United States: IP Newsflash - March 4, 2016

DISTRICT COURT CASES

New York Court Invalidates Targeted-Advertising Patents under Alice

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 applying the Alice standard, the court ruled that "[b]ecause the asserted claims are directed to an abstract idea and nothing in the claims comprises an inventive concept, TRA claims are patent-ineligible. Under step one of Alice, the court stated that the "abstract nature of TRA's patent is confirmed by the fact that TRA's claim, as a whole, can be performed by humans rather than computers" and are therefore, "directed towards a patent-ineligible abstract idea." Under step two of Alice, the court found that the asserted claims lacked an inventive concept stating that "claim 71 of the '940 patent recites only "well-understood, routine, [or] conventional activities" such as data collection, data storage, and routine 'post-solution' activities (activities performed on the data following the double-blind match) that are insufficiently inventive to render TRA's claims patentable."

TNS Media Research LLC et al. v. TiVo Research and Analytics Inc., Case No. 1:11-cv-04039 (S.D.N.Y. Feb. 22, 2016) (Scheindlin, J.).)

- Author: Jay K. Tatachar

Prejudicial Statements by Attorney during Closing Warrants New Trial

After a jury found infringement and no invalidity in a patent case involving HVAC systems, Judge Robinson of the District of Delaware granted a new trial based on prejudicial and gratuitous statements made by an attorney during closing arguments. The court explained that of the most common reasons for granting a new trial, one is "improper conduct by an attorney or the court [that] unfairly influenced the verdict." Opinion at 4. Defendant Goodman argued in the post-trial phase that Plaintiff Carrier's counsel made improper arguments during closing regarding indemnity and copying issues, as well as the burden of proof.

In the first instance, counsel for Carrier likened an indemnity clause Goodman had signed to a motivation to ignore patent rights. The court noted that such statements were "a pretty big stretch" and that there was "no good way to fix" the issue. Opinion at 34. Second, counsel for Carrier—after it was agreed by the parties that there would be no evidence of copying—described Goodman's knowledge of Carrier's product in the context of copying, arguing, "Why would [Goodman] have done that [compared products] if they truly didn't infringe?" Opinion at 36. Third, counsel for Carrier explained the clear and convincing burden in the context of taking away parental rights. Specifically, he argued that invalidating a patent takes away the patent from an inventor like "tak[ing] away someone's kid." Id. As to the copying and burden arguments, the court noted that counsel's "gratuitous argument" was sufficient to tip the balance for the wrong reason. Opinion at 37. The court, thus, concluded that a new trial was warranted based on these statements.

Carrier Corp. v. Goodman Global, Inc., Civ. No. 12-930-SLR (D. Del. Feb. 22, 2016). [J. Robinson]

- Author: Rehan M. Safiullah

N.D. Cal. Judge Denies Summary Judgment Motions in Dispute Over Hepatitis C Products

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."

Gilead argued that "one having ordinary skill in the art...would not have accepted the assertion that the nucleoside compounds claimed by the asserted patents could treat HCV." Merck countered that a "skilled artisan would have understood the methods and compounds claimed in the asserted patents would be useful in treating HCV." The court agreed with Merck and found "that there is enough evidence to create a disputed issue of material fact as to whether a skilled artisan would have 'accept[ed] the allegations [in the asserted patents] as obviously correct.'"

In addition, Judge Freeman granted Merck's uncontested motion for summary judgment concerning both direct and indirect infringement. The issue of ultimate liability remains to be determined at trial following consideration of Gilead's outstanding invalidity defenses.

Gilead Sciences, Inc. v. Merck & Co, Inc., 13-cv-04057-BLF (N.D. Cal., Feb. 1, 2016).

- Author: Michael Kahn and Law Clerk Matt Weiss (not admitted to practice) co-wrote this article.

PATENT TRIAL AND APPEAL BOARD

Insufficient Showing of Secondary Considerations Fails to Rebut Obviousness Case

The Patent Trial and Appeal Board (PTAB) found all of the claims of the patent-at-issue invalid, notwithstanding the patent owner's (Owner) showing of secondary considerations of nonobviousness. As an initial matter, PTAB found each limitation of the claims in the prior art. Owner then attempted to rebut Petitioner's prima facie obviousness case by presenting evidence of secondary considerations of nonobviousness based on: (1) copying, (2) commercial success, and (3) industrial praise. PTAB addressed each argument, holding overall that Petitioner's "strong evidence of obviousness" outweighed Owner's secondary considerations of nonobviousness.

First, Owner alleged copying based on Petitioner possessing Owner's patented product and on unsuccessful license negotiations with Petitioner. In response, PTAB found that Petitioner's product (for which Petitioner received its own patent) used a different configuration than Owner's patented product. Further, PTAB found that Petitioner could not have had access to Owner's "patent product" for the purpose of copying because Petitioner's allegedly copied product was sold before the Owner's patent issued.

Second, Owner argued that Owner's success in the marketplace was due to the patented features of its product. PTAB was not persuaded by Owner's mere showing that Owner was able to grow quickly in its marketplace. In holding that Owner failed to establish "a nexus between its commercial product and any novel features" of its patented product, PTAB found that the features purported to promote the Owner's commercial success "were present in the prior art." Further, PTAB held that even if Owner had established a nexus, Owner had "not provided evidence of the market share held by its product to back up its claim of commercial success."

Third and finally, Owner presented evidence of industry praise wherein its patented product won an award and was mentioned in two trade journals. PTAB held that Owner's evidence of industry success was insufficient, finding that there was no indication that the award was given on the merits of the patented features of Owner's product. Further, PTAB found that "two brief mentions in" trade journals do not "constitute industry praise."

Chums, Inc., and Croakies, Inc., v. Cablz, Inc., IPR2014-01240.
[Kalan (opinion), Cocks, Plenzler]

- Author: Michael Durbin

PTAB Denies Institution of IPR Review of Computer Security Patents

On February 26, 2016, PTAB denied institution of Inter Partes Reviews (IPR) of two patents related to computer security software. Petitioner Symantec requested review of U.S. Patent Nos. 7,613,926 (the '926 Patent) and 8,677,494 (the '494 Patent), asserting that the patent did not properly establish their priority claims and, therefore, were invalid over prior patents issued to Patent Owner Finjan, Inc. The earlier of the two patents at issue, the '926 Patent, is a continuation-in-part from an earlier patent owned by Finjan. The later of the two patents, the '494 Patent is a continuation of the '926 Patent and shares a common specification.

Symantec argued that the two patents at issue did not properly establish priority with the earlier Finjan patents since the shared specification of the '926 and '494 differs from that of their parent applications, and the claims at issue relate to the disclosures of the earlier Finjan patents. Symantec acknowledged that the specification of both patents at issue stated that they incorporated by reference the entirety of the parent specifications, but argued that such "boilerplate" statements were not proper incorporation by reference. In addition to the priority issues, Symantec raised arguments that the patents did not have proper unity of inventorship and/or unreasonable delays in recording the assignment of the patents to Finjan.

PTAB denied institution of all of Symantec's IPRs. Citing Federal Circuit precedent, PTAB ruled that the statements of incorporation by reference in the '926 and '494 Patents was proper to establish continuity of disclosure between the parent application and the specification of the patents at issue. Finding that the disclosure of the prior Finjan patents described the claimed inventions, PTAB ruled that the prior Finjan patents asserted by Symantec were not prior art and that Symantec, therefore, had not demonstrated a reasonable likelihood of success on its challenges. PTAB also ruled that Symantec's arguments regarding inventorship and assignment were beyond the scope of IPR review.

Symantec Corp. v. Finjan, Inc., IPR2015-01895, IPR2015-01897 (PTAB Feb. 26, 2016).

- Author: Ryan Stronczer

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions