IP Newsflash

The Eastern District of Texas recently addressed two significant issues related to fair, reasonable and non-discriminatory (FRAND) negotiations under French law; namely, whether: (1) an implementer is entitled to damages resulting from a standard essential patent (SEP) holder’s bad faith; and (2) an SEP holder can unilaterally discharge its FRAND obligations in view of an implementer’s bad faith.

The Central District of California denied a defendant’s motion for leave to amend to allege inequitable conduct due to the defendant’s delay in deposing a key inventor until the end of fact discovery. The district court held that the defendant neither exercised diligence nor established good cause based on the inventor’s deposition to warrant amending its answer.

Judge Wu in the Central District of California recently granted dismissal of patent infringement claims directed to generating and sharing video content over a social network because they are patent ineligible under 35 U.S.C. § 101. After deciding claim construction, the court held that the claims fail the Alice two-step framework. Under Alice step one, the court found that the claims are directed to the abstract idea of prompting a user to record and share content because the claimed steps involve generic actions without reciting any specific improvement to the claimed user interface or other computer technology. Under Alice step two, the court found that the claims lack an inventive concept because they are results-oriented and they do not recite any specific means of accomplishing the claimed results other than using existing, off-the-shelf computer technology.

A court in the District of Colorado recently denied dismissal of patent infringement claims, holding that the asserted claims directed to plunger lift systems for cultivating natural gas from an oil-and-gas well are patent eligible under 35 U.S.C. § 101. The court held that the method claims did not recite an abstract idea because the claims are directed to an intended result, and they concretely identify the physical structures or steps that provide the specific means of accomplishing the result.

Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of patents or printed publications that were, or could have been, asserted in an IPR.

The Eastern District of Virginia recently dismissed a patent infringement claim, holding that the asserted claim directed to natural speech processing is patent ineligible under 35 U.S.C. § 101, because it fails the Alice framework. Under step one, the court found the claim is directed to an abstract idea, because it is “plainly result-oriented” and “directed to any arrangement of programs and processors.” Under step two, the court found the claim lacks an inventive concept, because it does not explain how its “conclusory, result-oriented requirements” overcome the defects in prior art.

Senior Circuit Judge Bryson of the Federal Circuit, sitting by designation in the District of Delaware, recently granted-in-part and denied-in-part a Rule 12(c) motion for judgment based on patent eligibility under 35 U.S.C. § 101. The patents are directed to restricting access to computer files. The court found certain claims eligible because they are directed to a problem arising in the realm of computers and they identify a specific improvement in computer capabilities. The court found other claims ineligible because they broadly recite generic steps and results and they were not limited to the technical advancement disclosed in the specification.

The Western District of Texas recently denied a defendant’s motion to stay pending inter partes review based in part on the defendant’s status as a non-party in the IPR proceedings. In doing so, the district court focused on how the defendant’s inability to participate in the IPRs limited the scope of estoppel, and therefore diminished any potential simplification of issues.