November 2013 Archives

Summary Judgment Granted Where District Court Determined Patent Was Not Infringed Because Not All of Infringing Steps of Method Patent Were Performed in the United States

November 27, 2013

Automatic Data Processing, Inc. ("ADP") filed a declaratory judgment action against Wellogix, Inc., and Wellogix Technology Licensing LLC ("Wellogix") for a determination that ADP does not infringe a Wellogix method patent on comparing data from purchase orders, field data, and invoices. After the action was filed, ADP moved for summary judgment on the ground that not all of the allegedly infringing steps were performed in the United States.

The district court began its analysis by stating that "[a] machine patent may be infringed if the protected technology is used, sold, or offered for sale 'within the United States.' Unlike a machine patent, a foreign method cannot be patented if its sold or offered for sale in the United States. All steps of the method must be done domestically.'

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District Court in Delaware Dismisses Patent Infringement Claim That is Plead Based on Joint Infringement But Did Not Plead Sufficient Facts to Establish Direction and/or Control

November 25, 2013

Bonutti Skeletal Innovations LLC ("Benutti") filed a patent infringement action against Conformis, Inc. ("Conformis"). Conformis moved to dismiss on several grounds, including that the complaint asserted an infringement theory based on "joint infringement" and therefore did not state a claim for relief.

In analyzing the claim at issue, the district court first noted that "in order to adequately state a claim for direct infringement of method claims, the complaint must allege that the accused infringer "perform[ed] all the steps of the claimed method, either personally or through another acting under his direction or control." Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012). Where the complaint alleges that the accused infringer personally performed all the steps of the claimed method, Form 18 of the Federal Rules of Civil Procedure provides the pleading standard by which the plaintiff's allegations are to be measured. See Superior Indus., LLC v. Thor Global Enter. Ltd., 700 F.3d 1287, 1295 (Fed. Cir. 2012); Pragmatus AV, LLC v. Yahoo! Inc., Civ. Action No. 11-902-LPS-CJB, 2012 U.S. Dist. LEXIS 161874, at *9-12 (D. Del. Nov. 13, 2012), adopted by 2013 U.S. Dist. LEXIS 73636 (D. Del. May 24, 2013). Where the complaint implicates a theory of joint infringement, and thus alleges what is known as divided infringement, however, a plaintiff must allege much more than merely the requirements of Form 18. See Pragmatus, 2013 U.S. Dist. LEXIS at *11. Specifically, the complaint must also plead facts sufficient to allow the court to reasonably infer that one party exercises "direction or control" such that performance of every step is attributable to the controlling party. Id. at *15.

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Patent Claims for Abstract "Conditional Action" Held Ineligible Subject Matter

November 22, 2013

In UbiComm LLC v. Zappos IP Inc., No. 1-13-cv-01029 (D. Del. Nov. 13, 2013), the court dismissed the asserted patent claims as being directed at an abstract idea that was patent ineligible. Plaintiff UbiComm LLC ("UbiComm") alleged that Zappos IP Inc.'s ("Zappos") websites infringed method claims of United States Patent No. 5,603,054 ("'054 patent"). Zappos moved to dismiss the asserted claims as ineligible subject matter.

The patent describes the invention as "a method for superimposing prespecified locational, environmental, and contextual controls on user interactions, including interactions of mobile users, with computational resources of a distributed computer system and with equipment residing on processes running on said system." Claim 1 of the '054 patent, the only independent claim, reads:

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District Court Excludes Patent Quality Inventor Study that Ranked Inventor of Patents-in-Suit as "Top Rated Inventor" But Denies Motion to Stay Pending Inter Partes Review Filed on Eve of Trial

November 20, 2013

Personalized Media Communications, LLC "PMC") filed a patent infringement action against Zynga, Inc. ("Zynga"). Prior to trial, PMC sought to use an exhibit created by Ocean Tomo, entitled "Patent Quality Inventor Study." The study purported to rank "John Harvey (the inventor of the patents in suit) as the "top rated inventor" in the "wireless" invention category." Zynga moved to exclude the study.

In response, PMC asserted that the exhibit was properly offered "as a secondary consideration of nonobviousness - specifically, praise by others." The district court disagreed and found that the potential for unfair prejudice was high. "The Court notes that the study does not pertain specifically to any of the patents-in-suit, much less the asserted claims. The Court finds that the probative value of the study is minimal, as it lacks the requisite nexus to the claims at issue in this case. See, e.g., Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, (Fed. Cir. 1988), cert. denied, 488 U.S. 956 (1988). Similarly, the potential for unfair prejudice is high."

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Apple v. Samsung: District Court Strikes Part of Samsung's Expert's Report on Damages

November 18, 2013

As Apple and Samsung prepare for a new trial on damages, Apple filed a motion to exclude part of the damage calculation set forth in Samsung's updated expert report on damages. In particular, Apple moved to exclude the damage calculation pertaining to the Samsung Gem phone on the ground that these calculations are based on fewer sales than were originally included in the 2012 expert report. The 2012 expert report calculated damages for the Gem based on total sales and the new report calculated sales only for Gem phones sold through Verizon. Samsung asserted that the updated damages calculations were proper because Apple presented evidence of infringement only for Gem phones sold through Verizon at the 2012 trial and Apple therefore failed to meet its burden to prove its entitlement to damages for Gem phones sold through other carriers.

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District Court Orders Production of Litigation Funding Agreement

November 13, 2013

In the patent infringement action between Cobra International, Inc. ("Cobra") and BCNY International, Inc. ("BCNY"), BCNY filed a motion to compel several documents, including a litigation funding agreement. Cobra opposed the motion asserting that the person funding the litigation was not making decisions regarding the lawsuit and was not interfering with the prosecution of the litigation. BCNY asserted that it was entitled to the document to determine if the patent had transferred.

As explained by the district court, "[i]n response to request for production number 32, which pertains to the litigation funding agreement, Mr. Eavzan stated in his declaration that 'Cobra continues to own the '858 patent. The person or entity funding Cobra's prosecution of the lawsuit against [BCNY] is not making the decisions for Cobra regarding the above-styled lawsuit, is not interfering with the independence and professional judgment of Cobra's counsel relating to the above-styled lawsuit, and is not receiving confidential communications between Cobra and its counsel relating to the above-styled lawsuit.'"

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Register Now for a Patent Litigation Webinar: How community property laws can affect your company

November 11, 2013

Tuesday, January 14, 2014
1:00pm - 2:00pm

The Intersection of Patents and Community Property:
The Problem of the Ex-Spouse

In a divorce, patents can be considered marital assets subject to community property laws, creating an unexpected and unwelcome tangle of legal issues for employers with a stake in the intellectual property. Companies unprepared for this possibility may find their ownership of essential patents endangered.

Join Stan Gibson, Chairman of JMBM's Patent Litigation Group, for a 1-hour webinar exploring the rights that spouses may have to an inventor's patents, and how companies can avoid battles for ownership over intellectual property created by an employee.

The presentation will cover:

  • Joint ownership of intellectual property

  • The impact of community property laws

  • Relevant recent cases

  • Assignment agreements

  • Spousal waivers

Click the image below to register for the webinar.

Speakers

Stanley M. Gibson | Chairman, Patent Litigation Group
Stan Gibson is an experienced trial lawyer, who has focused on high-stakes cases involving complicated technology and bet-the-company cases in the entertainment industry. He is the Chairman of JMBM's Patent Litigation Group and the publisher of the Patent Lawyer Blog. The media frequently calls upon Stan to explain the significance of court decisions, and he has been quoted by the Wall Street Journal, Financial Times, Forbes, Bloomberg BusinessWeek, New York Times, Los Angeles Times, Thompson Reuters, American Lawyer, National Law Journal, ABA Journal, Los Angeles Daily Journal and other publications.

Date and Time

Tuesday, January 14, 2014
1:00pm - 2:00pm

Place

Online, via GoToWebinar.com.

Cost

There is no charge for this program.

Questions?

Contact Doreen Filice at 310.201.3589 or DFilice@jmbm.com if you have any questions.

This activity has been approved for one hour of Minimum Continuing Legal Education credit by the State Bar of California. Jeffer Mangels Butler & Mitchell LLP certifies that this activity conforms to the standards for approved education activities prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education.

Bickering Brothers Break Common Interest and Results in Waiver of Attorney-Client Privilege

November 11, 2013

Porto Technology Co., LTD ("Porto") filed a patent infringement action against Cellco Partnership d/b/a Verizon Wireless ("Verizon"). During the litigation, Verizon moved to compel communications between two of the plaintiffs, who are brothers, and counsel. As explained by the district court, the court began by looking at "communications between Ji-Soo Lee, Heung-Soo Lee ("Lee Brothers") and counsel. Obviously, any communications between Plaintiff Ji-Soo Lee and his counsel pertaining to this or directly related infringement litigation is covered by attorney-client privilege. Communications between Heung-Soo Lee and his counsel do not appear to be similarly cloaked. Any privilege that existed was waived by Heung-Soo Lee by voluntarily disclosing communications concerning this -- and related litigation -- with both the Court and the Defendant, Verizon. Over 100 unsolicited documents pertaining to the '518 and '413 patents have been received and retained by the Clerk of this Court."

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Patent Claims for Prenatal Diagnostic Method Invalidated as Ineligible Subject Matter

November 8, 2013

Method Claims Applying Conventional Techniques to a Natural Phenomenon Held to be Patent Ineligible Subject Matter

By Ali Shalchi

The U.S. District Court for the Northern District of California found Sequenom's patent claims on a prenatal diagnostic method to be invalid and not infringed by Arisoa Diagnostic's Harmony Test product, because the asserted claims were directed at patent ineligible subject matter. Ariosa Diagnostics, Inc. v. Sequenom, Inc., No. 3:11-cv-06391-SI (N.D. Cal. Oct. 30, 2013). The court, applying relevant Supreme Court cases, including Prometheus and Myriad Genetics, found that the patent claims were based on a routine and conventional use of natural phenomenon and were therefore patent ineligible. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) and Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013).

Sequenom is the exclusive licensee of the patent at issue, U.S. Patent No. 6,258,540 ("'540 patent"), which it licensed from Isis Innovation Limited. The '540 patent is directed at non-invasive prenatal detection methods that are performed on a maternal serum or plasma sample to detect a paternally-inherited nucleic acid of fetal origin. The prenatal diagnosis may include sex determination, blood typing and other genotyping, as well as detection of pre-eclampsia in the mother. The '540 patent is based on the discovery in 1996-1997 that cell-free fetal DNA ("cffDNA") is detectable in maternal serum or plasma samples, such that the process of isolating fetal cells was no longer needed.

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Motion for Summary Judgment Based on Insufficient Written Description Denied Where There Were Disputed Issues of Material Fact

November 6, 2013

In this patent infringement action between competing producers of satellites and satellite networking systems, ViaSat plaintiffs asserted that Space Systems/Loral infringed the '875 patent. As explained by the district court, the ViaSat plaintiffs are corporations that develop commercial and military satellite and digital communication technologies. SS/L is a wholly owned subsidiary of Loral, and both SS/L and Loral are also involved in the satellite business. In 2006, ViaSat and SS/L began negotiating over the possibility of collaborating on a major satellite construction project.

SS/L moved for summary judgment arguing that the earliest date at which ViaSat's claims to the '875 Patent had written description support under 35 U.S.C. § 112, ¶ 1 was March 25, 2009. The '875 Patent is a "continuation-in-part" application, and ViaSat argued that it claims priority to a series of provisional applications that it filed in 2006.

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NetAirus v. Apple: District Court Strikes Survey Expert Where Survey Expert's Methodology Made No Effort to Shield Respondents from Study Goals and Included Both Owners and Prospective Purchasers as Respondents

November 4, 2013

In this patent infringement action, Plaintiff NetAirus Technologies, LLC ("NetAirus") asserted that Apple infringes U.S. Patent No. 7,103,380 (the "'380 Patent"). The '380 Patent claims methods in which a "handset unit [ ] configured to a personal digital assistant (PDA)" wirelessly communicates over both a local area network ("LAN") and a wide area network ("WAN"). Apple filed a Daubert Motion to exclude the expert reports and opinions of NetAirus' survey experts and any references to those opinions in the opinion of NetAirus' damage expert.

After reciting the standards for a Daubert challenge, the district court addressed the specific survey opinions at issue. "No portion of the Marylander and Berger surveys directly accounted for all of limitations of the asserted claims; specifically, the surveys did not ask consumers about the limitations concerning transmission power. Mot., Dkt. 424 at 3-4, 9-12. Apple argues that the failure to align the scope of the claimed invention with the scope of the features explored in the survey means that this case is on all fours with Fractus, S.A. v. Samsung, No. 6:09-cv-203-LED-JDL, 2011 WL 7563820 (E.D. Tex. Apr. 29, 2011). In Fractus, the plaintiff commissioned two surveys to value "incorporating internal antennas in cell phones in place of external antennas" and "the relative importance of internal antennas in cell phones to consumers." 2011 WL 7563820 at *1. The court excluded the surveys because they measured the value of something -¬internal vs. external antennas - that was more broad than what was covered by the patents -- specific improvements to internal antennas. Id."

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