Motion to Dismiss

A “Virtual” Home Is Not a Home: Court Sanctions Plaintiffs for “Reckless Disregard” in Deciding the Proper Forum for Their Litigation

Usually, one benefit of being a plaintiff is deciding in what forum to pursue litigation.  Generally, even a foreign-based plaintiff may pursue litigation in a U.S. forum where a defendant may be found or in which there is a substantial connection to the litigation.  There are, however, limits on a plaintiff’s choice of forum, and a recent decision in Tapgerine LLC v. 50Mango, Inc. demonstrates that pushing those limits may result in sanctions. READ MORE

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

Did the Defendant Know? Filing a Complaint Can Sustain the Knowledge Element Required to Maintain a Claim of Induced Infringement

Order Granting Motion to Dismiss and Denying Request for Attorneys’ Fees and Sanctions, Edwin Lyda v. CBS Interactive, Inc., Case No. 16-cv-06592-JSW (Judge Jeffrey S. White)

In a helpful ruling for defendants, Judge White held in a recent order that res judicata prevented a plaintiff from filing a complaint for alleged inducement of patent infringement after a prior suit for direct infringement was dismissed with prejudice.  He held that the filing of the original complaint provided a colorable basis to allege the knowledge element of an inducement claim, and thus there was nothing to prevent the pursuit of an inducement claim in the original case. READ MORE

Defendants in Default: Motions for Default Judgment Must Demonstrate Infringement

Order Staying Case In Part And Denying Motion For Default Judgement Without Prejudice. e. Digital Corp. v. Ivideon LLC, et al. Case No. 15-cv-00691-JST (Judge Jon S. Tigar)

In a recent opinion, Judge Jon Tigar sua sponte stayed the vast majority of a patent infringement case pending the outcome of inter partes review proceedings, and also denied a motion for default judgment that was predicated upon the Defendants’ alleged infringement of two claims not subject to the ongoing proceedings before the Patent Trial and Appeal Board (“PTAB”). The opinion underscores that plaintiffs do not get a “free pass” in proving infringement, but rather must fully establish the predicate bases of a patent claim, even where a defendant has failed to make an appearance. READ MORE

Monkey Business: A Primate Can’t Claim Copyright in Selfies

Order Granting Motions to Dismiss, Naruto, et al. v. Slater, et al., Case No. 15-cv-04324-WHO (Judge William Orrick)

The show business has all phases and grades of dignity, from the exhibition of the monkey to the exposition of the highest art in music or the drama which secures for gifted artists a world-wide fame princes well might envy.”  ~  P.T. Barnum

 Are photographic “selfies” a uniquely human conceit? Parties in a Northern District copyright lawsuit who purport to represent “Naruto” – the crested  macaque monkey who in what might be described as a “primate whim of self-promotion” grabbed the camera of wildlife photographer David John Slater and took  a series of his own “monkey selfies” to the delight of millions who have seen the images –argue “no.” READ MORE

Third Time’s A Charm? Court Denies Motion to Dismiss and Anti-SLAPP Motion

Order Denying Defendants’ Motion to Dismiss and Anti-SLAPP Motion to Strike, Sonus Networks, Inc. v. Inventegry, Inc., C-15-0322 EMC (Judge Edward Chen)

Patent licensing company Inventegry, Inc. recently suffered some setbacks when Judge Edward M. Chen denied its motion to dismiss and Anti-SLAPP motion to strike several claims that plaintiff Sonus brought as part of its declaratory judgment action. READ MORE

Don’t Get Personal

Xilinx, Inc. v. Papst Licensing GMBH & Co. KG (Judge Lucy Koh) (July 9, 2015)

The Supreme Court’s 2014 ruling in Daimler v. Bauman raised the bar to establish personal jurisdiction over a defendant. Daimler has made it substantially more difficult for a foreign corporation to be haled into US courts. While Daimler dealt specifically with the issue of whether the acts of a US-based subsidiary should be imputed to the parent foreign corporation for personal jurisdiction purposes, it generally found that a court only has general personal jurisdiction if the foreign defendant’s affiliations with the forum state are “so continuous and systemic as to render [it] essentially at home in the forum state.” READ MORE

Knowledge Is Key to These Pleadings

Order Regarding Motions to Dismiss, CAP Co., Ltd.  v. McAfee, Inc., Case No. 14-cv-05068, CAP Co., Ltd. v. Symantec Corp., 14-cv-05071 (Judge James Donato)

Further highlighting the inconsistent treatment of Seagate recently noted on this blog, Judge Donato granted MacAfee’s and Symantec’s motions to dismiss CAP’s willful, induced and contributory infringement allegations, holding that failure to plead pre-suit knowledge of the patents-in-suit precludes recovery. The court held, among other things, that Seagate created a per se requirement that a Patentee move for a preliminary injunction in order to collect post-filing enhanced damages. Judge Donato also held that a complaint is sufficient notice to plead induced and contributory infringement based on post-filing knowledge. READ MORE

It’s Not Just What You Know, But When You Know – For Willful Infringement

Motion to Dismiss Willful Infringement Claims granted, Monolithic Power Systems, Inc. v. Silergy Corporation, No. 14-cv-01745-VC (J. Chhabria)

This case centers around three patents which, according to Monolithic Power Systems (MPS), are willfully infringed by the company’s former employee (Dr. Chen) and his new employer (Silergy). Judge Chhabria’s June 18 Order explores not only the reasonableness of MPS’s factual allegations concerning knowledge of the asserted patents, it also touches (but does not resolve) persisting legal questions on what acts constitute willful infringement. READ MORE

Shedding Light on How to Plead Inequitable Conduct

Order Denying Motion to DismissiLife Technologies Inc. v. AliphCom, Case No. 14-cv-03345-WHO

Pleading inequitable conduct—fraud on the Patent Office (PTO) by withholding or misrepresenting material information—can be a tricky exercise when defending against a claim of patent infringement.  Though the Federal Circuit made clear in Therasense v. Becton Dickinson that there is a heightened standard for proving the inequitable conduct, it left open the question of whether this heightened standard also applies to pleading the defense.  Accordingly, parties pleading inequitable conduct are left with uncertainty in how detailed their allegations must be, especially for issues such as the required element of specific intent to deceive the PTO.  Judge William Orrick’s decision in iLife Technologies gives guidance as to this issue. READ MORE