On February 14, 2017, Judge Chhabria of the Northern District of California granted, in part, Apple’s motion to exclude the expert report of Unwired Planet’s survey expert, Dr. Allenby. Dr. Allenby was hired to conduct a consumer survey to assess the value of the claimed method for “provisioning” a mobile communication device. This process involves the mobile communication device connecting with a server and being authenticated to allow the user access to certain services. According to the decision, Dr. Allenby’s report, however, relied on Unwired Planet’s proposed definition of “provisioning,” and not the court’s construction. The expert had defined the term “provisioning” to mean something akin to “providing;” however, the court’s construction was far narrower.
On February 13, 2017, Judge Roy Payne issued a report and recommendation to grant DeVilbiss Healthcare, LLC’s (“DeVilbiss”) motion to dismiss My Health, Inc.’s (“My Health”) complaint, holding that the asserted patent failed to claim patent-eligible subject matter as required by 35 U.S.C. § 101.
A district court in Delaware granted defendant Jack Henry & Associates’ motion for attorneys’ fees and ordered plaintiff Joao Bock Transaction Systems to pay $1 million in attorney’s fees under 35 U.S.C. § 285. The order came following the Federal Circuit’s affirmance of the district court’s order invalidating plaintiff’s online-transaction security patent as claiming only an abstract idea. In awarding the fees to Defendant, Judge Robinson stated that “[t]aking into account that patent cases are complex and patent litigation is an expensive proposition, nevertheless, the court will award attorney fees of $1,000,000 to account for the fact that plaintiff's ever changing litigation strategies (including its claim construction positions) created a tortuous path to resolution.”
A California federal judge dismissed an infringement suit alleging Apple Inc.’s Apple TV video streaming service infringes a patent held by Aylus Networks Inc.. The court ruled that Apple’s technology does not follow the steps laid out in patent claims asserted by Aylus. Specifically, the court relied on statements made by plaintiff during inter partes review, holding that “[d]uring the claim construction process, the Court was not asked to construe the term ‘The [Control Point Proxy] is invoked.’ However, the Court agrees with [defendant] that based on the language of the patent and [plaintiff’s] statements during the inter partes review process, dependent claims 2 and 21 require that only the CPP logic is invoked to negotiate media content delivery. . . . [T]his distinction is confirmed by [plaintiff’s] preliminary responses to [defendant’s] inter partes review petitions of the [patent-in-suit] and the PTAB’s adjudication of the petition. In this regard, [plaintiff’s] statements are akin to a prosecution disclaimer. . . . Based on this distinction, the PTAB denied [defendant’s] petition for inter partes review of claims 2 and 21. . . . [T]he PTAB’s conclusion was not based on the application of the [broadest reasonable interpretation ] standard of review, but rested on the distinction that [plaintiff] itself articulated in its response to [defendant’s] petition.” (emphasis added).
An Eastern District of Texas judge denied Defendants’ motion for judgment on the pleadings that the asserted claims are invalid under Alice concluding the decision here is best left until after claim construction. The claims at issue relate to processing coupons. Defendants contend the asserted claims should be invalidated because they are directed to the abstract idea of ‘offering, tracking, and processing discounts’—a concept Defendants contend is a longstanding commercial practice.” Id. at 5. Defendants also argued that the discount vehicle claims are invalid under the printed matter doctrine because the claim term “discount vehicle” can only be interpreted as paper with certain text and/or graphics printed on it. Plaintiff responded that making a decision at this stage is inappropriate because there exists underlying factual disputes concerning the scope of the claims. Specifically, Plaintiff argued that “discount vehicle” is not limited to a sheet or card as interpreted by Defendants.
The U.S. Supreme Court has decided to review the claim construction standard used by the Patent Trial and Appeal Board (PTAB) in AIA reviews In 2013, the PTAB invalidated a Cuozzo Speed Technologies patent through an inter partes review. Cuozzo appealed the decision to the Federal Circuit, which affirmed the PTAB’s use of the broadest reasonable interpretation standard for claim construction in an AIA review. Cuozzo is now asking the Supreme Court to review the use of the PTAB’s claim construction standard and to use the same standard used in district court patent cases. The PTAB construes claims broadly while district courts use a narrower standard. The PTAB’s standard, Cuozzo asserts, results in too many patent claims being invalidated. Cuozzo contends construing patent claims with their broadest reasonable interpretation allows more prior art to be used against the challenged claims increasing the chance the patent claim will be invalidated.
In a January 8, 2016 decision, the Federal Circuit reversed a grant of judgment as a matter of law of no invalidity because the district court altered its construction of a key claim term after trial, and impermissibly based its JMOL determination on the new construction. Plaintiff Wi-LAN, Inc. sued Apple in the Eastern District of Texas for infringement of a patent directed to a system for wireless data communication. The asserted claims recited a “first computing means” which, according to the patent, randomizes the data to be transmitted using a “multiplier.” Multipliers can be either “real” or “complex,” and the parties agreed that the prior art taught randomizing data using only real multipliers. At trial, the jury found the two asserted claims invalid. The jury based its verdict on the court’s construction of the term “first computing means”—a construction that did not require complex multipliers—and determined that the claims were invalid as anticipated by the prior art. Wi-LAN moved for a JMOL of no invalidity, arguing that the asserted claims did, in fact, require complex multipliers.