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
Order Granting Judgment on the Pleadings, Whitepages, Inc. v. Isaacs, et al., Case No. 16-cv-00175-RS (Judge Richard Seeborg)
Litigants continue to use Alice and its progeny to cull the ranks of patents asserted in the Northern District. In Whitepages v. Isaacs, Judge Seeborg considered a patent that purported to bring caller ID to mobile phones and the internet. His opinion holding the patent invalid mentions factors that are becoming familiar hallmarks of patents vulnerable to § 101 challenges: reciting longstanding business practices, invoking industry-standard technology, and requiring no more than generic use of computers. READ MORE
Order Denying Motion for Judgment on the Pleadings, Cave Consulting Group, Inc. v. Truven Health Analytics Inc., Case No. 15-cv-02177-SI (Judge Susan Illston)
It has been just over a year since Judge Illston last decided a motion asserting a patent is invalid under 35 U.S.C. § 101. Last time, Judge Illston’s order in Bascom Research v. LinkedIn was part of an initial wave of post-Alice ND Cal decisions invalidating claims that covered abstract ideas. This time, the patent defendant didn’t fare as well. 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
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
Today, the U.S. Patent and Trademark Office published its 2014 Interim Guidance on Patent Subject Matter Eligibility (“2014 Interim Guidance“). This Guidance supplements the June 25, 2014, Preliminary Examination Instructions in view of the Supreme Court decision in Alice Corp., and supersedes the March 4, 2014, Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products, issued in view of the Supreme Court decisions in Myriad and Mayo.
Software patents are dropping like flies. Last week, we reported the first decision in the Northern District to invalidate a software patent under 35 U.S.C. Section 101 in the wake of Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). In a similar ruling this week, Judge Ronald Whyte found that a patent held by Cogent Medicine, Inc. failed to claim patent-eligible subject matter, and granted a 12(b)(6) motion dismissing Cogent Medicine’s patent infringement claims under section 101 in Cogent Medicine, Inc. v. Elsevier Inc., Nos. C-13-4479, -4483, -4486 (N.D. Cal. Oct. 3, 2014).
Order Granting Defendant’s Motion to Dismiss Infringement Claims for Invalidity, Open Text S.A., v. Alfresco Software LTD, et al., Case No. 13-cv-04843-JD
Thanks to the Supreme Court, Defendants may have gained a powerful pre-Markman procedural tool to attack the validity of certain kinds of patents (particularly business method and software patents) that arguably embody abstract ideas. Last week, Judge James Donato granted a Rule 12(b)(6) motion in advance of claim construction and issued the first reported decision in the Northern District invalidating patent claims pursuant to 35 U.S.C. Section 101 under the Supreme Court’s new standard for patentability announced last term in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Both the substantive and procedural aspects of the case show that Alice may have significantly impacted the role Section 101 plays in patent litigation.