Patent

Soil Sample Tracking Patent Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion for summary judgment on the ground that plaintiff’s soil sample tracking patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The Court agrees with the Defendant that soil sampling for the purpose of evaluating the nutritional deficiencies in a field is an abstract idea. However, the Court does not agree that a method for performing soil sampling is necessarily abstract. . . . The [patent-in-suit] purports to solve issues associated with existing techniques by coming to the end result more efficiently and accurately. Therefore, the Court does not [...]

2018-01-18T15:51:03+00:00 January 18th, 2018|Docket Report, Patent|

Patent For Delivering Targeted Advertisements to Mobile Device Not Invalid Under 35 U.S.C. § 101

The court denied defendant's motion to dismiss on the ground that plaintiff’s patent for delivering targeted advertisements to a mobile device encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "The [patent-in-suit] is not directed at merely the abstract idea of targeting advertising. Rather, it describes systems and methods for addressing barriers to certain types of information exchange between various technological devices, e.g. a television and a smartphone or tablet being used in the same place at the same time. To be sure, the end goal of the invention is to improve the delivery [...]

2018-01-17T12:54:07+00:00 January 17th, 2018|Docket Report, Patent|

Supplying Equipment For Use at Customers’ Facilities Does Not Create Regular and Established Place of Business

The court granted defendant's alternative motion to transfer for improper venue because defendant did not have a regular and established place of business through its provision of equipment to customers in the district. "⁠[Plaintiff] also relied on [defendant's] 'business model' wherein [defendant], for the convenience of their customers, supplies its end use customers with [defendant's] equipment to be used at the customer’s facility. . . . This rather creative argument does not satisfy the test set forth in [In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017)] for the simple reason that the equipment in question is not a [...]

2018-01-17T12:54:05+00:00 January 17th, 2018|Docket Report, Patent|

Patent Claims Acquired After Filing Date of Earlier Lawsuit Subject to Claim Preclusion if Directed to the Same Product or Process

The court granted defendant's motion to dismiss all but three of plaintiff's patent infringement claims for claim preclusion, including claims for a patent that issued after the filing date of the parties' earlier lawsuit. "⁠[I]t appears that if a party acquires a patent infringement cause of action during the course of litigation, the party need not attempt to add that cause of action to the ongoing litigation or risk claim preclusion—even if the new infringement claim arises from the same transactional facts that prompted the ongoing litigation.⁠ . . . [T]he Court is confident that the Federal Circuit did not [...]

2018-01-16T15:12:03+00:00 January 16th, 2018|Docket Report, Patent|

Threat of Litigation Against Customers Does Not Create Actual Controversy With Supplier

The court granted defendant's motion to dismiss plaintiff's declaratory relief action for lack of an actual case or controversy stemming from defendant's proposed license agreement or litigation against plaintiff's customers. "Even if [defendant] did 'demand' that Plaintiff consider the license agreement it proposed 'to prevent [the initiation of] further patent infringement actions against [plaintiff's] customers,' as Plaintiff asserts, there is no indication of any discussion or threat of litigation against Plaintiff. Nor, drawing all reasonable inferences in favor of Plaintiff, do Defendant’s actions constitute an 'aggressive enforcement strategy' warranting a finding of subject matter jurisdiction here, as Defendant’s strategy 'appears [...]

2018-01-12T12:56:03+00:00 January 12th, 2018|Docket Report, Patent|

Venue Determined When Cause of Action Accrued, Not Complaint Filing Date

The magistrate judge recommended denying defendant's motion to transfer for improper venue because defendant had a regular and established place of business in the district through two offices that closed before plaintiff filed suit and one office acquired a year after plaintiff filed suit. "⁠[A]pplication of the rule proposed in [Personal Audio, LLC v. Google, Inc. (E.D. Tex. Dec. 1, 2017)] -- using the exact date of the filing of the Complaint -- is too rigid. No one disputes that the causes of action accrued while [defendant] had at least one office in this district, and the undersigned has already [...]

2018-01-11T13:42:04+00:00 January 11th, 2018|Docket Report, Patent|

Repeated Sloppiness With Privilege Designations Justifies Discovery Sanctions

The court granted in part plaintiffs' motion for monetary sanctions for their motions to compel discovery defendants withheld as privileged. "The Court has conducted three previous in camera reviews of documents that Defendants withheld, and each time, the Court has compelled Defendants to review their privilege logs and produce additional documents in accordance with the law. . . . As a result of Defendants’ consistent sloppiness and noncompliance, the Court has expended a great deal of time reviewing exemplars, holding conferences, and preparing opinions and orders compelling Defendants to produce additional documents that were improperly withheld. Likewise, Plaintiffs have spent [...]

2018-01-10T13:14:07+00:00 January 10th, 2018|Docket Report, Patent|

Storing Products at Amazon Fulfilment Center Does Not Qualify as Place of Business for Venue

The court granted defendant's motion to dismiss for improper venue because defendant did not have a regular and established place of business in the district through its use of an online retailer's fulfillment centers. "Plaintiff does not present any evidence or legal authority to support its argument that the Amazon FCs are the physical, geographical location of [defendant]. . . . Plaintiff contends that [defendant] leases the place of business since it pays a storage fee to Amazon in exchange for storing the product. Plaintiff has not conducted a legal analysis demonstrating that a monthly subscription fee equates to leasing [...]

2018-01-09T13:17:02+00:00 January 9th, 2018|Docket Report, Patent|

Fact Dispute as to Scope of Assignment Precludes Summary Judgment on Assignor Estoppel

The court denied plaintiff's motion for summary judgment that defendant's invalidity counterclaim was barred by assignor estoppel because defendant's founders were named inventors of the patent-in-suit and assigned plaintiff the right to the patent's application. "It is undisputed that [defendant] is in privity with [the inventors]. But the question remains, and the parties greatly dispute, whether [the inventors] assigned to [plaintiff] an invention that is claimed in the [patent]. The issue turns on whether the invention assigned by [the inventors] to [plaintiff] is different from or merely a narrower version of the invention claimed in the [patent]. Although assignor estoppel [...]

2018-01-08T17:16:03+00:00 January 8th, 2018|Docket Report, Patent|

IPR Estoppel Does Not Apply to Invalidity Grounds Omitted From Petition

The court denied plaintiff's motion for summary judgment that its lighting patents were not invalid for lack of novelty or obviousness due to IPR estoppel. "⁠[Plaintiff] contends that, any invalidity contention that [defendant] did disclose in its preliminary and supplemental invalidity disclosures must fail because [defendant] is estopped from asserting such contention in federal court under 35 U.S.C. § 315(e)(2), since [defendant] 'raised or reasonably could have raised' any such contentions in its IPR petition. . . . Some courts . . . reason[] that [Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016)] [...]

2018-01-05T12:50:03+00:00 January 5th, 2018|Docket Report, Patent|