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 →
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 →
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 →
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—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 →
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 →
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.”
“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.
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.