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 […]
Archive | Civil Procedure
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 […]
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 […]
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 […]
Does a “Covered Business Method” Patent Review Warrant a Stay of Litigation?
By Charles Bieneman on January 25, 2014 in Civil Procedure, Patentable Subject Matter, Post Grant Review / Re-examination of Patents
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 […]
Another Rule 12 Holding that Patent Claims Are Invalid Under Section 101
By Charles Bieneman on November 25, 2013 in Civil Procedure, Litigation, Patentable Subject Matter, Software Patents
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. […]
Pleading Indirect and Willful Patent Infringement Requires Specific Allegations
By Charles Bieneman on October 26, 2013 in Civil Procedure, Indirect Patent Infringement, Litigation, Notice Pleading Patent Infringement, Software Patents, Willful Patent Infringement
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 […]
When Can a Patent Plaintiff Amend Infringement Contentions?
By Charles Bieneman on October 20, 2013 in Civil Procedure, Litigation, Patent 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 […]
Decision on Patent-Eligibility of Real Estate Valuation Claims Deferred Until After Claim Construction
By Charles Bieneman on September 25, 2013 in Civil Procedure, Patentable Subject Matter, Software Patents
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 […]
Court Denies Motion for Judgment on the Pleadings That Patent Claims Relating Musical Notations To Color Are Not Patent-Eligible
By Charles Bieneman on September 22, 2013 in Civil Procedure, Patentable Subject Matter, Software Patents
At least at the pleadings stage, a court has declined to hold patent-ineligible patent claims directed to “relating electromagnetic waves to harmonic sound waves.” Michael Sandborn & Mark Sandborn P’ship v. Avid Tech., Inc., No. 11-11472-FDS (D. Mass Sept. 5, 2013). Accordingly, the plaintiff’s lawsuit alleging infringement of U.S. Patent No. 6,930,235 was allowed to […]