Patent Reviews Get Supreme Court Review

In a move that could have major implications for patent litigation in the Northern District of California as well as every other District, the U.S. Supreme Court has decided to take up the issue of whether inter partes reviews and certain other America Invents Act proceedings are unconstitutional because they can result in invalidation of a patent without a jury trial.  We invite you to read a full account, written by our colleague Don Daybell, on Orrick’s website here


Prior Art Take 2: Finjan and Sophos Gear up for a Second Battle on Whether Prior Art Was Publicly Available

Order Denying Finjan, Inc.’s Motion for Summary Judgment, Finjan, Inc. v. Sophos, Inc., Case No. 14-cv-1197 (Judge William Orrick)

In a battle that likely felt like déjà vu for the parties, Finjan for the second time argued its patents were valid over Sophos’s prior art because Sophos failed to produce sufficient evidence of public availability. The first time was in a 2010 Delaware action, when Finjan unsuccessfully made this same argument with respect to similar patents and similar prior art. Those patents were ultimately held invalid based on the prior art. In the present case, Sophos’s invalidity case survived yet again. But Sophos could have had a more resounding victory had it adequately disclosed all of its prior art earlier in the case. READ MORE

Algorithm Optional? A Guide to Computers as Structure in Means-Plus-Function Claiming

Summary Judgment Order, Fortinet, Inc. v. Sophos, Inc., et al., Case No. 13-cv-05831-EMC (Judge Edward Chen)

Means-plus-function claim elements are less common than in the past, due to stricter rules about their scope and requirements for validity. But when they do arise, it is still necessary to know how to deal with them. Judge Chen recently entertained cross-motions for summary judgment on whether a means-plus-function element is indefinite if the specification discloses using a computer but no algorithm. And while Judge Chen ultimately found he could not render summary judgment for either side, his order offers a primer on approaching software-related “means” elements. 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

What a Difference a Few Letters Make – Judge Donato Strikes Patent Claim over Ambiguous Typo, While Sparing Another Through Claim Construction

Order Re: Claim Construction and Invalidity, Altera Corp. v. PACT XPP Tech., AG, Case No. 14-cv-02868-JD (Judge James Donato)

When filing a patent application, make sure to cross your t’s and dot your i’s—and also check for typos and ambiguous antecedents. In a recent order addressing claim construction and a motion for summary judgment on indefiniteness, Judge Donato invalidated a patent claim based on a typographical error, and nearly invalidated a claim for an ambiguous antecedent. 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.”


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

Denied if You Do, Denied if You Don’t

Motions for Leave to Amend denied in whole or in part.  Horus Vision, LLC v. Applied Ballistics, LLC, Case No. 5:13-cv-05460-BLF(HRL); Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Case No. 12-cv-03844-JST

The Northern District of California, like several other districts, has adopted patent local rules which require litigants to state their infringement and invalidity positions nearly at the outset of a case, 14 and 45 days after the initial case management conference, respectively.  These rules are intended to provide each party with the basic legal theories the other side intends to pursue, allowing each to build its case during discovery and engage in informed claim construction.  Once disclosed, a litigant can only modify its infringement or invalidity contentions with the court’s permission, which requires the amending party to make a timely showing of good cause to prove it diligently developed its case.  Even after meeting this burden, a court may still deny leave to amend when the amendments would prejudice the other party.  A pair of decisions this week in the Northern District highlight how motions for leave to amend can play out—and not always the way you think.