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Core Wireless filed an action against Apple that alleged infringement of several patents in the Eastern District of Texas. Apple moved to transfer the case pursuant to 28 U.S.C. §1404(a).

As explained by the court, “Core Wireless is a corporation duly organized and existing under the laws of the Grand Duchy of Luxembourg, with a principal place of business at 16, Avenue paseur L-2310 Luxembourg. . . . Core Wireless maintains a wholly-owned subsidiary, Core Wireless Licensing Ltd. (“Core Wireless USA”), a Texas corporation with a principal place of business at 5700 Granite Parkway, Suite 960, Plano, TX 75024. . . .Core Wireless USA has 6 employees who live in or near Plano, TX, and is Director Jerry Mills lives full time in Dallas, TX. Id. at ¶ 16.”
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Plaintiffs Transunion Intelligence LLC and Trans Union LLC (collectively, “Transunion”) filed a patent infringement action against Search America over two patents that are directed to a computer-implemented method and software that is used to access a person’s eligibility to receive financial assistance for healthcare services. Transunion asserted both direct infringement and inducing infringement of one of the patents-in-suit.

Search America moved to dismiss the inducing infringement claim, asserting that Transunion had failed to plead that Search America had the specific intent to infringe the patent-in-suit. The district court disagreed. “As discussed at he hearing on Search America’s motion, however, the Court believes that Transunion has pleaded a plausible claim of induced infringement against Search America. In its complaint, Transunion pleads that Search America knew of the ‘937 patent, and Transunion pleads specific facts in support of that allegation – namely, that Search America studied the ‘937 patent to distinguish it from Search America’s own patent application. Fourth Am. Compl. para. 11. Transunion also alleges that Search America performed all but one of the steps of the ‘937 patent and that either Search America or a customer working with Search America performed the remaining step – namely, the inputting of patient data. Fourth Am. Compl. Ex. B at 2. Transunion further alleges that Search America’s customers performed the ‘inputting’ step by populating an on-line form created, controlled, and provided by Search America. Id.”
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In IPR2012-00022, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Tierney, Green and Robertson) issued an order in Ariosa Diagnostics (“Petitioner”) v. Isis Innovation Limited (“Patent Owner”) regarding Ariosa’s standing. Section 315 specifies that “[a]n inter partes review may not be instituted if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” Notably, however, Section 315 exempts the filing of a counterclaim challenging the validity of a claim of a patent from the definition of a “civil action.” 35 U.S.C. § 315 (a)(3). The issue presented here is whether raising the defense of invalidity in an affirmative defense falls with the definition of a “civil action” under Section 315.
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In Gunn v. Minton, 2013 WL 610193 (Feb. 20, 2013), a unanimous United States Supreme Court determined that state courts can address legal malpractice disputes even though the underlying action may turn on issues involving patents. As expected, this ruling, which significantly narrowed federal court jurisdiction, is likely to impact many cases pending in district courts around the country.

As an example, in a case pending against Boston Scientific in district court, Boston Scientific immediately challenged the district court’s jurisdiction after the Gunn decision. “Just seven days before the jury trial schedule in this case, the United States Supreme Court handed down Gunn v. Minton, 2013 WL 610193 (Feb. 20, 2013). In a letter dated February 21, 2013, Boston Scientific brought this case to the Court’s attention, suggesting that under Gunn, the Court lacks jurisdiction over this case. By response dated February 22, 2013, Mirowski contended that jurisdiction existed and urged the Court to hold fast to the trial date.”
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Avago Technologies (“Avago”) filed a patent infringement action against IPtronics, Inc. (“IPtronics”) asserting infringement of two U.S. Patents, patent nos. 5,359,447 (the ‘447 patent) and the 6,947,456 (the ‘456 patent) in the United States District Court for the Northern District of California. After a second amended complaint was filed, Avago filed a complaint at the International Trade Commission (“ITC”) alleging infringement of the ‘456 patent, but did not allege infringement of the ‘447 patent. The ITC instituted an investigation naming IPtronics as a respondent.

As noted by the district court, “[w]hen parallel actions are proceeding before a district court and the International Trade Commission, 28 U.S.C. § 1659 requires the district court to stay ‘Any claim that involves the same issues involved in the proceeding before the Commission’ until the ‘Determination of the Commission becomes final” upon request by ‘a party to a civil action that is also a respondent in the proceedings before the [ITC].'”
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The following nine decisions were reported in patent cases pending in the Central District of California for the period of February 16 through February 28, 2013.

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The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com/a>.

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In this patent infringement action between Microsoft and Motorola, Motorola asserted certain claims of various patents against Microsoft, including claims that included “means for decoding” and “means for using” limitations. Motorola asserted that Microsoft’s Windows 7 operating system and Microsoft’s Internet Explorer 9 infringed the asserted claims of the patents-in-suit. Microsoft moved for partial summary judgment that the claims that included these means-plus-function limitations were indefinite under 35 U.S.C. §112.

As explained by the district court, “[a]t a high level, the Patents-in-Suit disclose systems and methods for encoding and decoding a bitstream (or sequence) of digital video data.3 (See generally ‘374 Patent; ‘375 Patent; ‘376 Patent.) The Patents-in-Suit explain that a picture in a digital video sequence can either be encoded as a “frame,” comprising consecutives lines of the picture, or as two “fields,” with the top field comprising the odd-numbered lines of the picture and the bottom field comprising the even-numbered lines of the picture. (‘374 Patent at 1:42-58.) While encoding a picture in frame or field mode was done in prior art on a picture-by-picture basis (id. at 4:17-34), the summary of the invention states, “[t]he method entails encoding and decoding each of the macroblocks in each picture in said stream of pictures in either frame mode or in field mode.” (Id. at 2:58-60 (emphasis added).)”
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ABT Systems, LLC (“ABT”) filed an action against Emerson Electric Co. (“Emerson”). As the case proceeded to trial, the district court made some key rulings on motions in limine. In particular, the district court addressed whether customer product reviews on the Internet were admissible over a hearsay objection.
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In Smart Options, LLC v. Jump Rope, Inc., Case No. 12-C-2498 (N.D. Ill. March 25, 2013), plaintiff Smart Options brought suit for infringement of U.S. Patent No. 7,313,539 against Jump Rope. The ‘539 Patent relates to a method for purchasing an “option” to buy a good or service (e.g., concert ticket) at a “reservation price” within a designated time period. If the option to buy is not exercised then it expires and there is no refund of the “option fee.” Smart Options utilizes the patent in the operation of its website www.optionit.com. Jump Rope operated a smart phone application that allows users to bypass entrance lines at events by purchasing a “Jump” which allows immediate access to the event without any additional purchase required.

After the suit was filed, Jump Rope served Smart Options with a Rule 11 motion and cover letter stating that Jump Rope would seek its attorneys’ fees and costs if Smart Options proceeded with the suit and the Court entered a finding of non-infringement. Jump Rope explained why it considered the suit to be meritless:

Plaintiff alleges violation of a patent that covers providing options on the right to purchase goods or services at a future time. Defendant’s software application, however, does not provide options or charge option fees. Rather, it allows someone to buy the service provided – a right to “jump the line” at an event or facility. Plaintiff and its counsel could have and easily should have discovered this, as the iPhone/Android application they accuse is free to download.

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TravelClick, Inc. (“TravelClick”) filed a declaratory judgment action against defendants Variant Holdings, LLC and Variant, Inc. (“Variant”), seeking a declaration that its iHotelier online hotel reservation system did not infringe Variant’s patent number 7,626,044 (the ‘044 patent). Variant filed a motion to transfer the case to the Eastern District of Texas based on the “first-filed” rule or 28 U.S.C. §1404(a) on the grounds that the Eastern District of Texas is a more convenient forum and transfer will serve the interests of justice.

In analyzing the motion, the district court found that the convenience factor did not weigh heavily in either direction. “Plaintiff does not identify any connection to Wisconsin that would make litigating in this state more convenient for it. Plaintiff is a Delaware corporation, headquartered in New York, with offices in Schaumburg, Illinois; Atlanta, Georgia, Orlando, Florida; Houston, Texas and Philadelphia, Pennsylvania. Only 16 of plaintiff’s 2000 customers that use the iHotelier system are located in Wisconsin. One of the defendants, Variant, Inc. is headquartered in this district, though it has no employees or present activities in this district and supports a transfer to Texas. (Its sole employee recently moved from Missouri to Texas.) The other defendant, Variant Holdings, LLC is headquartered in Nevis and has no employees. No matter where the case proceeds, the venue will be more convenient for some parties than others.”
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