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Customer Suits Alone Do Not Confer Declaratory Judgment Jurisdiction

DataTern, Inc. sued Microsoft’s and SAP’s customers alleging infringement of U.S. Patent Nos. 5,937,402 and 6,101,502.  Microsoft and SAP then brought actions against DataTern seeking declaratory judgments of non-infringement.  The Federal Circuit affirmed the district court’s finding that it had jurisdiction over all claims except Microsoft’s claims against the ’402 patent, because DataTern’s claim charts […]

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Writ of Mandamus in Patent Infringement Venue Transfer Motion

AVS sued Toyota and Gulf States—a Texas-based Toyota dealer—for patent infringement in the Eastern District of Texas.  Toyota and Gulf States filed a motion (1) to sever the claims against Gulf States; (2) to transfer the claims against Toyota to a more convenient forum under 28 U.S.C. § 1404(a); and (3) to stay the claims […]

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Fee Award Under 35 U.S.C. § 285 Supported by Evidence of Subjective Bad Faith and Objective Baselessness

Awards of attorneys fees under 35 U.S.C § 285 may seem difficult to obtain, given the dual requirement of proving a party’s subjective bad faith, as well as the objective baselessness of its position.  However, as demonstrated in Gabriel Technologies Corp. v.  Qualcomm Inc., No. 2013-1205 (Mar. 18, 2014), some conduct is so egregious that […]

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FRCP 12 and 35 U.S.C. § 101

Three recent district court cases illustrate the viability, and the limitations, of bringing a motion to dismiss and/or for judgment on the pleadings, under Federal Rule of Civil Procedure 12, based on a failure of patent claims to define eligible subject matter under 35 U.S.C § 101.  In each of these cases, courts considered the […]

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Knowledge Not Enough for Induced Patent Infringement

A retailer’s Rule 12(b)(6) motion to dismiss a claim of induced patent infringement has been granted where the only allegation of intent to induce infringement rested on the retailer’s alleged knowledge that the product’s user manual instructed customers to perform infringing acts.  Tierra Intelectual Borinquen, Inc. v. ASUS Computer Int’l, Inc., No. 2:13-CV-38-JRG (E.D. Texas […]

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Does a “Covered Business Method” Patent Review Warrant a Stay of Litigation?

A court in the Eastern District of Texas has declined to stay litigation where the United States Patent and Trademark Office is conducting a “Covered Business Method” review of the patent-in-suit under Section 18 of the America Invents Act.  VirtualAgility, Inc. v. Salesforce.com, Inc., Civil Action No. 2:13-cv-00011-JRG (E.D. Texas Jan. 9, 2014). The court […]

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Another Rule 12 Holding that Patent Claims Are Invalid Under Section 101

A district court has held invalid patent claims directed to “facilitating evaluation, in connection with the procurement or delivery of products or services, in a context of at least one of (i) a financial transaction and (ii) operation of an enterprise.”  Lumen View Technology LLC v. Findthebest.com, Inc., No. 13 CIV. 3599 (DLC) (S.D.N.Y. Nov. […]

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Pleading Indirect and Willful Patent Infringement Requires Specific Allegations

Claims for induced, contributory, and willful patent infringement were dismissed (without prejudice) because the plaintiff failed to allege facts sufficient to support its claims.  Unisone Strategic IP, Inc. v. Life Techs. Corp., No. 3:13-cv-1278-GPC-JMA (S.D. Cal. Oct. 22, 2013).  The plaintiff had alleged infringement of U.S. Patent No. 6,996,538, directed to “[a] system and method […]

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When Can a Patent Plaintiff Amend Infringement Contentions?

Where a plaintiff demonstrated that it could not have known of certain alleged bases for infringement prior to inspecting a defendant’s source code, the court allowed the plaintiff to add certain claims to its infringement contentions.  United States Ethernet Innovations v. Acer, Inc., No. C 10-3724 CW (N.D. Cal. Oct. 11, 2013). Intel had intervened […]

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Decision on Patent-Eligibility of Real Estate Valuation Claims Deferred Until After Claim Construction

Noting the ambiguity of the Federal Circuit’s recent CLS Bank and Ultramercial decisions, a district court has denied without prejudice a defendant’s motion to dismiss. Zillow, Inc. v. Trulia, Inc., No. C12-1549JLR (W. D. Wash. Sept. 6, 2013). The motion had been brought seeking a ruling that claims that United States Patent No. 7,970,674 did […]

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