Federal Circuit Reverses Patent-Ineligibility Ruling on Motion to Dismiss Due to Factual Disputes

Berkheimer v. HP Inc., Fed. Cir. (February 8, 2018)

Last Thursday, the Federal Circuit decided Berkheimer v. HP Inc.  It ruled, for the first time, that a district court had engaged in improper fact finding when deciding a patent claimed ineligible subject matter under the Supreme Court’s Alice Corp. v. CLS Bank decision a motion for summary judgment.  This case has the potential to impact on the common strategy of seeking early dismissals under 35 U.S.C. § 101 and Alice. READ MORE

Too Many ‘Emergencies’ May Lead to Finding a Case to be “Exceptional”

Order Denying EnerPol, LLC’s Emergency Motion to Strike Schlumberger’s Previously Undisclosed Claim Construction Proposal From its Technology Tutorial and Claim Construction, EnerPol, LLC v. Schlumberger Technology Corporation, E.D. Tex. (January 31, 2018) (Judge Rodney Gilstrap)

Almost everyone has heard the story of the boy who cried wolf: a bored shepherd amuses himself by shouting “wolf!” when there was none, laughing every time the villagers rush out to protect his flock. The one time a wolf does actually come to attack, the villagers ignore his call for help because of his previous false alarms.


Attorneys’ Fees and Exceptionality: Two Perspectives from Recent Cases

Memorandum Opinion and Order Denying Attorneys’ Fees Award, Effective Exploration, LLC v. Bluestone Natural Resources II, LLC, No. 2:16-cv-00607-JRG-RSP, E.D. Tex. (January 18, 2018) (Judge Roy S. Payne)

Order Granting, in Part, Motion for Attorneys’ Fees and Costs And Ordering Supplemental Briefing, Lyda v. CBS Interactive, Inc., No. 16-cv-06592-JSW, N.D. Cal. (January 24, 2018) (Judge Jeffrey S. White)

An inventor or company facing patent prosecution from a non-practicing entities (NPE) with borderline frivolous claims has a difficult tactical choice. On the one hand, defending to judgment may serve to deter further NPE suits. On the other, it may be more cost effective to quickly settle nuisance NPE litigation. While this decision turns on a number of factors, one significant concern will always be the likelihood of securing attorney’s fees to make up for the cost of defending the litigation. As the Supreme Court announced in Octane Fitness, 134 S. Ct. 1749, 1756 (2014), the test for awarding attorneys’ fees is whether the opposing party’s conduct has been exceptional, based on the totality of the circumstances. In this post, we examine two recent cases that illustrate what this standard looks like in practice. READ MORE

To Avoid Attorneys’ Fees, Support Your Trial Arguments

Genes Industry, Inc. v. Custom Blinds and Components, Inc., Case No. SACV 15-0476 AG (C.D. Cal. Jan. 29, 2018 Order Re Plaintiff’s Motion for Enhanced Damages and/or Attorneys Fees and Costs).  

The standard for determining when a patent litigation is an “exceptional case” under 35 U.S.C. § 285 such that an award of attorneys’ fees is justified is a deliberately discretionary, open-ended one. Under the Octane Fitness standard, an exceptional case is one that stands out from others with respect to either the substantive strength of a party’s litigating position or the unreasonable manner in which a party conducted itself during the litigation. This opinion provides several guideposts in terms of conduct that should be avoided. READ MORE

Steering Away From Confusion: Despite Advisory Jury Finding, Court Rules No Infringement of DRIVEWISE Trademark

Findings of Fact and Conclusions of Law, Allstate Insurance Co. v. Kia Motors America Inc., C.D. Cal. (December 22, 2017) (Judge James Otero)

In a recent trademark infringement case, Judge James Otero of the Central District of California recently went against an advisory jury opinion and found that the plaintiff, Allstate Insurance Corporation (“Allstate”), failed to show likelihood of consumer confusion. Allstate brought suit against Kia Motor Corporation (“Kia”) in 2016, alleging that its “Drivewise” trademark used in connection with a usage-based insurance program that allows insurers to lower or raise insurances rates based on driving performance was infringed by Kia’s “Drive Wise” driver assistance system, which includes features such as blind spot detection, lane keeping assistance, smart cruise control, and autonomous emergency braking. Following a trial, an advisory jury reached a verdict in favor of Allstate finding a likelihood of consumer confusion. READ MORE

Third Time’s a Charm on § 101

Order Granting Defendant’s Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 101, Cave Consulting Group, Inc., v. Truven Health Analytics Inc., et al. N.D. Cal (December 15, 2017) (Judge Susan Illston)

Truven’s persistence on its § 101 arguments has finally paid off.  After separately denying a motion to dismiss and a motion for summary judgment – both on § 101 grounds (discussed here) – Judge Illston granted Truven’s renewed motion for summary judgment that the asserted claims were unpatentable. READ MORE

Out of Time? Federal Circuit Reverses Course on Review of PTAB Time-Bar Determinations

En Banc Decision Remanding to Panel for Consideration of Merits of Petitioner’s Time-Bar Appeal, Fed. Cir. (January 8, 2018)

The Federal Circuit, sitting en banc, found that the decision of the Patent Trial and Appeal Board (“PTAB”) as to whether a petition for inter partes review (“IPR”) is barred as untimely may indeed be appealed.  Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 8, 2018) (en banc).  This overrules the panel in Achates Reference Publishing Inc. v. Apple Inc., 803 F. 3d 652 (Fed. Cir. 2015). READ MORE

Court Reconsiders and Grants Motion to Transfer for Improper Venue in Light of TC Heartland

Stuebing Automatic Machine Company v. Allan Gavronsky d/b/a Matamoros Machine Shop, et al., S.D. Ohio (June 12, 2017) (Judge Karen L. Litkovitz) 

Under 28 U.S.C. § 1400(b), venue is only proper in a patent infringement suit in a jurisdiction (1) where the defendant resides, or (2) where the defendant has committed acts of infringement and has a regular and established place of business. The Supreme Court’s decision in TC Heartland focused on the first test, holding that a defendant “resides” only in its state of incorporation, not that personal jurisdiction over the defendant exists, as the Federal Circuit previously held. That narrowing of the first test put renewed focus on the second test, in particular whether a defendant maintained a “regular and established place of business.” In the wake of TC Heartland, Judge Karen L. Litkovitz granted the defendants’ motion to transfer six months after she initially denied it. READ MORE

University Waives Eleventh Amendment Sovereign Immunity by Enforcing Patent Rights

The Regents of the University of Minnesota (“Patent Owner”) sued Ericsson Inc. and Telfonaktiebolaget LM Ericsson (collectively, the “Petitioners”) in district court for patent infringement.  When the Petitioners sought inter partes review (“IPR”) to challenge the asserted patents, the Patent Owner moved to dismiss the IPR proceedings arguing that it is a State entity with sovereign immunity under the Eleventh Amendment.  An expanded panel[1] of the Patent Trial and Appeal Board (“PTAB”) held that the Patent Owner waived its sovereign immunity by filing an action in federal court alleging infringement of the challenged patents. READ MORE

Could the Physical Presence of a Party’s Affiliate Make Patent Venue Proper?

Mallinckrodt IP et al. v. B. Braun Medical, C.A. Nos. 17-365-LPS, 17-660-LPS (D. Del. Dec. 14, 2017 Memorandum Order Requiring Venue Discovery).

In this patent infringement action, defendant B. Braun moved to dismiss the action for improper venue, arguing that venue is improper under TC Heartland and In re Cray because B. Braun does not reside in Delaware and does not have a regular and established place of business in Delaware. In response, plaintiff Mallinckrodt argued that that the places of business of any B. Braun entity, including B. Braun affiliates, subsidiaries, or alter egos, may be attributable to B. Braun for venue purposes. READ MORE