Judge Saylor denied Google’s motion to dismiss on Alice grounds, finding the asserted patents claimed patentable subject matter. Singular filed suit in 2019, accusing Google of infringing three patents relating to computer system architecture that utilizes low precision/high dynamic range processing elements. Judge Saylor analyzed the patentability of the claims in accordance with Alice’s two-step procedure, looking to whether the claims are directed to a patent-ineligible concept that is so abstract as to risk disproportionately tying up the use of the underlying idea, and if so, whether the claims include an inventive concept that is sufficient to ensure the patent in practice amounts to significantly more than a claim on the ineligible concept itself.
Judge Saylor noted that the Supreme Court in Alice had discussed improvements to the functioning of a computer at step two of the inquiry, these types of inventions are not inherently abstract and can be analyzed in the initial step of the inquiry – whether the focus of the claims is on the specific asserted improvement in computer capabilities – in which case the claims are directed to patentable subject matter. He rejected Google’s assertion that the claims were directed to LPHDR arithmetic generally, noting that the claims define the terms “low precision” and “high dynamic range” precisely so as not to cover LPHDR generally. While not expressly construing these terms, judge Saylor noted that when the meaning of a claim term is in dispute in a motion to dismiss, the court must adopt the non-moving party’s construction in analyzing the motion. He further noted that, even subject to Singular’s proposed constructions, the claims may still abstractly cover LPHDR math within that range and thus prove ineligible, but that such a determination would require development of the factual record.
Judge Saylor further noted that, even if the claims were directed to an abstract idea, the remainder of the limitations set forth sufficient non-conventional computer structure to render the claims eligible, at least on the record before it. He did note that, as with the first Alice step, subsequent development of the factual record might change his mind with regard to the second step, which could be asserted on summary judgment.
After Plastipak accused Ice River of infringing ten patents relating to manufacturing lighter-weight plastic bottles, Ice River asserted that four limitations, present in some or all of the asserted claims, were indefinite. Judge Talwani disagreed, finding that the claims and specification adequately defined the meets and bounds of each term.
Ice River sought a finding that the term “neck portion” was indefinite because the claim language defined the portion as “including” several features but did not define where the neck portion began. Judge Talwani noted that the claims consistently indicate that the neck portion extends upwardly from a lower portion, and found the specification and figures resolved any possible ambiguity by clarifying that the neck portion did not extend below the support flange. She further noted that this limitation had been found definite in litigation against a different company by the Eastern District of Virginia, and refused to interpret the term to encompass more based on extrinsic evidence describing generic bottles, finding that Plastipak had acted as its own lexicographer in defining the term in the specification. Interestingly, Plastipak had itself initially included a portion of the bottle below the flange as a part of the neck portion in an initial patent-related disclosure filed in this litigation, and subsequently amended the disclosure to exclude the portion below the flange. Ice River asserted that this showed that Plastipak itself couldn’t discern the meets and bounds of the term, but Judge Talwani discounted it as a mistake, likely made not by Plastipak but instead by its counsel, and noted that it had been corrected without reliance or benefit on the initial disclosure.
Judge Talwani found the term “the filling occurring substantially adjacent to where the container is formed” to be definite, rejecting Ice River’s assertion that the specification must provide specific, measurable limitations to describe “substantially adjacent.” She noted that the specification described “conventional ‘blow-and-fill’ operations, including those in which a container is filled just after formation… in close proximity to where the container is formed,” which could be a single integrated machine or two machines “that are adjacent or in close proximity to one another.” This was distinguished from other conventional methods in which the formed bottles are shipped to a separate location to be filled. As these conventional methods are well-known in the art, the terms is sufficiently definite.
Finally, Judge Talwani determined that two other terms relating to portions of the bottle were, while “not a testament to clarity,” sufficiently spelled out in the specification to survive an indefiniteness challenge.
Intellectual Property Development (“IPD”) sued Warren Trask Company, Inc., National Lumber Co. and others in state court. After the case was removed to Federal court, Judge Gorton referred all pretrial matters to Magistrate Judge Boal. Both defendants asserted counterclaims seeking declaratory judgment of non-infringement and invalidity of certain patents, and National Lumber asserted state law claims against and Glenn Robbell, IDP’s CEO and the sole inventor and apparent owner of the two patents. In December, IPD’s and Robbell’s attorney moved to withdraw from representation, citing breakdown of communications, fundamental disagreements over the handling of the litigation, and failure of the plaintiffs to pay for legal services. This motion was granted in January. Trask and National Lumber each then moved for sanctions and dismissal, citing the plaintiffs’ continuous failures to engage in discovery, to provide a list of claim terms to be construed or file a claim construction brief, and failure to participate in conferences regarding claim construction. The motions also noted that plaintiffs had failed to obtain new counsel, and that IDP, being a corporation, could not represent itself pro se. Judge Boal recommended dismissing IDP’s claims and entering default judgment against IDP, noting that the corporation had been given four months to find new counsel and had been warned of the consequences of failure to so do. She recommended denial of the motion with respect to Robbell, who (as an individual) can represent himself pro se, and declined to recommend other sanctions against Robbell.
Judge Talwani denied Ice River’s motion to compel additional information relating to the conception, diligence and reduction to practice the claimed invention. Ice River asserted that the responses and documents provided failed to explain what transpired in the eight months between conception and reduction to practice. Judge Talwani indicated that the response answered the question posed by the interrogatory, and noted that Plastipak would be limited to the evidence disclosed in its responses at trial. She further noted that, where Plastipak’s counsel certified that they had performed a reasonably diligent search and Ice River can point to nothing more than a suspicion that unproduced documents exists, Ice River is not entitled to an order compelling more.
Judge Talwani denied Ice River’s motion to compel documents that were produced by a third party in an earlier litigation with Plastipak and were deemed confidential under a protective order in that case. She had previously entered a protective order shielding these documents from production but requiring Plastipak to identify all such documents in a privilege log. Judge Talwani determined that Ice River would have to subpoena the third party, who could then move to quash, and a determination could then be made as to the need for their production.
Judge Talwani denied Ice River’s motion to compel the production of all prior art in Plastipak’s possession. Ice River had requested all “material” prior art, and Plastipak had produced only references cited on the face of the subject patent, taking the position that anything not cited to the PTO was not material, particularly with respect to confidential materials in its possession. While Judge Talwani did not find this interpretation of the request to be unreasonable, she noted that non-public materials can be material at least with respect to obviousness. Accordingly, while not granting Ice River’s motion, she allowed Ice River to rephrase the request to make clear what information it sought. Judge Talwani had earlier struck Ice River’s invalidity contentions, finding them non-compliant with Local Rule 16.6. Ice River had cited 163 prior art references and more than 3000 exemplary obviousness combinations, but had not provided claim charts for roughly half of the references and not articulating specific reasons to make the obviousness combinations. Because Ice River had relied on the scheduling order, which it contended modified the Local Rule, Judge Talwani allowed Ice River leave to refile its disclosures. Given that the invalidity contentions remained pending, Ice River would not be prejudiced by the delay in the production of any additional art.
Bio-Rad and Harvard University sued 10X Genomics in 2019, accusing 10X of infringing two patents owned by Harvard and exclusively licensed by Bio-Rad and of infringing one Bio-Rad – owned patent. Judge Young denied 10X Genomics’ motion to dismiss the induced and willful infringement claims on the three patents, finding these claims to be sufficiently pled. The complaint alleges that 10X knew of the two Harvard-owned patents – with knowledge being an element of both induced and willful infringement – by way of previous litigation between the parties on the patents-in-suit that was dismissed in favor of the current suit and by way of 10X’s own license agreements with Harvard. This knowledge is further evidenced by 10X having cited the published application that matured into one of the patents in an IDS with the Patent Office. The complaint further alleges 10X had knowledge of the Bio-Rad patent because the sole inventor on that patent subsequently left Bio-Rad to form 10X. That patent was also cited by 10X in an IDS. Importantly, the complaint alleges that the knowledge of the three patents came about before the litigation was filed, as willfulness cannot in this district be predicated on knowledge resulting from the complaint. Judge Young further noted that, at the motion to dismiss stage, a pleading alleging pre-suit knowledge of the patents and continued sale of the allegedly infringing products is sufficient to state a claim of willful infringement.
10X also moved to dismiss for improper forum or transfer the Bio-Rad – owned patent claim. Judge Young denied the dismissal request. He found that this patent, unlike the Harvard-owned patents, was not the subject of the forum selection clause found in 10X’s license with Harvard that directed claims be brought in Massachusetts. Further, the patent venue statute had been held to limit suits to districts in which the defendant resides or has committed acts of infringement and has a regular place of business. 10X is incorporated in Delaware and is located in California, and the complaint lacks allegations that 10X has a physical location in Massachusetts. The patent venue statute thus does not provide for venue in Massachusetts. Judge Young determined that Bio-Rad could rely on pendant jurisdiction, because the non-Harvard infringement claims were directed towards the same products that the Harvard-owned infringement claims. He granted 10X’s request, however, to transfer the infringement claim with respect to the Bio-Rad patent to the Northern District of California. As Harvard is not a co-plaintiff on that claim, the forum selection clause in the Harvard license does not apply and the sole connection with Massachusetts does not exist. Both Bio-Rad and 10X are headquartered in N.D. California, the sole named inventor on the patent resides in the district, and the parties are already litigating a different patent, related to the Bio-Rad patent in this case, in that district. Judicial economy favors transfer.
Solta sued Lumenis, Inc. and its Israeli-based corporate parent Lumenis Ltd. In 2019, accusing them of infringing two patents related to improvements in controlled cooling of skin and other tissue being treated by lasers. Lumenis Ltd. Moved to dismiss for lack of personal jurisdiction, asserting that the U.S. entity was responsible for all efforts to market and sell the accused products in the United States (and in Massachusetts). Judge Casper applied the prima facie standard and taking all factual allegations in the complaint and uncontroverted factual allegations made by the defendant as true, as is required where the motion is decided without an evidentiary hearing. She noted that Lumenis Ltd. Manufactures the accused products in Israel and then sells the products through wholly-owned subsidiaries in the United States and other countries. Lumenis, Inc., one such wholly-owned subsidiary, has sold accused products and directed marketing activity into Massachusetts. The accused products were identified as Lumenis Ltd. Products in an SEC filing, and Lumenis Ltd. Is the entity that applied for FDA approval to market and sell in the United States. While noting that ownership of a Massachusetts subsidiary is not, standing alone, sufficient to establish personal jurisdiction, here the two Lumenis entities are both transacting business for the purposes of satisfying the long-arm statute of the Commonwealth. Lumenis Ltd’s’ SEC filing indicated that it provides training and certification of field service engineers for the accused products and operates communications centers for each regional sales and marketing areas. This collaboration with Lumenis, Inc. is sufficient to establish personal jurisdiction over Lumenis Ltd. For complaints associated with the sales of these products.
Intellectual Ventures accused NettApp’s MetroCluster Fabric Attached systems of infringing U.S. Patent No. 6,516,442, which covers aspects of symmetric multi-processor types of computer architecture by which multiple processors share a common operating system and memory. Each asserted claim required certain components of the system to “perform error correction of the data in the packets exchanged over the channels.” NettApp asserted that the MetroCluster products, which allow for continuous back-up of data to separate locations, do not satisfy this “error correction” limitation, as the term had been construed. Judge Saris granted NettApp’s motion for summary judgment of non-infringement. She had construed the term to mean “correcting errors in data by at least reconstructing erroneous data,” rejecting Intellectual Ventures proposal that the term be construed broadly enough to encompass the correction of errors using a retry request. The MetroCluster systems break down data packets into sub-packets, to which an error detection code is appended. The system discards data in which an error is detected and then retransmits the data. Once the correct data has been received, the system puts the sub-packets back together into a complete packet. Intellectual Ventures asserts that this re-assembly of the sub-packets into full packets satisfies the “reconstruction” aspect of the limitation; Judge Saris disagreed, however, finding that her construction of the “error correction” limitation unambiguously excluded a system that exclusively addressed errors through a retry procedure. She also noted that the reassembly process utilized by the MetroCluster systems was not a part of handling errors, as such reassembly occurs whether an error is detected or not.
Sonohm accuses Superlogics of infringing two patents, U.S. 6,651,207, related to improved voice quality in cordless communications utilizing frequency hopping, and U.S. 7,106,705, which is directed to methods and systems for transmitting data for multiple services via jointly used physical channels. The ‘207 patent is expired, while the ‘705 patent remains in effect only through May 2021. According to the assignment records of the PTO, Sonohm acquired both patents in September 2019, after the ‘207 patent had expired. Since then, Sonohm has filed seventeen infringement suits involving the two patents, nine of which settled within about six months. The case has been assigned to Judge Burroughs.
Wildlife Acoustics makes bioacoustics monitoring technology used to monitor various animal species around the world. This technology can supplement or replace other, more manpower-intensive monitoring methods. Wildlife’s recorder design allowed for a significant reduction in power usage, enabling the use of much smaller batteries and a smaller and lighter recording device that is considerably easier to pack into remote locations. Wildlife accuses Australia’s Frontier Labs of infringing its U.S. Patent No. 7,782,195, which covers these recording devices, through the sale of competing BAR audio recording devices. Judge O’Toole has been assigned to the case, which was filed by my firm, Lando & Anastasi.
Judge Young granted Stilla’s motion for a 90 day stay of this patent litigation related to droplet digital PCR technology. Bio-Rad accuses Stilla’s Naica™ System of infringement. Stilla sought to stay the case to allow its France-based staff, who are under severe travel and work restrictions, to focus on their development of a COVID-19 diagnostic test kit that uses the Naica™ System. Deciding to prolong a litigation is not the norm for Judge Young, who in December refused to accept a joint schedule that proposed trying the case in mid-February, 2021, stating that the case would go to trial no later than January 2021. The pandemic changes things, however, and the stay was granted just three days after it was sought, despite Stilla’s notice that Bio-Rad opposed the stay.