Patentability

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

An Ounce of Prevention: Patent Claiming Anti-Malware Software Is Not Abstract

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

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

A 2014 Recap

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.

READ MORE

U.S. Patent Office Issues Updated Guidance on Patent Subject Matter Eligibility

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.

READ MORE

12 Steps: May Still Not Be Enough For 101

Gametek LLC v. ZYNGA Inc., Case No. 13-2546 (Judge Seeborg) (Related to Case Nos. 13-3089; 13-3472; and 13-3493)

Not every patent case must be litigated on the merits through summary judgment or trial in order to end with a finding of invalidity.  Rather, at least when challenging § 101 patent eligibility, an early Rule 12(c) motion for judgment on the pleadings can stop a case before it even takes off, as Judge Seeborg’s April 25, 2014 Order, finding Plaintiff Gametek’s sole asserted patent invalid, makes clear.

The case involved U.S. Patent No. 7,076,445 directed to facilitation of in-game purchases “without interrupting the gaming action.”  Representative claim 1 recites “twelve steps” which Plaintiff believed to establish patent eligibility: READ MORE

Decoding Sections 101 and 271(a) in France Telecom v. Marvell

France Telecom S.A. v. Marvell Semiconductor Inc., Case No. 12-cv-04967-WHO (Judge William Orrick)

Section 101 motions have become increasingly popular, particularly in the cases running up and through the Supreme Court’s Bilski v. Kappos decision in 2010.  Indeed, some Judges have suggested that Section 101 issues should be highlighted early, as they may be the basis for early case resolution.  However because of the highly claim specific nature of these motions, forecasting the odds of prevailing on these motions is anything but easy. READ MORE