District courts have been abuzz with accused infringers asserting invalidity based on ineligible subject matter under section 101. This is a result of evolving jurisprudence developed by the Federal Circuit and Supreme Court over the last few years. Today, that continued with the Supreme Court unanimously holding in Alice Corp. Pty v. CLS Bank Int’l, 573 U.S. ___ (2014) that, for claims drawn to an abstract idea, “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”
Two Wrongs Don’t Make a Right: Supreme Court Declines to Expand the Scope of Indirect Infringement Liability in View of Federal Circuit’s Muniauction Ruling
The United Supreme Court has been a “hot bench” for patent cases. On the same day, it issued two unanimous decisions reversing the Federal Circuit relating to claim definiteness and inducement infringement, the former of which we previously discussed. In the latter, Limelight Networks v. Akamai Tech. No. 12-786, 572 U.S. ___ (2014), the U.S. Supreme Court held that a party cannot be liable for inducing infringement under 35 U.S.C. §271(b) unless there is direct infringement in 35 U.S.C. §271(a). The Court in dicta also suggested that the Federal Circuit may wish to reconsider its prior decision, Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (2008), which held that a party–who does not perform all the method steps–cannot be liable for direct infringement in §271(a) unless it controls or directs another party to complete the other steps.
Section 101 challenges continue to be front and center at the district court level, including three recent decisions in the United States District Courts for the Northern District of California and Eastern District of Virginia which reflect holdings falling on opposite sides of 101 patentability. In France Telecom S.A. v. Marvell Semiconductor Inc., the court denied defendant’s summary judgment motion because it failed to meet the “high level of proof” needed to succeed on an eligibility challenge under section 101. There, the patent involved correcting errors in telecommunication and other signals (caused by noise or interference which distorts the data) known as turbo coding. After summarizing relevant jurisprudence, the court identified the abstract ideas relevant to the subject matter of the patent claims at issue as “error-correction coding” or “decoding digital data elements.” The court then analyzed whether the claims contained “additional substantive limitations that narrow, confine, or otherwise tie [them] down.” Specifically, the court found that they provide “unique and detailed [error-detection coding or decoding] methods . . . or inventive concepts that exceed the prior art, namely, coding in parallel and a novel method of iterative coding.” Thus, the claimed inventions “provide the necessary substantive claim limitations beyond the mere recitation” of abstract ideas. The court also gave the claims a passing grade in the machine-or-transformation test: “[c]laim 1 takes digital data elements and turns them into a distinct series of coded data elements, which Claim 10 in turn decodes.” The court further found relevant (similar to the court in TQP Development we previously discussed) that the purpose of the patent was “to disclose a method for more accurate and efficient data transmission.”
In Sanofi-Aventis Deutschland GmbH v. Glenmark Pharms Inc., the Federal Circuit followed previous precedent in holding that the combination of compounds is not “obvious to try” if unexpected properties are supported by evidence. The patent-at-issue was directed to an antihypertension drug, Tarka®, which is the combination of an angiotension-converting enzyme inhibitor (such as trandolapril or quinapril, both double-ring compounds) and a calcium channel blocker. The jury found that the patent had not been proven invalid and defendant, on appeal, argued that “if a combination of classes of components is already known, all selections within such classes are obvious to try . . . .” The Federal Circuit found that there was substantial evidence supporting the jury’s verdict that obviousness had not been proved by clear and convincing evidence because of the unpredicted “longer-lasting effectiveness” achieved with the drug.
On the heels of CLS Bank Int’l v. Alice Corp. Pty presently before the Supreme Court, the Federal Circuit and district courts in 2014 have continued to issue decisions analyzing computer-implemented inventions under 35 U.S.C. § 101. These courts have generally sought to answer similar questions: whether the claim is an abstract idea; whether this abstract idea preempts all other uses or can be performed in the human mind (or on a pen and paper); and whether the claim contains other limitations to narrow it sufficiently, such as being tied to a specific machine or transforming the data into a different thing.
In their latest effort to curb potential consumer privacy abuses, the Electronic Privacy Information Center and the Center for Digital Democracy are challenging the potential misuse of data about WhatsApp users’ data as a result of WhatsApp’s acquisition by Facebook for $16 billion. WhatsApp is a popular App that allows users to send messages without the regular cost associated with SMS text messaging. According to the complaint, the company “processes over 10 billion messages per day from approximately 450 million users.”
The Eastern District of Texas continues to lead the way with practical and efficient procedures for patent litigations. On February 25, Chief Judge Leonard Davis implemented General Order 14-3 “Regarding Track B Initial Patent Case Management Order.” This Order provides “additional efficiencies and cost savings” for appropriate patent cases, and is designed to complement the existing and now familiar case management procedures and local rules, or so-called “Track A,” case management schemes.
On Thursday, multiple federal law enforcement agencies announced that they have seized infringing knock off NFL® merchandise and Super Bowl® tickets valued at more than $20 million. Agents from both the U.S. Immigration and Customs Enforcement and the Department of Homeland Security, in cooperation with NFL® officials, conducted perhaps the largest Super Bowl® counterfeiting sting ever in what has become an annual tradition.
Two recent District Court decisions provide IP practitioners with guidance about royalty base in patent damages calculations. Last week, in Inventio AG v. Thyssenkrupp Elevator Americas Corp., et. al., 1-08-cv-00874 (D. Del. Dec. 13, 2013), Judge Andrews denied defendants’ motion for summary judgment and motion to strike that plaintiff improperly calculated damages. The defendants argued that plaintiff’s expert incorrectly included revenue from defendants’ service contracts in the damages calculation. However, the court determined that the expert relied on the service contracts to increase the royalty rate not the base. Thus, the court denied the motion. This case provides support that revenue generated outside of the royalty base can still be used to increase the royalty rate, thus potentially achieving higher damages.
Somewhat lost amid the holiday din were the recent amendments to Rule 45 of the Federal Rules of Civil Procedure. These significant changes took effect on December 1, 2013, and simplify some of the procedures relating to subpoenas in Federal court. Issuing a Subpoena: The amendments set forth that the issuing court for all subpoenas is the court where the action is pending. Fed. R. Civ. P. 45 (a).