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.
When parties settle a case, they usually want to put it all behind them and move on. But what if the court’s decisions still hang over their heads? Protegrity thought it could erase the past by agreeing with its opponent to have an undesirable ruling vacated, but it learned the hard way that such a result is outside the parties’ control. READ MORE →
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 →
Much can change procedurally while a patent case is stayed, especially if the parties continue to litigate the patent in other jurisdictions. In Richtek, the parties returned to district court after the conclusion of reexamination proceedings and two related ITC investigations. Defendant uPI moved to amend its invalidity contentions, originally served in December 2010, to account for claim interpretations that the plaintiff Richtek disclosed during reexamination. Judge Alsup permitted the amendment, which added new prior art references, while distinguishing a decision he had rendered a month earlier which precluded Richtek from adding new accused products. READ MORE →
Questions of obviousness can present some of the most difficult and fact-intensive issues in patent litigation, turning on factors that include the scope and content of the prior art, the differences between the prior art and the patented invention, the knowledge of one of ordinary skill, and the so-called secondary considerations of non-obviousness. The latter—which include evidence drawn from a variety of factors such as commercial success, long-felt but unsolved need, and failure of others—can be highly probative of validity at trial, since they provide the jury context as to the value of a patented invention. 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 →
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.
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).
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. READ MORE →