What Constitutes Sufficient Factual Allegations for an Induced-Patent-Infringement Claim?

Order Granting Defendants’ Motion to Dismiss with Leave to Amend, CyWee Group Ltd. v. HTC Corp., W.D. Wash. (March 1, 2018) (Judge James L. Robart)

Actively inducing patent infringement incurs liability under 35 U.S.C. § 271(b).  Inducement occurs when the alleged inducer knew of the patent, knew that the induced act would infringe the patent, and intended to bring about the infringement.  Under the plausibility requirement, a complaint incorporating an infringement analysis of a seller’s product can satisfy the requisite knowledge of the patent and of the infringing act.  A recent opinion from the Western District of Washington, however, shows that alleging the requisite intent requires more than alleging that a defendant created and distributed general marketing and technical materials about the accused product.  Rather, to survive a motion to dismiss, a complaint must include facts connecting the defendant’s acts or materials to an infringing use of the patent. READ MORE

Applying a Law of Nature to Getting Desired Results Does Not Confer Patent Eligibility

Order Granting Motion for Summary Judgment of Invalidity, American Axle & Manufacturing, Inc., v. Neapco Holdings LLC and Neapco Drivelines LLC, (D. Del. Feb. 27, 2018) (Judge Leonard P. Stark)

In a recent patent infringement action filed in the District of Delaware, plaintiff American Axel & Manufacturing, Inc. (“Plaintiff”) and defendants Neapco Holdings LLC and Neapco Drivelines LLC (collectively “Defendants”) filed cross-motions for summary judgment on the issue of patent eligibility under 35 U.S.C. § 101. The patent at the core of the cross-motions was Plaintiff’s U.S. Patent No. 7,774,911 (“the ‘911 patent”), which disclosed a method for attenuating driveline vibrations transmitted through a shaft assembly in a vehicle.[1] Defendants argued that the asserted claims of the ‘911 patent were invalid because they were not directed to any specific discrete liner design but rather to a solution to the problem of attenuating shell and bending mode vibrations generally, by applying physics. The Court agreed with Defendants and found the patent invalid. READ MORE

Texas Supreme Court First to Extend Attorney-Client Privilege to Patent Agents

In re Andrew Silver, Tex. (February 23, 2018) (Justice John Phillip Devine)

Last week, the Texas Supreme Court ruled that a client’s communications with his registered patent agent are protected under the attorney-client privilege as defined by the state’s evidence rules. READ MORE

Contractual and Fiduciary Duty of Loyalty May Estop Patent Invalidity Defense

Order Denying Defendant’s Motion to Dismiss, GemShares LLC., v. Lipton et al., Case No. 1-17-cv-06221 (N.D. Ill. February 11, 2018) (Judge Matthew F. Kennelly)

Part owners of the patentee-plaintiff company lose Rule 12(b)(6) motion to dismiss by virtue of that partial ownership interest.    READ MORE

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

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

On Thursday, February 8, 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

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