Abstract Ideas

Uber’s Section 101 Motion to Dismiss Defeated by “Inventive” Ordered Combination

Order Denying Defendant’s Motion to Dismiss, X One, Inc. v. Uber Technologies, Inc., Case No. 16-CV-06050-LHK (Judge Lucy H. Koh)

Uber Technologies, the transportation network giant, recently lost a motion to dismiss a two-patent infringement suit when the Court found that Plaintiff X One, Inc.’s patent claims are directed to patentable subject matter under 35 U.S.C. § 101. The Court held that the individual claim elements are conventional, but as an ordered combination provide an inventive concept sufficient to defeat a motion to dismiss. READ MORE

An Ounce of Prevention: Patent Claiming Anti-Malware Software Is Not Abstract

Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 13-cv-03999 (11.20.15 Judge Beth Freeman)

It looks like the battle between non-practicing entity Finjan and defendant Blue Coat Systems is coming to an end, at least in the Northern District. Since the last time we posted about this case (here and here), the jury has found Blue Coast Systems infringed five of the asserted patents and awarded nearly $40M in damages. READ MORE

Access to Continued Litigation Denied: Method for Intrusion Detection Found Invalid Under Section 101

Order Granting Motion for Judgment on the Pleadings, Protegrity USA, Inc., et al. v. Netskope Inc., Case No. 15-cv-02515-YGR (Judge Yvonne Gonzalez Rogers)

The NorCal IP Blog has extensively covered the increasing popularity of 35 U.S.C. §101 motions post-Alice, most recently here. In Protegrity, Judge Rogers continued the trend of increased judicial scrutiny of software patents in granting Netskope’s motion for judgment on the pleadings under FRCP 12(c). Judge Rogers granted the motion without the benefit of Markman proceedings or substantial discovery, just eight months after Protegrity filed its complaint. READ MORE

Second Bite at Invalidity Proves Fruitless

Order Denying Motion for Judgment on the Pleadings, Klaustech, Inc. v. AdMob, Inc., Case No. 10-cv-05899-JSW(Judge Jeffrey S. White)

As noted previously on Orrick’s blog, here, here, and here, 35 U.S.C. §101 motions are gaining increasing popularity post-Alice due in part to their high success rate. In this case, however, AdMob was unsuccessful in its effort to invalidate the at-issue patent after it survived Ex Parte Reexamination proceedings. Ex Parte Reexamination proceedings can only be brought based on patents or printed publications forming either 35 U.S.C. §§ 102 or 103 grounds for rejection, and thus the Patent Office did not during reexamination reach the question of Section 101 invalidity. Nevertheless, Judge White not only agreed with the Examiner’s validity findings, but the findings contributed to his holding that the claims are directed to patent eligible subject matter. READ MORE

March 2015 Recap

March 2015—like January and February—saw decisions on a variety of fronts from ND Cal judges.  ND Cal judges demonstrated their willingness to apply the Supreme Court’s decisions in Nautilus and Alice to invalidate patents on summary judgment.  Nautilus held claims invalid if they “failed to inform, with reasonable certainty, those skilled in the art….”  Judge Alsup applied that reasoning in Aquatic AV, Inc. v. Magnadyne Corp. et al., Case No. C 14-01931, where he found Aquatic’s asserted claims invalid, in part, because the its definition of “hermetically seals” lacked sufficient fixed meeting: “taking our patentee at its word that ‘hermetically seals’ has no fixed meaning.”  READ MORE

HP Fails to Construct a “Concrete” Path to Patentability Under Alice

Order Granting Motion for Summary Judgment, Hewlett Packard Co. v. ServiceNow, Inc., Case No. 14-cv-00570-BLF (Judge Beth Labson Freeman)

Since the Supreme Court decided Alice, district courts have increasingly invalidated patent claims directed to the use of general computers to implement “abstract” ideas.  One strategy for patent owners to demonstrate patent-eligible subject matter [i] and thus survive Alice scrutiny is limiting claim constructions to define the implementing computer structure in a specific, concrete and specialized way.  This is what Hewlett Packard recently attempted, but failed to do, when defendant ServiceNow, Inc. moved for summary judgment of invalidity on the claims in four asserted patents. READ MORE

January/February Recap

It’s interesting to look at the first two months of 2015 against the backdrop of the previous year.  Judge Illston’s orders, for example, suggest that one should not expect much to change in ND Cal judges’ willingness to invalidate patents under Alice (specifically, in her case, a patent for storing “link relationships” between “document objects” in a network) and to stay cases pending IPR (especially when a large number of patents and products are involved).  Magistrate Judge Grewal also followed an approach that we’ve seen before, ruling that both sides in a discovery dispute should make foreign-based party witnesses available for deposition in the Northern District.  Typo Products found itself haunted by the past when Judge Orrick awarded $1 million in sanctions to Blackberry for Typo’s violation of a preliminary injunction.  Meanwhile, Rep. Goodlatte, R-VA, hoped to shake off past failures by reintroducing a version of the Innovation Act bill that died in the Senate last May.

February 2015 was also trial month for the patent litigation between Open Text and Box.  In the preceding weeks, Judge Donato issued several noteworthy decisions, including a Rule 12(c) judgment of invalidity of claims from 5 patents under Alice and a Daubert order excluding the damages opinions of plaintiff Open Text’s expert.  Notwithstanding Open Text’s lack of expert testimony on a reasonable royalty, the jury awarded Open Text $4.9 million in a lump sum (Law360, subscription required).

Over at Patently-O, guest author Andres Sawicki discusses the role of intellectual property in the uniquely Silicon Valley practice of “acqui-hires.” And if all that isn’t enough recap for you, why not revisit our most popular blog posts from 2014?

There Is No “I”(P) in “Team”

Judge Donato Rule 12(c) motion granted; five patents found invalid for claiming an abstract concept: “the unremarkable concept of people working together on a project.”  Open Text S.A. v. Box, Inc. et al. Case No. 13-cv-04910-JD

Open Text S.A. is the Luxembourg subsidiary of Canadian “Enterprise Information Management” provider Open Text Corp.  “Enterprise Information Management” is, generally, the capability to store, share, and classify documents and information, to provide version control and may include enterprise collaboration tools.  Open Text filed originally filed suit against Box. Inc. and Carahsoft Technology Corp., alleging infringement of a dozen patents in the Eastern District of Virginia.  The case was subsequently transferred to the Northern District, where Box is headquartered, and, last week, Judge Donato granted Box’s Rule 12(c) motion on the pleadings, ruling that five of these patents, all sharing a common specification, are invalid under 35 U.S.C. § 101 for claiming patent-ineligible subject matter, specifically, “the unremarkable concept of people working together on a project.”

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If It Looks, Swims and Quacks Like An ABSTRACT IDEA…

Bascom Research, LLC v. LinkedIn, Inc. and Facebook, Inc., Case Nos. 12-cv-6293, 6294 (Judge Susan Illston)

“While the Supreme Court has not precisely defined ‘abstract idea,’ lower courts since Alice have invalidated patents encompassing a broad range of abstract ideas beyond [patentee] Bascom’s proposed scope,” according to Judge Illston in the latest of several recent patent invalidity opinions based on Section 101 out of the Northern District.

Judge Illston’s summary judgment order addressed four patents with claims directed to READ MORE

A 2014 Recap

Most mark the beginning of a new year with a moment of reflection on the past year’s follies and lessons learned. In 2014, there were a fair number of lessons learned regarding pleading, discovery, and how to survive a motion to dismiss. To start off 2015, we look back on some of the decisions from the Northern District that were most popular amongst our readership, and the lessons they provide.

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