In a different part of Boston University’s series of patent infringement suits against LED manufacturers, now consolidated, Judge Saris granted in part and denied in part Kingbright’s motion for judgment on the pleadings. The Kingbright case was stayed pending the resolution of earlier such cases, and following the invalidation of claim 19 for lack of enablement, Kingbright filed its motion to dismiss or, in the alternative, for summary judgment. Kingbright, which sells LED packages that utilize LED’s manufactured by Epistar, Cree, and Tekcore, sought judgment no the pleadings as to the products that incorporated Epistar’s LED chips under the Kessler doctrine. This doctrine bars infringement actions against a customer of a seller who had prevailed in an infringement suit because of invalidity or noninfringement. As Epistar was one of the parties that prevailed in the lack of enablement finding, and because in any event claim preclusion would prohibit B.U. from bringing infringement claims based on different claims against Epistar (who had indemnified Kingbright), Judge Saris granted the motion with respect to these products. She denied the motion with respect to the products incorporating Cree and Tekcore chips, as neither the Kessler Doctrine nor claim preclusion would apply.
This patent litigation resulted in the overturning of a jury verdict of infringement and invalidation of the sole asserted claim as not enabled. The claim , which covered semiconductors used in LED’s, recited a substrate consisting of a material selected from a group of six different compositions, with a non-single crystalline buffer layer grown thereon and a growth layer grown on the buffer layer. The term “non-single crystalline buffer layer” was construed to cover polycrystalline, amorphous, or mixed polycrystalline and amorphous materials, and the Federal Circuit determined that the specification did not enable growing a growth layer on an amorphous layer. In June, on return to the District Court, Judge Saris allowed in part Defendants’ request for attorneys’ fees, finding that, while the case itself was not exceptional (while Boston University ultimately did not prevail, their argument initially prevailed at trial and in post-trial briefing at the District Court level, demonstrating that it was not without merit), the conduct of Boston University’s counsel in communications with Defendants’ counsel “crossed the line of civility” and found that Defendants should recover the fees and costs associated with the two contempt motions they brought after Boston University’s counsel continued with the objectionable communications in violation of court orders. Judge Saris has now awarded $30,934 in fees, excluding time entries that did not relate or only partially related to the motions for contempt. She denied Defendants’ request for fees associated with briefing and arguing the fee request, however, finding her earlier fee award covered only the contempt motions and not the subsequent fee motion.
Bio-Rad and Harvard brought an infringement suit against 10X Genomics, accusing the California business of infringing three patents (tow of which Bio-Rad exclusively licenses from Harvard, the third of which Bio-Rad is the owner) relating to partitioning of biological samples into individual droplets formed using emulsion chemistry technology, permitting the ability to perform multiple reactions while minimizing the amount of sample required. Bio-Rad asserts that its Droplet DigitalTM PCR Systems incorporate the patented technology, which it spent years and hundreds of millions of dollars developing. In 2012, Bio-Rad employee Serge Saxonov, the sole inventor on one of the asserted patents, left Bio-Rad and formed 10X, which came out with competing products. 10X was sued at that time for patent infringement by RainDance, and Bio-Rad substituted itself as plaintiff when it acquired RainDance. In that case, 10X was found to have willfully infringed several patents and was permanently enjoined. 10X subsequently came out with the accused “Next GEM” line of products. Bio-Rad asserts that this new product is at the heart of a $362 million IPO launched by 10X in September. Judge Young has the case.
Bio-Rad asserts that 10X is subject to personal jurisdiction through sales of the accused Next GEM Platform in the state, including to co-Plaintiff Harvard University, as well as through promoting the product in the state. Bio-Rad also points to a prior litigation in the District of Delaware involving two of the asserted patents, in which 10X Genomics claimed the patents were implicitly a part of a license it had with Harvard that included a forum selection clause designating Massachusetts as having sole jurisdiction. Bio-Rad asserts that 10X Genomics’ representations in that litigation, which was voluntarily dismissed by Bio-Rad, estop 10X from challenging jurisdiction or venue in Massachusetts. Bio-Rad charges 10X with direct, contributory, and induced infringement. It further alleges willfulness, based on both Saxonov’s knowledge of the portfolio and on a parent patent to the patents-in-suit having been cited in an IDS in one of 10X’s patent applications.
Bio-Rad and 10X Genomics are frequent adversaries. In addition to this case and the Delaware case referenced above, the parties are engaged in patent litigation in the Northern District of California and Delaware.
Judge Saris denied Omilia’s motion to dismiss for lack of personal jurisdiction. Omilia, a Cyprus corporation, sought either dismissal or transfer to the Northern District of Illinois, where it concedes it has sufficient contacts to support personal jurisdiction. Looking into Omilia’s contacts with Massachusetts, Judge Saris determined that Omlilia had the necessary contacts to support personal jurisdiction. She noted that Omilia had identified Boston as its “North American Office” on its website and provided Boston contact information from 2015 to the time it received Nuance’s cease and desist letter in October 2018. Judge Saris further did not credit Omilia’s attempts to identify its Boston contact person as an independent contractor, because Omilia’s website had indicated that he was the company’s “employee number 6” in 2012. She further noted the LinkedIn profile of Omilia’s CEO, which indicated that he worked for Omilia in Boston. Finally Judge Saris pointed to Omilia’s having a physical address in Boston (a WeWork location which served primarily as a mailing address) and Omilia’s presentation at a conference in the state. She found each of these supported purposeful availment. She then looked to the relatedness of these contacts with the asserted patent infringement. Noting that Federal Circuit law on this subject was more permissive towards finding relatedness than many of the other Federal Circuit’s law, she determined that Omilia’s attempts to market and sell accused products to customers in Massachusetts (which occurred at least in part through these contacts) was enough. Finally, Judge Saris determined that hailing Omilia into a Massachusetts court was not unreasonable, because Massachusetts has a strong interest in protecting Nuance, a Massachusetts company, from infringement, that Omilia had not overcome. As a result, this case will proceed in Massachusetts.
Judge Sorokin granted CarMax’s motion to dismiss, finding the asserted claims were directed to non-patentable subject matter. The patent -in-suit, U.S. 9,671,955, is directed to a “virtual phone” in which a processor, memory, wireless communications and power ports, a touch screen, and a software application permits the emulation of the features of a handheld device (such as a smart phone) on the touch screen. This would allow a smartphone to be emulated on a touchscreen in a vehicle, permitting hands-free operation while maintaining the features and familiarity of location of the features of the phone. CarMax challenged the claims via a motion to dismiss for failure to state a claim on which relief could be granted, asserting that the claims do not meet the eligibility standard set forth in the Supreme Court’s Alice Corp. decision. Applying the test for eligibility set forth in that case, Judge Sorokin first determined that the claims were directed to the idea of emulating the features of a smartphone or other handheld device on a different screen. As was done in many other cases looking at eligibility, Judge Sorokin looked to prior decisions to see if this concept is meaningfully distinguishable from other concepts found to be abstract – courts do not appear to have a concrete method for determining whether the claimed idea is abstract, and instead analogize to prior cases. He did note that the claims recited a number of “generic computer components” without identifying how they worked together to create the claimed virtual smart phone, leaving the patent claiming the idea of an emulated smart phone rather than an actual functioning embodiment – he found the claims to be “merely drawn to the aspect of emulation and to the concept of generating a virtual smart phone – an abstract idea – and not to any particular concrete implementation of that idea.”
Having determined that the claims were directed to an abstract idea, Judge Sorokin next looked for an “inventive concept” that would transform the abstract idea into a patent-eligible application, noting that under existing case law, “more is required than well-understood, routine, conventional activity already engaged in by the scientific community.” Judge Sorokin found that the claims lacked any additional limitations that would ensure that they amounted to more than the ineligible concept itself. He stated that all of the claimed components were generically defined and conventional. Accordingly, he determined that the patent did no claim patent-eligible subject matter, and granted CarMax’s motion to dismiss.
While I am not suggesting that Judge Sorokin was or was not incorrect in this particular instance, the current Alice framework seems to be very subjective. The problem with this approach is that every patent claim can be stated in increasingly broad and abstract terms – Edison’s light bulb patent, for example, could be described as the abstract idea of running electricity through a resistive element so as to general light, and so described may not have been deemed patentable absent further, concrete limitations. Given that this first step of stating the concept or idea of the claims does not appear to have any objective framework, it becomes difficult to determine how a claim will be treated in any given litigation, and the validity of a given patent may well hinge on the particular judge and the persuasiveness of the respective parties’ attorneys rather than the actual content of the specification and claims. One way to potentially overcome this problem might be to rely on concrete components and describe clearly how the components interact, rather than focusing on the function of the device or result of the interaction of the components.
Uniloc filed suit in June, asserting two patents against Akamai. In September, Akamai discovered that Uniloc had been assigned the two patents from IBM, with IBM reserving a license and a right to grant sublicenses to strategic partners. Uniloc conceded that Akamai is one such strategic partner, but nevertheless sought to dismiss the case without prejudice, maintaining that its suit is viable because Akamai had not asserted that it had received a license from IBM. Judge Sorokin agreed that the case should be dismissed, finding that the assignment agreement designates Akamai as a third party beneficiary that Uniloc is bound to indemnify against infringement suits. He dismissed the case with prejudice pursuant to Fed. R. Civ. P. 41(a)(1)(B), however, because a prior iteration of Uniloc had already voluntarily dismissed identical claims against Akamai in 2017.
Judge Hillman issued a claim construction order in this litigation involving tamper-resistant plastic food containers. The patents specifically describe the incorporation of a non-replaceable strip that must be severed before the cover could be removed from the container. In addition to construing seven different terms from the asserted patents, Judge Hillman addressed Lacerta’s assertions of indefiniteness involving several terms of degree, including “at least in part,” “relatively inaccessible,” and “tamper evident bridge.” Noting that such terms are not indefinite where the specification provides sufficient certainty to one of skill in the art, when read in the context of the invention, to identify the metes and bounds of the claim. He rejected Lacerta’s argument that “at least in part” was indefinite for failing to identify what else in addition to the “at least” components could form the relevant structure, noting that in such a circumstance, the claim would cover any structure incorporating the specified components. Judge Hillman rejected Lacerta’s argument that “relatively inaccessible” should be deemed indefinite because the Canadian Patent Office had so found in a related prosecution, noting both that the decision of the Canadian office is not binding on a U.S. court and that he disagreed with the Canadian decision because the specification identified the structures used to render the subject component inaccessible. Finally, he rejected Lacerta’s argument that “tamper evident bridge” was indefinite because it had no antecedent basis and was added during prosecution. Judge Hillman found that the claim itself provided sufficient detail to be definite, despite its not having been a part of the original claim language.