Friday, January 20, 2017

Peripheral Device Security Patent Not Ineligible Under 35 U.S.C. § 101

​ The court denied defendant's motion to dismiss on the ground that plaintiff’s peripheral device security patent encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. "[Defendant] argues that claim 11 is directed to the abstract idea of securing access to secret information, which is a concept that has been practiced throughout modern history by humans. The Court finds that claim 11 is not directed to an abstract idea. . . . [C]laim 11 is tied to a specific structure, which is a peripheral device, and produces a technological improvement. The invention addresses security problems pertaining to peripheral devices. . . . [C]laim 11 describes a physical structure that contains a combination of components, not a method or system that uses a general computer to secure access to secret information."

SPEX Technologies, Inc. v. Apricorn, 2-16-cv-07349 (CACD January 9, 2017, Order) (Selna, USDJ)

Thursday, January 19, 2017

Intervening Change in DNA Patentability Law Negates Assignor Estoppel ​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s tuberculosis genetic detection patent encompassed unpatentable subject matter and found that assignor estoppel did not bar defendant from challenging validity because there had been an intervening change in law. "There can be no genuine dispute that [Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013)] significantly changed the legal landscape of DNA patentability. Indeed, [plaintiff] argued in an amicus brief to the Supreme Court during the Myriad proceedings that a ruling that isolated DNA sequences are not patent eligible would 'upset reliance interests' and jeopardize patents on 'DNA-based diagnostic tests.'. . . And while Myriad may not have overruled existing Supreme Court precedent because there was no Supreme Court precedent regarding DNA patentability to overrule, it reversed the Federal Circuit and sharply altered longstanding PTO practice and the jurisprudence of lower courts. This alteration in the law tips the balance of equities against application of assignor estoppel to [defendant], a company in privity with an inventor who assigned his rights at a time when the PTO was routinely granting DNA patents, decades before the Supreme Court significantly limited the scope of such patents."

Roche Molecular Systems, Inc. v. Cepheid, 3-14-cv-03228 (CAND January 17, 2017, Order) (Laporte, MJ)

Evolving State of § 101 Weighs Against Attorney Fee Award Despite Prior Findings of Invalidity in Related Cases​

Following judgment on the pleadings that plaintiff's patents were invalid for lack of patentable subject matter, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's claims were not baseless. "[Plaintiff's] litigating position in this lawsuit was no weaker simply because [defendant] did not file its motion at the same time as the defendants in related lawsuits. This Court’s ruling declaring different patents asserted by [plaintiff] in related cases to be invalid under 35 U.S.C. § 101 was not binding authority making it a foregone conclusion that the Court would arrive at a similar decision on [defendants'] motion for judgment on the pleadings, which concerned two different patents. Ultimately, '[g]iven the evolving state of the law, the § 101 analysis . . . is a difficult exercise,' and 'therefore, not an exercise that lends itself to, e.g., shifting fees pursuant to 35 U.S.C. § 285.'"

West View Research, LLC v. Bayerische Motoren Werke AG et al, 3-14-cv-02670 (CASD January 17, 2017, Order) (Bencivengo, USDJ)

Wednesday, January 18, 2017

Judge Love Orders Mutual Disclosure of Mock Trial or Focus Group and In Camera Inspection of Participants​

The court ordered the parties to disclose the identities of the participants in any mock trial or focus group prior to jury selection. "The parties are notified that if either party intends to conduct mock trials, focus groups, or similar studies in preparation for trial, the party who commissions such a study shall retain, to the extent practicable, the name and address of each participant in the study. Any party who commissions such a study shall advise the other party to the case, as well as the court, in writing, that such a study occurred. . . . Upon receipt of any jury list, the party who commissioned the study shall immediately cross-reference the jury list with the identities of the participants and advise the other party and the court of any prospective juror who participated in any study. Before jury selection, the party who commissioned the study shall provide the names and addresses of all participants in the study to the court in camera."

3rd Eye Surveillance, LLC v. The City of Fort Worth, Texas, 6-14-cv-00725 (TXED January 13, 2017, Order) (Love, MJ)

Tuesday, January 17, 2017

Transferring Venue: How Long Is This Gonna Take?

Filing a motion to transfer venue in a court case can be an important tool for a defendant who wants to move the case to home turf, as it were, or it may turn out to be more beneficial to all parties involved for discovery. But most legal teams are in the dark as to their chances of having such a motion to transfer venue approved by a judge, or how long they might have to wait in order to receive a judgment on such motions.

Data compiled using the patent litigation analysis tools available through Docket Navigator helps to shed some light on this situation. Overall, more motions to transfer venue have been granted than have been denied in recent years. For the eight-year period from 2008 until late-2016, a total of 1,079 motions to transfer venue have been granted in patent infringement suits being litigated in U.S. district courts. By contrast, 974 motions to transfer venue were denied during the same period of time. The following charts will look at district courts with ten or more motions to transfer venue filed during that time period.

Not every U.S. district court takes a friendly view of motions to transfer venue, and one of the places where more motions are denied than granted is the U.S. District Court for the Eastern District of Texas (E.D. Tex.). During the eight years that were surveyed, a total of 377 motions to transfer venue were denied in E.D. Tex. while the court only granted 279 such motions. These figures also point out the massive number of patent infringement cases playing out at E.D. Tex. Second to E.D. Tex. in terms of the number of motions either granted or denied is the U.S. District Court for the District of Delaware (D. Del.), where 107 motions to transfer venue were denied and 88 such motions were granted over an eight year period.



Although E.D. Tex. and D. Del. see the largest number of motions to transfer venue, other district courts take much longer to render a decision on those same motions. On average, it takes 283.7 days for a motion to transfer venue to be denied in the U.S. District Court for the Northern District of New York (N.D.N.Y.). Trailing N.D.N.Y. in this regard is E.D. Tex., which has an average pendency of 219.4 days from the date the motion is filed until it is denied, and D. Del., where the average pendency is 199.5 days. For motions to transfer venue which are granted, D. Del. (184.5 days) and E.D. Tex. (183.2 days) are at the top of the list for the longest average pendencies from the date the motion is filed. However, also in that mix is the U.S. District Court for the District of Colorado (D. Colo.), where the average pendency on a motion to transfer venue is 184.3 days for motions which are granted.



The fastest average pendencies on motions to transfer venue which are denied from the date that the motion was filed were seen in the U.S. District Court for the Central District of California (C.D. Cal.), where it took only an average of 51.7 days to deny such a motion. While C.D. Cal. also sees a quick average pendency period of 62.8 days to grant a motion to transfer venue, the quickest average pendency to granting a motion to transfer venue was 61 days in the U.S. District Court for the Eastern District of Virginia (E.D. Va.).



The data analytics available through Docket Navigator give any patent attorney better tools for forecasting a court’s activity, helping them deliver more value to their clients. Legal teams considering a change of court venue will get a much better idea of their chances to do so with this powerful data engine.


Charts made using Docket Navigator's data.
This guest post was written by Steve Brachmann.

Hastily Filed Declaratory Judgment Claim Did Not Violate Rule 11 in Light of PTAB Institution Decision​

The court denied a patentee-defendant's motion for Rule 11 sanctions because plaintiff's claims for declaratory relief of noninfringement and invalidity were not frivolous in light of the PTAB's decision to institute inter partes review of a related claim. "Although [defendant] criticizes [plaintiff] for not providing an attorney declaration testifying about what inquiry was conducted in the two days between the receipt of [defendant's] notice-of-infringement letter and the filing of [plaintiff's] complaint seeking declaratory relief, that failure is immaterial so long as [plaintiff's] complaint was not legally or factually baseless from an objective perspective. Here, [defendant] claims that . . . [plaintiff's] contention that claim 4 of the [patent-in-suit] was invalid was not factually supported. But that position cannot be sustained given the results of [a related] inter partes review. . . . [T]he PTAB's grant of review on claim 1 implicates the validity of claim 4, because claim 4 is, in effect, part of the process described in claim 1, only in reverse. [Defendant's] argument that 'dependent or multiple dependent claims [i.e., claim 4] shall be presumed valid even though dependent upon an invalid claim [claims 1-3],' does not establish [plaintiff's] challenge to claim 4 is frivolous."

Craigslist, Inc. v. EveryMD.com LLC, 3-16-cv-03421 (CAND January 12, 2017, Order) (Chen, USDJ)

No Stay of TC Heartland Pending Supreme Court Review​

The court denied defendant's motion to stay pending the Supreme Court's resolution of its appeal of the court's transfer order because the interests of justice, prejudice to plaintiff, and age of the case weighed against a stay. "I have decided all pending motions. . . . Even if the result of the Supreme Court's decision is a determination that this case must be transferred to another District, the case will still need to be tried. I have presided over the case since its inception. The directive . . . that I 'administer[]' this case (like all others) with a goal of 'secur[ing] [its] just, speedy, and inexpensive determination,' is far better served by me deciding the ripe motions rather than leaving numerous loose threads for (potentially) a judge in another District to have to untangle. . . . [T]hese parties are competitors. . . . [T]his case is already three years old. . . . It needs to go to trial soon."

Kraft Foods Group Brands LLC v. TC Heartland LLC et al, 1-14-cv-00028 (DED January 12, 2017, Order) (Stark, USDJ)