The Federal Circuit recently reversed a district court’s grant of summary judgment of invalidity for lack of written description under 35 U.S.C. § 112. The Federal Circuit held that the district court had incorrectly determined that one of the disclosed embodiments imposed limits on the scope of the invention. The Federal Circuit based its decision on the disclosures about the variety of problems solved by the invention and the originally filed claims.
Judge Gilstrap of the Eastern District of Texas denied defendant Genband US LLC’s motion for summary judgment that plaintiff Metaswitch Networks Ltd.’s patent, relating to the control of communication sessions in a telecommunications network, was invalid. Metaswitch argued that the prior art patent application is fundamentally different from the asserted patent and does not disclose even a single limitation of the asserted claim 8. In general, Metaswitch’s arguments related to the asserted patent and prior art reference having different network topologies.
Judge Freeman of the Northern District of California issued an order on February 1, 2016, denying plaintiff Gilead Sciences, Inc.’s motion for summary judgment of invalidity of two patents assigned to Merck Sharp and Dohme Corp. and alleged to cover Gilead’s blockbuster Hepatitis C (HCV) drug sofosbuvir. Sofosbuvir is a key component of Gilead’s Sovaldi(R) and Harvoni(R) products. Gilead argued that the asserted claims were invalid for failure to satisfy “the utility prong of enablement.” This theory is based on the requirement that “the how to use prong of section 112 [requires] that the specification disclose as a matter of fact a practical utility for the invention,”—designed to “prevent the patenting of mere ideas, research proposals, and hypotheses.”
A federal judge in the Southern District of New York granted counterclaim-defendant TNS’s motion for summary judgment ruling that three patents related to targeted-advertising were invalid under Alice. As a preliminary matter, the court rejected Tivo’s (TRA) presumption of validity argument noting that “[t]he presumption of validity—and its concomitant clear and convincing evidence standard—does not apply to section 101 claims.” In analyzing the patents, the court found that all three patents describe the same basic invention in five basic steps: “(1) collecting household-level data from a variety of digital sources, (2) matching this data to individual households through the use of digital double-blind matching, (3) digitally storing this matched data, (4) applying a “cleansing and editing algorithm” to the data to remove extraneous and/or private information, and (5) calculating an advertising metric based on the data.” Accordingly, the court found claim 71 of the ’940 patent to be representative of all asserted claims—essentially a method for correlating the advertisements that consumers view and their purchasing behavior.
In a February 11, 2016, decision, Judge Andrews of the District of Delaware granted in part and denied in part a summary judgment motion of noninfringement filed by Defendant Micron Technology, Inc. Plaintiff HSM Portfolio sued Micron over patents relating to image sensors. Specifically, U.S. Patent No. 5,030,853 requires that each inverter in a chain increase in size by “less than a predetermined factor times the width of the N-channel of the immediately preceding inverter stage.” The court found that the patentee intended to use a specific equation in the specification to calculate the “predetermined factor.” Since Plaintiff relied on a different equation for the limitation, the court found that there is no literal infringement. Further, the court concluded that the specification expressly identifies a role for the claim limitation—using the specific equation to calculate the predetermined factor. Thus, the court held that Plaintiff cannot use the doctrine of equivalents to capture the subject matter based on a different equation.
In a precedential opinion, the Federal Circuit affirmed the district court’s order granting summary judgment that the doctrine of laches barred the plaintiff’s inventorship claim. This is the third appellate decision since SCA Hygiene Products v. First Baby Products involving laches. In SCA Hygiene Products, the Federal Circuit en banc reaffirmed laches as a defense to patent suits.
Laches is an equitable defense to patent infringement when a patentee delays bringing an infringement suit. As background, the plaintiff filed a complaint against the defendants, requesting correction of inventorship of a U.S. patent, which was assigned to the defendants. The plaintiff initially developed the invention claimed in the U.S. patent. He then disclosed the details of the invention to the defendants. The defendants subsequently filed a German application and a PCT patent application from which the U.S. patent issued, but did not name him as an inventor in either application. After the plaintiff discovered the PCT patent application during its pendency, he initiated litigation against the defendants in both German and European courts to correct inventorship. After losing his claims abroad, the plaintiff filed the present litigation against the defendants in the U.S.
In a case of first impression involving actual notice under 35 U.S.C. §154(d), the Federal Circuit affirmed the district court’s grant of summary judgment denying Plaintiff’s claim for pre-issuance damages.
The Federal Circuit has affirmed a summary judgment of invalidity finding the asserted claims patent-ineligible under Alice. Plaintiff Mortgage Grader sued Costco and First Choice alleging infringement of two patents relating to systems and methods for a borrower to evaluate and obtain financing from multiple lenders. The patent claims are directed to “a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders” using a loan package database and computer interfaces that allow the lenders and borrowers to interact. First Choice filed a motion for summary judgment that the asserted claims were patent-ineligible under § 101. Both sides submitted expert reports in support of their § 101 positions. The district court agreed with First Choice and entered summary judgment that all of the asserted claims were directed to the unpatentable abstract idea of “anonymous loan shopping.” On appeal, Mortgage Grader argued that the district court erred by improperly resolving underlying factual disputes and misapplying the Alice test.