December 2014 Archives

District Court Declines to Hear Early Motion for Summary Judgment on Section 101 and Postpones Hearing until Claim Construction

December 31, 2014

In the pending patent infringement action between Netflix and Rovi, Netflix filed a motion for summary judgment, seeking a ruling that Rovi's patents are invalid under 35 U.S.C. § 101. After the motion was filed, the district court "advised Netflix that it was entitled to only one motion for summary judgment in this case, that would be heard after claim construction, and that it needed to seek leave if it intended to go forward with the already-filed motion."

The district court then found that as a matter of procedure Netflix's motion was improperly filed. "Netflix did not seek leave of court, nor did it meet and confer with Rovi, prior to filing its early motion for summary judgment. The court also wholly rejects Netflix's attempt to circumvent the court's rules by re-characterizing its motion as a motion for judgment on the pleadings under Rule 12(c)."

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Plaintiff Loses Motion for Summary Judgment after District Court Concludes that Dispute over Person of Ordinary Skill in the Art Is Not Material

December 29, 2014

The plaintiff, MyMedicalRecords ("MMR"), owns U.S. Patent No. 8,498,883 (the '883 Patent) entitled "Method for Providing a User with a Service for Accessing and Collecting Prescriptions." MMR asserted claims 1-3 of the '883 Patent against Quest Diagnostics, Inc., WebMD Health Corp., WebMD Health Services Group Inc., and Allscripts Healthcare Solutions, Inc. (collectively, "Defendants").

As explained by the district court, the asserted claims are method claims directed to providing users with a secure and private way to collect, access, and manage drug prescriptions online. Independent claim 1 recites a "means for scheduling one or more prescription refills concerning a drug prescription" limitation. Claims 2 and 3 depend on claim 1 and therefore incorporate this "means for scheduling" limitation by reference.

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Motion for Rule 11 Sanctions Denied After Plaintiff Granted Defendants Covenant Not to Sue Where Plaintiff Attempted to Make an Assessment of the Likelihood of Infringement

December 24, 2014

Phoenix Modular Elevator, Inc. ("Phoenix") filed a complaint for patent infringement against T.L. Shield & Associates, Inc. ("Shield") and Modular Elevator Manufacturing, Inc. ("MEM"). The patent at issue, United States Patent No. 6,079,520 (the "520 patent"), is entitled "Method of Retro-Fitting Elevators to Existing Buildings." As explained by the district court, the '520 patent describes a method of manufacturing an elevator and installing it onto an existing, multistory building.

During the case, Phoenix learned that a smaller than expected number of potentially infringing elevators were not actually infringing. As a result, Phoenix signed a covenant not to sue and explained that it was no longer economical to litigate the case. Phoenix then filed an unopposed motion to dismiss the complaint for lack of subject matter jurisdiction.

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Court Chastises Both Parties for Contentious and Unprofessional Behavior and Warns That Further "Offending Conduct" Will Lead to a Ban from Further Participation in Discovery

December 22, 2014

After a discovery dispute erupted in this patent infringement action, the court held a telephonic hearing on defendants' motion to compel discovery and for sanctions and plaintiff's cross-motion for a protective order. Although the court denied both motions without prejudice, it "chastised both sides for the contentiousness and unprofessionalism that has marred discovery in this case, particularly the depositions."

The court went further finding that "[b]oth sides are at fault and the attorneys for both sides must change their behavior significantly and immediately." The court also reminded the parties that "[i]n the March 3, 2014 preliminary pretrial conference order, the court ordered that 'the parties and their attorneys must at all times treat everyone involved in this lawsuit with courtesy and consideration... and must reasonably accommodate each other in all matters.'"

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Request to Join Summary Judgment Motion Based on Alice Four Weeks Before Trial Denied as Untimely

December 17, 2014

Four weeks prior to trial, defendant Cerner Corporation ("Cerner") filed a motion to join a summary judgment motion filed by a defendant in a related case involving the same patents. In the summary judgment motion in the related case involving Allscripts, Allscripts argued that the plaintiff's (RLIS) patents claim ineligible subject matter under section 101 of the Patent Act.

The motion in the related case was filed in May 2014 and gained strength after the Supreme Court's decision in Alice Corp. v. CLS Bank Int.'l, 134 S. Ct. 2347 (2014). Yet, Cerner did nothing. As explained by the district court, "[i]n fact, the Court held a lengthy motions hearing on October 1, 2014. Many of the numerous motions argued that day were joined by both Cerner and Allscripts. Rather than asking to join Allscripts' section 101 motion, Cerner made a tactical decision to sit on the sideline while Allscripts argued the Alice issue to the Court."

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Dismissal Based on Petitioner's Prior DJ Action Cannot Be Waived

December 16, 2014

In a covered business method review filed by petitioner GTNX, Inc., the petitioner sought review of four patents owned by patent owner INTTRA, Inc. The PTAB instituted trial on all four patents following the patent owner's preliminary response. Notably, in its preliminary response the patent owner did not raise that the reviews were barred under 35 U.S.C. § 325(a)(1) based on petitioner's prior invalidity challenge of the patents in a declaratory judgment action before a United States District Court. After the parties briefed the issue to the Board, the Board vacated its Decisions on Institution and terminated the CBMs based on the petitioner's prior declaratory judgment action.

In its precedential SecureBuy decision, the Board noted that "§ 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329-31 (2011) ("AIA") "provides that covered business method patent review proceedings shall employ all the statutory standards and procedures of a post-grant review (i.e., 35 U.S.C. §§ 321-29), except for those expressly excluded." 35 U.S.C. § 325(a)(1), which is not expressly excluded by § 18 of the AIA, states:

(1) POST-GRANT REVIEW BARRED BY CIVIL ACTION.--A post-grant review may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.

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With Motion for Summary Judgment Pending Against It, Plaintiff Requests District Court to Order Parties to Mediation and District Court Grants Summary Judgment Motion Instead

December 15, 2014

Princeton Digital Image Corp. ("Princeton Digital") filed a patent infringement action against Hewlett-Packard and Hewlett Packard filed a summary judgment motion. With the summary judgment motion pending, Princeton Digital filed a letter with the district court requesting that the district court order a mediation between the parties pursuant to Local Civil Rule 83.9.

The district court also received a letter from Hewlett-Packard opposing Princeton Digital's mediation request, arguing that their outstanding motion for summary judgment should be determined first.

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Oral Assignment Ineffective to Convey Patent Rights and Subsequent Assignment too Late to Save Complaint from Dismissal with Prejudice for Lack of Standing

December 10, 2014

The plaintiff, Freed Designs, Inc. ("Freed Designs"), filed a patent infringement action defendant Sig Sauer. Robert Freed is the sole inventor of the '764 Patent, titled "Grip Extender For Hand Gun." Freed is also the sole owner and President of Plaintiff Freed Designs. Plaintiff alleged that Sig Sauer makes, sells, and offers to sell magazine extenders that infringe the '764 Patent. Sig Sauer answered the complaint and raised an affirmative defense of lack of standing. Sig Sauer then moved to dismiss the complaint for lack of standing.

After the action was filed, Freed executed an "Assignment of the Invention and Patent Application" transferring to Free Designs his "entire right, title, and interest in and to" the '764 Patent. A few months later, Freed executed another assignment titled "Assignment of Rights, Title and Interest in Invention." This second assignment was styled as a nunc pro tunc assignment, purporting to have an effective date of August 16, 2005 (the issue date of the '764 Patent).

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Daubert Motion Denied Where Defendant Had "Salubrious Fodder" for Cross-Examination If Plaintiff's Expert Used Wrong Source Code

December 8, 2014

Defendant Adobe Systems ("Adobe") filed a Daubert motion seeking to limit the testimony of plaintiff EveryScapes' expert, Dr. Maja Bystrom ("Dr. Bystrom"), for three reasons.

First, Adobe sought to exclude the testimony that the Mok3 Perspective Clone Brush practiced claims of EveryScape's patent, partly because Dr. Bystrom allegedly relied on the wrong source code in reaching her opinions about Mok3. As explained by the district court, "[t]he admission of expert testimony, as the parties are well aware, is within the sound discretion of the trial court. Newell Puerto Rico, Ltd. v. Rubbermaid, Inc., 20 F.3d 15, 20 (1st Cir. 1994). "[C]ourts must be cautious - except when defects are obvious on the face of a proffer - not to exclude debatable scientific evidence without affording the proponent... adequate opportunity to defend its admissibility." Cortes-Irizarry v. Corporacion Insular de Seguros, 111 F.3d 184, 188 (1st Cir. 1997)."

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Plaintiffs' Motion for Protective Order Denied But Cautions Defendant That Sanctions Will Be Awarded If Defendant Fails to Convince the Court That a Protective Order Should Not Be Entered

December 3, 2014

In this patent infringement action, Plaintiffs' filed a motion for a standard protective order to prevent the defendant from sharing confidential information. The district court denied the motion because the motion was not in the form of a joint stipulated as required by the local rules.

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PTAB Refuses to Vacate Holding that Patent Claims are Invalid Despite Petitioner's "Abandonment" of the CBM

December 2, 2014

In an IPR petition filed by petitioner Salesforce.com, the petitioner sought review of patent owner, VirtualAgility, Inc.'s U.S. Patent No. 8,095,413. The PTAB instituted trial on November 19, 2013, the Patent Owner filed its Patent Owner Response on January 28, 2014, the Petitioner then filed its Reply on April 11, 2014, oral argument was held on July 14, 2014, and a Final Written Decision was rendered on September 16, 2014. In the Final Written Decision, the Boart held that Petitioner has proven, by a preponderance of the evidence, that claims 1-21 of the '413 patent are unpatentable.

As a result, on November 18, 2014, the Patent Owner filed a Notice of Appeal to the Court of Appeals for the Federal Circuit. At the same time, the parties filed a Joint Motion to File Settlement Agreement as Confidential Business Information. Subsequently, on November 21, 2014, the Patent Owner requested authorization to file a motion to vacate the Final Written Decision and to terminate the proceeding after the Final Written Decision was vacated. After hearing from the Patent Owner, the Board denied its request.

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Premature Motion to Stay Pending Inter Partes Review Denied Where Patent Trial and Appeal Board Had Not Yet Granted the Petition for Review

December 1, 2014

Reflectix, Inc., Innovative Insulation, Inc., TVM Building Products, Inc., Energy Efficient Solutions, LLC, and Home Depot U.S.A., Inc.'s (collectively, "Defendants") filed a motion to stay pending and Inter Partes Review ("IPR") that was filed with the Patent Trials and Appeals Board ("PTAB"). The plaintiff opposed the motion to stay on the grounds that the IPR had not yet been granted for review by the PTAB.

In analyzing the motion to say, the district court noted that "it has the inherent power to control its own docket, including the power to stay proceedings. See Clinton v. Jones, 520 U.S. 681, 706 (1997) ('The District Court has broad discretion to stay proceedings as an incident to its power to control its own docket.'). How to best manage the court's docket 'calls for the exercise of judgment, which must weigh competing interests and maintain an even balance.' Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936)."

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