Wednesday, March 22, 2017

eBay Listing Is Not eBay’s Offer to Sell​

The court granted defendant's motion for summary judgment that it did not directly infringe plaintiff's bee trap patent because defendant's online marketplace listing was not defendant's offer to sell within the meaning of 35 U.S.C. § 271(a). "[Defendant's] website contained descriptions of the allegedly infringing products and a price at which the items could be obtained. As [plaintiff] observes, [defendant] tells users that bidding on a product creates a contract that obligates the bidder to purchase the product. . . . [Defendant] explicitly identifies a 'seller,' rather than a 'supplier,' on each listing, and no evidence is in the record that users pay [defendant] rather than the seller. . . . [T]he context of an exchange on [defendant's online marketplace website] demonstrates that no reasonable consumer could conclude that by bidding on [a] listing, he was accepting an offer from [defendant] itself. [Defendant's] terms of service explicitly advise users that [defendant] is not making an offer through a listing, and . . . [defendant] lacks title and possession of the items listed."

Blazer d/b/a Carpenter Bee Solutions v. eBay Inc., 1-15-cv-01059 (ALND March 20, 2017, Order) (Bowdre, USDJ)

Tuesday, March 21, 2017

Expert’s Consideration of Pre-Issuance Value of Patented Invention Does Not Render Damages Opinion Unreliable​

The court denied defendant's motion in limine to exclude the testimony of plaintiff's damages expert for considering the pre-issuance value of the patented invention. "[T]here is no merit to [defendant's] argument that '[the expert's] opinion regarding the alleged value [of] the [patent’s] invention before it even issued is improper and should be excluded.' The economic data from the period before the issuance of the [patent] provided a sound basis from which to determine the value of the invention that was ultimately patented. . . . A patent does not have to be in existence in order to calculate the value that the invention would have, particularly if others are already practicing the invention in the market when the patent issues. . . . [Defendant] is correct that those earlier sales were not infringing sales, and therefore may not be included as contributing to the assessment of damages. But [the expert] committed no such error. . . . [He] began with the number in dispute and then accounted for several other variables, including deducting noninfringing profits, before ultimately deriving his estimated reasonable royalty rate. The initial number was an essential part of [his] model for calculating damages and is therefore a legitimate and relevant part of his damages analysis."

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED March 17, 2017, Order) (Bryson, CJ)

Monday, March 20, 2017

Market Participant's Subjective Beliefs Not Relevant to Lost Profits Claim​

The court granted a third party customer's motion to quash defendants' deposition subpoenas regarding plaintiff's lost profits claim because the discovery was not relevant. "Defendants argue that showing that [their customer] would not have purchased Plaintiff’s [product] even if the [accused product] was not on the market would defeat Plaintiff’s lost-profits claim to the extent that it is based on Defendants’ sales to [their customer] because it would demonstrate that Plaintiff would not have made the sales 'but for' the [accused product]. . . . Defendants contend that there is no need to look to [a] hypothetical marketplace when evidence about a what market participant would have done is available from the market participant itself -- in this case, [defendant's customer]. . . . The parties have not provided, nor has this Court’s independent research discovered any case law directly addressing the relevance of a market participant’s belief that if the infringing product had not been available, the market participant would have purchased no product rather than purchasing the patented product. . . . [T]he focus is not the subjective desires or retroactive beliefs of market participants, but rather the appropriate focus is the objective analysis of whether other acceptable noninfringing substitutes were available. . . . None of the factors for consideration under either the Panduit test or the two-supplier market test includes contemplation of subjective buying decisions by market participants, which is the information Defendants’ subpoena seeks to elicit."

Cutsforth, Inc. v. LEMM Liquidating Company, LLC et al, 0-12-cv-01200 (MND March 15, 2017, Order) (Brisbois, MJ)

Friday, March 17, 2017

Patent Expiring Prior to Issue Date Has No Enforceable Term​

The magistrate judge recommended granting defendants' motion to dismiss plaintiff's patent infringement claims for one patent-in-suit because the patent expired before it issued. "A patent’s term begins on the date of issuance and ends twenty years after the filing date of the earliest filed non-provisional application to which it claims priority. . . . [One patent-in-suit] expired on June 8, 2015 -- more than a month before it issued on July 28, 2015 -- and therefore it had no enforceable term. . . . If the statute were construed as [plaintiff] proposes, i.e., so that an expired-when-issued patent had some indefinite term extension past the ordinary twenty-year mark to be determined by the Court, then the public would have no notice as to when such patent term would end. Clearly, that cannot be the case."

Bartonfalls LLC v. Turner Broadcasting System, Inc., 2-16-cv-01130 (TXED March 15, 2017, Order) (Payne, MJ)

Implausible Infringement Allegations Subject to Dismissal at Pleading Stage​

The magistrate judge recommended granting defendants' motion to dismiss two of plaintiff's patent infringement claims for failure to state a claim. "Defendants argue that the no plausible construction of the claim term 'TV Channel' results in a uniform resource locator (‘URL’) meeting the TV Channel limitation as alleged. The Court agrees. . . . Having reviewed the parties’ arguments, the specification, and the portions of the prosecution history cited in the briefing, [plaintiff] has no plausible basis for alleging that the plain and ordinary meaning of ‘TV Channel’ (or ‘TV Channel’ properly construed) covers URLs, i.e., a unique address for a web page that makes content addressable on the Internet. The Supreme Court has opined that 'determining whether a complaint states a plausible claim is context-specific, requiring the reviewing court to draw on its experience and common sense.'. . . [T]his case falls squarely into the narrow slice of cases where based on the claims, specification, its experience, and common sense, the Court can readily conclude that plaintiff’s infringement allegations are implausible on their face."

Bartonfalls LLC v. Turner Broadcasting System, Inc., 2-16-cv-01130 (TXED March 15, 2017, Order) (Payne, MJ)

Thursday, March 16, 2017

Computer Virus Protection Patent Not Invalid Under 35 U.S.C. § 101​

Following a jury trial, the court denied defendant's motion for partial judgment that plaintiff’s malware monitoring patent encompassed unpatentable subject matter because the asserted claims did not lack an inventive concept. "[T]he claims recite an inventive concept when taken as an ordered combination and considered in context. The [patent] notes that, prior to its invention, malware protection programs were only able to detect and protect against known viruses and were installed on particular user computers. The [patent] details a new kind of virus protection: one that is located on a network computer, rather than the end-user computer, and which is able to detect unknown viruses by identifying suspicious components in unique and novel code. The [patent] therefore includes a 'non-conventional and non-generic arrangement of known, conventional pieces' such that, when taken as an ordered combination, it recites an inventive concept."

Finjan, Inc. v. Sophos, Inc., 3-14-cv-01197 (CAND March 14, 2017, Order) (Orrick, USDJ)

Wednesday, March 15, 2017

Plaintiff Precluded From Referencing "Presumption of Validity" at Trial​

The court granted defendant's motion in limine to preclude plaintiff from referring to the presumption of validity as unduly prejudicial. "[Defendant] contends that the phrase 'presumption of validity' is potentially confusing to the jury and should not be used at trial. . . . What is clear from the case law . . . is that prohibiting the use of that phrase is not error. . . . In the Court’s judgment, the use of the phrase 'presumption of validity' would add little to the jury’s understanding of the burden of proof on the validity issues. Moreover, the phrase might be confusing to the jury, to the extent that the jury is required to consider both that phrase and the Court’s instructions on the burden of proof. At minimum, the use of the term 'presumption' would require a further definitional instruction by the Court, without leading to any greater insight on the jury’s part as to the nature of the burden of proof on the validity issues. Accordingly, the Court will exclude the use of the phrase 'presumption of validity' and instead will address the burden of proof in its instructions to the jury."

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED March 13, 2017, Order) (Bryson, CJ)