Archive | Civil Procedure

No Interlocutory Appeal for Adverse Alice Ruling

Having denied a defendant’s motion to find patents invalid under 35 U.S.C. § 101, Delaware’s Judge Robinson has now denied the defendant’s request for interlocutory appeal under 28 U.S.C. § 1292(b).  Improved Search, LLC v. AOL, Inc., No. 1:15-cv-00262 (D. Del. May 6, 2016).  Judge Robinson explained that interlocutory appeal should be exceptional, and should […]

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Patent Invalidation under Alice Held Not to Justify Fee Award

A declaratory judgment plaintiff, having successfully invalidated patent claims under 35 U.S.C. § 101 and the Alice case, has lost a motion for its attorney fees under 285 U.S.C. § 285. Clarilogic, Inc. v. FormFree Holdings Corp., No. 3-15-cv-00041 (S. D. Cal. April 27, 2016).  The court had earlier granted a motion for summary judgment […]

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Plaintiff Stuck with Collateral Judgment of Patent Invalidity Under Alice in More Ways Than One

Not only did collateral estoppel apply from a prior finding of patent invalidity under 35 U.S.C. § 101, but a plaintiff was denied a motion to voluntarily dismiss its claim of patent infringement, the court expressly leaving open the specter of a fee award to the defendant as a prevailing party under 35 U.S.C. § […]

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Federal Circuit Recognizes Privilege For Patent Agents

The Federal Circuit recently held that there is an independent patent agent privilege, explaining that because prosecuting a patent application before the US Patent and Trademark Office (USPTO) constitutes the practice of law, communications with non-attorney patent agents are privileged. In re: Queen’s University at Kingston, No. 2015-145, 2016 U.S. App. LEXIS 4259 (Fed. Cir. […]

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More Technical-Seeming Claims Held Patent-Ineligible Under 35 U.S.C. § 101

Patent claims directed to a “payload delivery system” for delivering payloads, i.e., data, “via one or more communication networks” have been held invalid under 35 U.S.C. § 101.  Novo Transforma Tech., LLC v. Sprint Spectrum, L.P.,  Civil Action No. 14-616-RGA (D. Del. Sept. 2, 2015).  As with many recent Section 101 cases, the court granted […]

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Stay Granted Based on Inter Partes Review Petition Filed Four Months Before Patent Lawsuit

Judge Gilstrap in the Eastern District of Texas has granted a defendant’s motion for a stay based on institution of an Inter Partes Review (IPR) proceeding.  MemSmart Semiconductor Corp. v. AAC Technologies Pte. Ltd., No. 2:14-CV-1107-JRG (E.D. Texas July 10, 2015).  The defendant was able to present strong facts in support of a stay.  Notably, […]

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Divided Infringement Results in Judgment on Pleadings on Induced Infringement

Finding that a complaint failed to sufficiently allege that the defendant exercised direction or control over all asserted steps of a method patent claim, a court has dismissed a complaint alleging induced infringement under FRCP 12(c). Robert Mankes v. Vivid Seats, Limited, No. 5:13-CV-717-FL, 2015 U.S. Dist. LEXIS 24327 (E.D.N.C. Feb 26, 2015). Based on […]

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Patent-Eligibility Can Be Deferred Until Claim Construction

Although many courts are often willing to rule on patent-eligibility under 35 U.S.C. § 101 at the pleadings stage, sometimes courts are more comfortable deferring the issue until claim construction. An interesting recent example is Mobile-Plan-It LLC v. Facebook Inc., no. 3:14-cv-01709 (N.D. Cal. April 20, 2015), where patent claims directed to a “method for […]

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A District Court’s Denial of a Motion to Stay Is Not Appealable After a Petition Seeking a CBM Review Proceeding at the PTAB Has Been Filed (but not Granted)

The Federal Circuit has dismissed, for lack of subject matter jurisdiction, a denial of a motion to stay where petitions had been filed, but not granted, seeking covered business method (“CBM”) reviews  at the Patent Trial and Appeal Board (“PTAB”). Intellectual Ventures II LLC v. JPMorgan Chase & Co., 2015 U.S. App. LEXIS 5204 (Fed. […]

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