Monday, December 11, 2017

Venue Statute Does Not Require Nexus Between Infringing Activity and Regular and Established Place of Business

The court denied defendant's motion to dismiss or transfer for improper venue and rejected defendant's argument that there must be a nexus between its action of infringement and its regular and established place of business in the district. "Defendant devotes much of its motion to the argument that 'the patent venue statute requires a connection between the alleged acts of infringement and the regular and established place of business.' It supports this argument by reading into the statute a level of ambiguity, invoking the 'policy underlying the patent venue statute,' and examining the provision’s legislative history. The Court need not consider these contentions, because it concludes that the plain language of the statute does not include a nexus requirement. Courts should 'ordinarily resist reading words or elements into a statute that do not appear on its face,' and this is one of the many cases where that is true."

Plexxikon Inc. v. Novartis Pharmaceuticals Corporation, 4-17-cv-04405 (CAND December 7, 2017, Order) (Gilliam, USDJ)

Damages Opinion Based on Composite Royalty Rate Excluded as Unreliable

The court granted in part defendants' motion to exclude the testimony of plaintiffs' damages expert because his royalty base was based on a composite rate. "Defendants explain that to reach his damages calculation, [the expert] applies a royalty base that includes units accused under any asserted patent to a royalty rate with contributions from every asserted patent. . . . I do not believe that use of a composite rate is consistent with Federal Circuit case law. . . . [The expert's] royalty rate assigns to each accused product the same per-unit royalty regardless of how many patents that product is accused of infringing. Thus, his analysis results in a damages calculation that overcompensates Plaintiffs and does not appropriately reflect the inventions' footprints in the marketplace."

MiiCs & Partners, America, Inc. et al v. Funai Electric Co., Ltd. et al, 1-14-cv-00804 (DED December 7, 2017, Order) (Andrews, USDJ)

Friday, December 8, 2017

Nineteen Work-at-Home Employees Does Not Establish Regular and Established 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 through its work-at-home employees who resided in the district. "Although [defendant] has nineteen employees who are permitted to work from their individual residences in the Eastern District of Texas, the Court finds that none of these residences are 'places of the defendant'. . . . [Defendant] does not lease, or own any portion of these employees’ homes in the Eastern District of Texas. [Defendant's] employees do not regularly maintain physical inventory in this District, are 'free to live where [they] cho[o]se as far as [the defendant] [is] concerned,' and do not receive reimbursements and support conditioned on their location within this District. . . . [Defendant] emphasizes that '⁠[t]he territory to which [its] sales teams are assigned often bears little relation to the team members' place of residence.'"

Uniloc USA, Inc. et al v. Nutanix, Inc., 2-17-cv-00174 (TXED December 6, 2017, Order) (Gilstrap, USDJ)

Thursday, December 7, 2017

Asserted Claims of Email Transmission Patent Invalid Under 35 U.S.C. § 101

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s email transmission patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The Court finds that [the patent] is directed to the general concept of using an intermediary to exchange messages, and is therefore directed to an abstract idea. The idea of using an intermediary to exchange messages is not a foreign concept. . . . While [plaintiff] argues that the purpose of 'claim 1 is to benefit the interface service computer system that is providing the communications,' the [patent] does not recite any specific method through which an interface server’s website is able to retain visitors to its site, or that the purpose of the [patent] is to result in this benefit. . . . The patent provides no meaningful limitations on the functions of these components; instead, they form an existing technological environment in which the abstract idea of using an intermediary to exchange messages or information may be accomplished." LLC v., Inc., 2-17-cv-05573 (CACD December 5, 2017, Order) (Birotte, Jr., USDJ)

Wednesday, December 6, 2017

Software-Based Algorithm Claims of Garage Door Opener Patent Invalid Under 35 U.S.C. § 101

Following an evidentiary hearing, the ALJ determined that one of complainant's garage door opener patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The language of the claim is itself dispositive, but the [asserted] patent’s focus on calculation is strong circumstantial evidence that claim 15 is directed to a software-based routine, or algorithm -- an ineligible concept under 35 U.S.C. § 101. . . . [T]he only structures implicated by these claims are a movable barrier and motor, but even then, they are not actually part of the claimed methods. Rather, they are recited to explain the identity of data values like 'characteristic force value' and 'motor operation compensation value'. . . . Setting aside whether or not Respondents omitted discussion of key limitations, I find the [asserted] patent claims can be performed in the human mind because of their precise wording."

Access Control Systems and Components Thereof, 337-TA-1016 (ITC November 21, 2017, Order) (Pender, ALJ)

Tuesday, December 5, 2017

Venue For Hatch-Waxman Claim is District of ANDA Filing, Not Where Filer Intends to Market the Accused Product

The court granted defendant's motion to dismiss plaintiffs' ANDA infringement action for improper venue because defendant did not file its ANDA in the district. "⁠[T]he plain language of the patent venue statute provides that venue is proper 'where the defendant has committed acts of infringement.' In the Hatch-Waxman Act context, because the generic drug is not yet being marketed, the only act of infringement that actually has occurred is the filing of the ANDA. . . . The commencement of a lawsuit effectuates the purpose of the Hatch-Waxman Act; it is not necessary to recognize additional speculative acts of infringement to give the statute effect. . . . This Court declines to find that an act of infringement occurs wherever an ANDA filer intends to market the accused product."

Galderma Laboratories, LP et al v. Actavis Laboratories UT, Inc. et al, 3-17-cv-01076 (TXND November 17, 2017, Order) (Lynn, USDJ)

Monday, December 4, 2017

Continuing Litigation of Non-Viable Case to Avoid § 285 Motion Favors Award of Attorney Fees

Following plaintiff's voluntary dismissal, the court granted defendant's motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics were exceptional. "⁠[Plaintiff's] behavior is consistent with the filing of patent infringement actions to force settlements with no intention of testing the merits of the claims. Its lawsuit against [defendant] was one of 20 lawsuits filed the same day concerning the [same] Patent. Most of the cases promptly settled for between $3000 to $15,000. . . . [B]efore a ruling on [defendant's] § 101 motion, [plaintiff] offered to walk away provided that [defendant] would forego its right to seek fees. . . . [Defendant] countered it would agree to a dismissal, but would not waive its right to seek fees under § 285. [Plaintiff] refused that offer, which suggests exposure to an 'exceptionality' finding was on its mind. . . . This shows the driving factor in its decision not to dismiss the case was its exposure to attorney’s fees, not the underlying merits of its position. . . . Simply put, refusing [defendant's] offer made no sense if [plaintiff] believed it had a meritorious case and that a § 285 motion would have been frivolous."

Opal Run LLC v. C&A Marketing, Inc., 2-16-cv-00024 (TXED November 30, 2017, Order) (Payne, MJ)