Form 18 appended to the Federal Rules of Civil Procedure provides a form complaint for pleading patent infringement. To the chagrin of many defendants, Form 18 has been used to justify very bare-bones complaints of patent infringement even after the Supreme Court’s Iqbal and Twombley decisions requiring more detailed pleading. Now Form 18 may be […]
Archive | Civil Procedure
Patent “Assignee” Lacks Standing to Sue
Clouding IP lacked standing to sue to enforce a set of patents it had purportedly purchased under a “Patent Assignment Agreement” because rights retained by Symantec, the seller, prevented Clouding from obtaining “substantially all rights” in the patents. Clouding IP LLC v. AT&T Inc., No. 1:13-cv-01342 (D. Del. Jul 28, 2014). The Court’s consideration of […]
Attorneys’ Fees Awarded in Light of Octane Fitness
A plaintiff had licensed a patent to defendants, including a right to sub-license, but excluded certain uses of the claimed method. The plaintiff then sued the defendants based on those excluded uses. The defendants were awarded attorneys’ fees under 35 U.S.C. § 285 where, among other things, the plaintiff had attempted to enforce the patent […]
Failure to Meet Indirect Patent Infringement Pleading Standard (and Possible Rule 11 Question)
By Charles Bieneman on May 29, 2014 in Civil Procedure, Notice Pleading Patent Infringement, Rule 11
Judge Gilstrap in the Eastern District of Texas has granted defendants’ motion to dismiss a complaint of indirect patent infringement where the plaintiff failed to meet the applicable pleading standards. Babbage Holdings, LLC v. Activision Blizzard, Inc., No. 2:13-CV-750 (E.D. Tex. May 15, 2014 (and seven related cases). Further, because Babbage’s original, first amended, and […]
A Rare Case? Motion for Judgment on the Pleadings Granted Based on Unpatentable Subject Matter
By Charles Bieneman on May 4, 2014 in Civil Procedure, Litigation, Patentable Subject Matter, Software Patents
Patent claims directed to “the offer and sale of items to players in the course of gaming” recited an “unpatentable abstract idea,” held the court in Gametek LLC v. Zynga, Inc., No. CV 13-2546 RS (N.D. Cal. April 25, 2014). This holding came in response to defendants’ motions under FRCP 12 for judgment on the […]
PTAB Finding of Invalidity Does Not Trump Federal Court’s Final Judgment
By Charles Bieneman on April 23, 2014 in America Invents Act, Civil Procedure, Covered Business Method Patent Review, Litigation
The Covered Business Method Patent review procedure created by the America Invents Act may be a powerful tool for attacking business method patents, but CBM cannot overcome all court proceedings, at least if Versata Software, Inc. v. SAP America, Inc., No. 2:07cv153-RSP (April 21, 2014), is any guide. In this case, Magistrate Judge Payne held […]
Customer Suits Alone Do Not Confer Declaratory Judgment Jurisdiction
By Charles Bieneman on April 8, 2014 in Civil Procedure, Declaratory Judgments, Litigation, Software Patents
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 […]
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 […]
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 […]