements of 35 U.S.C. § 287(a), whereas pre-suit damages for the method claims are not. With respect to the method claims of the ‘725 and ‘751 patents, Packet Intelligence argued that evidence of direct infringement of the ‘725 and ‘751 patents was sufficient to merit an award of damages for pre-suit activities. Direct infringement would require the method of the patent claims to actually be practiced, i.e., the steps of method actually performed. However, NetScout’s primary activity was to sell and license software, and, as the Federal Circuit pointed out, method claims… Read More »35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.

Claims directed to authenticating users for a transaction are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, and therefore the court granted a Rule 12(b)(6) motion to dismiss in Universal Secure Registry LLC v. Apple Inc., Civ. No. 17-585-CFC-SRF (D. Del. June 30, 2020). The court overruled a Magistrate Judge’s report and recommendation that the motion be denied, and came just a week after another decision by the same judge (Colm Connolly) in another case holding patent claims directed to authenticating users to transactions ineligible. At issue in this case were U.S. Patent Nos. 8,856,539; 9,100,826; 8,577,813; and 9,530,137. The court began by analyzing claim 22 of the ’539 patent, which recites as follows: A method for providing information to a provider to enable transactions between the provider and entities who have secure data stored in a secure registry in which each entity is identified by a time-varying multicharacter code, the method comprising: receiving a transaction request including at least the time-varying multicharacter code for an entity on whose behalf a transaction is to take place and an indication of the provider requesting the transaction; mapping the time-varying multicharacter code to an identity of the entity using the… Read More »Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.

Claimed Improvement Not Patent-Eligible Where Reducible to Mental Steps: Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc.

A Rule 12 motion to dismiss was granted where patent claims directed to “authenticating a user to a transaction at a terminal” failed the 35 U.S.C. § 101 and Alice/Mayo patent-eligibility test. Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc., Civil Action No. 18-1477-CFC (D. Del. June 24, 2020). Notably, the plaintiff attempted to rely on a purported improvement to computing technology that the court discounted because the purported improvement to network authentication processes, the court said, could be performed mentally. Claim 1 of U.S. Patent No. 9,246,903 recites: A method of authenticating a user to a transaction at a terminal, comprising the steps of: transmitting a user identification from the terminal to a transaction partner via a first communication channel, providing an authentication step in which an authentication device uses a second communication channel for checking an authentication function that is implemented in a mobile device of the user, as a criterion for deciding whether the authentication to the transaction shall be granted or denied, having the authentication device check whether a predetermined time relation exists between the transmission of the user identification and a response from the second communication channel, ensuring that the authentication… Read More »Claimed Improvement Not Patent-Eligible Where Reducible to Mental Steps: Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc.

Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules

In the latest development in extensive litigation between Shure and ClearOne over audio and conferencing equipment, the District of Delaware rejected a motion to dismiss Shure’s claims over multiple civil procedure grounds, including as compulsory counterclaims to an earlier suit and as failing to be the first to file. The conflict between Shure and ClearOne began not in the District of Delaware but in the Northern District of Illinois. In 2017, Shure filed a declaratory judgment of noninfringement of ClearOne’s U.S. Patent No. 9,635,186, and ClearOne responded with counterclaims for infringement of the ’186 patent and of U.S. Patent No. 9,813,806. Both patents relate to beamforming microphones in ceiling arrays, an area in which the parties compete. ClearOne got a preliminary injunction for the ’806 patent (but not the ’186 patent), specifically against Shure’s MXA910 product “in its drop-ceiling mounting configuration.” In 2019, ClearOne filed a second infringement suit against Shure in the Northern District of Illinois over U.S. Patent No. 9,264,553, also related to beamforming microphones. Shure got an inter partes review instituted by the Patent Trial and Appeal Board against the ’553 patent, but the PTAB ended up upholding the challenged patent claims. In this District of Delaware… Read More »Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules

Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)

The sins of the parent patent will not be visited on the child patent, at least in the Western District of Texas. An earlier determination of ineligible subject matter does not trigger claim preclusion against an infringement suit asserting a patent issued from a continuation application from the earlier patent. VideoShare, LLC v. Google LLC, Civ. No. 6-19-CV-00663-ADA (W.D. Tx. May 4, 2020). Because this case involves claim preclusion (or res judicata, if you like Latin), the conflict necessarily started in an earlier case. Back in 2013, VideoShare sued Google in the District of Delaware for infringing U.S. Patent No. 8,464,302, “Method and System for Sharing Video with Advertisements over a Network.” The accused product was YouTube. The court invalidated the ’302 patent as ineligible subject matter under § 101, and the Federal Circuit confirmed the result. The current case features the same parties and the same accused product, with the case now relocated to the Waco, Texas. VideoShare accused Google—specifically YouTube—of infringing U.S. Patent No. 10,362,341. The ’341 patent is a continuation of the ’302 patent from the Delaware case. During prosecution of the ’341 patent, VideoShare had to use a terminal disclaimer to overcome a double-patenting rejection over… Read More »Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)

Federal Circuit Holds Telecommunications System Access Control Patent-Ineligible: Ericsson Inc. v. TCL Comm. Tech. Holdings, Ltd.

Patent claims directed to “limiting and controlling access to resources in a telecommunications system” failed the 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, held a split Federal Circuit panel, reversing the Eastern District of Texas’s denial of summary judgment. Ericsson Inc. v. TCL Comm. Tech. Holdings, Ltd. (Fed. Cir. April 14, 2020) (opinion by Chief Judge Prost joined by Judge Chen; dissent by Judge Newman) (precedential). TCL had appealed after a jury found infringement of claims 1 and 5 of U.S. Patent No. 7,149,510, owned by Ericsson, including willful infringement, and awarded damages. Because the court held claims of the ’510 patent ineligible under § 101, this opinion did not reach the willful infringement and damages issues. However, before turning to the merits of § 101 eligibility, the court considered and rejected, for two independent reasons, Ericsson’s argument that “TCL has waived any right to appeal the issue of ineligibility under § 101 by failing to raise it in a motion for judgment as a matter of law under [FRCP] 50.” First, there was no waiver because the denial of the motion for summary judgment of § 101 ineligibility was not because factual questions precluded granting the motion, but… Read More »Federal Circuit Holds Telecommunications System Access Control Patent-Ineligible: Ericsson Inc. v. TCL Comm. Tech. Holdings, Ltd.

Written Decision Needed For IPR Estoppel

In Finjan, Inc. v. Cisco Systems, Inc. Case No. 17-cv-00072-BLF (N. D. Cal. Feb. 3, 2020) the Northern District of California denied Plaintiff Finjan’s motion for summary judgement of validity of a number of claims of various patents asserted against defendant Cisco. Finjan’s arguments were centered around a pair of petitions for inter partes review filed by Cisco, and the court’s denial articulates the applicably of estoppel in situations where petitions are denied institution. The pair of petitions at the center of Finjan’s arguments were filed with the PTAB by Cisco after Finjan had sought enforcement of a few of its patents. The patents at issue had been subject to, and survived, challenges at the PTAB and Federal Circuit. Cisco was not a party to, or identified as a party of interest in, the previous challenges. The PTAB denied institution of the pair of petitions filed by Cisco. In addition to the petitions, Cisco challenged the validity of Finjan’s patents in the district court case. The invalidity theories presented in the district court were different than those of the IPR petitions – namely, they used different art and relied on expert testimony. Finjan’s primary argument pieced together Cisco’s use of… Read More »Written Decision Needed For IPR Estoppel

No Attorney Fees for § 101 Dismissal: Data Scape Ltd. v. Spotify USA Inc.

Despite a refiled case and a subsequent dismissal for ineligible subject matter, plaintiff Data Scape escaped paying attorney fees to defendant Spotify in a recent decision from the Central District of California.  Data Scape Limited v. Spotify USA Inc. et al., No. CV 19-4367 PSG (SKx) (C.D. Cal. Dec. 3, 2019). Data Scape is apparently a patent assertion entity, and Spotify is a well-known music streaming service. Spotify successfully convinced the district court to dismiss Data Scape’s claim for patent infringement, and then Spotify filed a motion for sanctions, the subject of this decision. Because Spotify’s motion is based on Data Scape’s litigation conduct, the timeline of events is important. The dispute began with Data Scape filing an earlier suit for infringement of U.S. Patent Nos. 9,712,614; 9,380,112; 7,720,929; and 7,617,537, all in the same family. Spotify moved to dismiss the suit under § 101 for ineligible subject matter. Instead of filing a response, Data Scape filed an amended complaint. Spotify followed up with another motion to dismiss on much the same grounds. Three days before a response was due, a different judge in the same district dismissed a case filed by Data Scape against a different defendant, Western Digital,… Read More »No Attorney Fees for § 101 Dismissal: Data Scape Ltd. v. Spotify USA Inc.

§ 112 Enablement and Written Description in Post-Grant Review

When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics LLC, the Patent Trial and Appeal Board (PTAB) denied institution of post-grant review of U.S. Patent 9,977,039 (“the ‘039 patent”). The PTAB declined institution because if found that Instrumentation Laboratory Co. (“Petitioner”) didn’t meet its burden of proof to support the challenges under 35 U.S.C. § 112 it was alleging against the ‘039 patent. Hemosonics LLC (“Patent Owner”) is the owner of the ‘039 patent, which is directed toward devices, systems and methods for evaluating hemostasis of blood. The invention uses test chambers for holding blood, and “transducers associated with each of the plurality of test chambers in the interrogation of the test sample.” ‘039 Patent, claim 1 (identified as representative by the PTAB). The ‘039 patent issued from a continuation application filed on July 7th, 2017.  The ‘039 patent is a continuation of a series of a US patent application and prior US provisional application having priority dates of Feb. 15, 2012 and Feb. 15, 2011, respectively (“priority applications”). Remember, post-grant review is… Read More »§ 112 Enablement and Written Description in Post-Grant Review

112 and the Zone of Uncertainty

In consolidated cases Niazi Licensing Corp. v. Boston Scientific Corp. and Niazi Licensing Corp. v. St. Jude Medical S.C. Inc. the district court found U.S. Patent 6,638,268 (“the ‘268 patent”) to be invalid under 35 U.S.C. § 112 for being indefinite and not particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention. The indefiniteness determination for the ‘268 patent was arrived at by the Court during a Markman proceeding to interpret certain claim terms. The independent claims of the ‘268 patent each recite an “inner, pliable catheter.” For example, representative claim 1 recites: an inner, pliable catheter slidably disposed in the outer catheter and of greater length than the outer catheter so that a distal end portion of the inner catheter can be extended or retracted from a distal end opening of the outer catheter. During the Markman proceeding the parties disputed the interpretation of the “inner, pliable catheter.” Niazi argued that the phrase should be construed to mean “a catheter that is easily bent, flexible.” Defendants Boston Scientific and St. Jude argued that the phrase was indefinite. Niazi relied on McCreary v. United States, 35 Fed. Cl. 533, 556-57 (1996) to support… Read More »112 and the Zone of Uncertainty