Judge Albright Of The Western District Of Texas Grants Motion To Transfer On Convenience Grounds
On December 8, 2021, Judge Albright of the U.S. District Court for the Western District of Texas issued a sealed opinion granting the defendants’ motion to transfer venue to the Northern District of Georgia. Lynk Labs, Inc v. Home Depot USA, Inc., No. 6:21-cv-00097-ADA (W.D. Tex. Dec. 8, 2021). A public, redacted version has since published, in which the court addresses the public and private interest convenience factors, finding that the Northern District of Georgia was a clearly more convenient forum.
Federal Circuit Orders Transfer Of Another Judge Albright Case
On October 19, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) granted a petition for writ of mandamus ordering the United States District Court for the Western District of Texas to transfer the underlying action to the United States District Court for the District of Colorado. In re DISH Network, L.L.C., No. 2021-182 (Fed. Cir. Oct. 19, 2021). The CAFC held that Judge Albright abused his discretion when denying DISH’s motion to transfer on convenience grounds pursuant to 28 U.S.C. § 1404(a).
District Of Delaware Determines “Translator Device” Limitations Are Subject To Means-Plus-Function Strictures And Invalidates Claims As Indefinite
On September 10, 2021, Judge Richard G. Andrews of the U.S. District Court for the District of Delaware issued a Memorandum Opinion on claim construction. Peloton Interactive, Inc. v. ICON Health & Fitness, Inc., No. 20-662-RGA, slip. op. (D. Del. Sept. 10, 2021). Judge Andrews held that certain claims of the asserted patent containing “translator device…” limitations were invalid as indefinite under 35 U.S.C. § 112 ¶ 6 because they failed to disclose corresponding structure for the claimed function.
District Of Delaware Finds Patent Claims To Be Patent Ineligible Under Section 101
On August 12, 2021, the United States District Court for the District of Delaware issued an opinion granting plaintiff Microsoft Corporation’s (“Microsoft”) motion for judgment on the pleadings related to infringement counterclaims brought by SynKloud Technologies, LLC (“SynKloud”). SynKloud Techs. LLC v. HP, Inc., et al., No. 19-1360-RGA (D. Del. Aug. 12, 2021). The Court ruled that the patents at issue related to the patent-ineligible abstract idea of “requesting an institution to obtain data from remote locations and to store that data in storage space assigned to a specific user.”
Eastern District Of Texas Finds Patent Unenforceable Due To Prosecution Laches
On August 5, 2021, Judge Gilstrap of the U.S. District Court for the Eastern District of Texas issued a Memorandum Opinion and Order Supported by Findings of Fact and Conclusions of Law regarding defendant Apple’s counterclaim for prosecution laches. Personalized Media Communications, LLC v. Apple, Inc., No. 2:15-cv-01366-JRG, slip op. (E.D. Tex. Aug. 5, 2021). Judge Gilstrap found and declared the asserted patent unenforceable under the doctrine of prosecution laches. In doing so, Judge Gilstrap overturned a $308.5 million jury verdict.
Federal Circuit Finds District Court’s Element-By-Element Infringement Pleading Standard Overly Demanding
On July 13, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed in part, reversed in part, and remanded appellant Bot M8 LLC’s (“Bot M8”) appeal of several underlying orders related to the dismissal of its patent infringement action against Sony Corporation of America (“Sony”). Bot M8 LLC v. Sony Corporation of America, ___ F.3d ___ (Fed. Cir. July 13, 2021). The CAFC clarified that while a plaintiff need not plead infringement on an element-by-element basis, reciting claim elements and merely concluding that the accused products have those elements is insufficient.
District Of Delaware Denies Motion To Preclude Plaintiff From Asserting At Trial Patent Claims Found Unpatentable By The US Patent Office’s Patent Trial And Appeal Board
On July 6, 2021, Judge Noreika of the United States District Court for the District of Delaware issued an Order denying defendant’s motion in limine to preclude plaintiff from asserting claims of a patent that were found unpatentable by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office in an inter partes review. TrustID, Inc. v. Next Caller Inc., Slip. Op. (D. Del. July 6, 2021). The Court determined that plaintiff was not collaterally estopped.
Federal Circuit Vacates And Remands District Court’s Finding Of No Prosecution Laches Related To “GATT Bubble” Patent Applications
On June 1, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated-in-part and remanded a ruling from the U.S. District Court for the District of Columbia related to prosecution laches. Hyatt v. Hirshfeld, --- F.3d --- (Fed. Cir. June 1, 2021). The CAFC determined that the appellant, U.S. Patent and Trademark Office (“PTO”), met its burden to prove prosecution laches, and remanded to the district court to determine whether appellee Gilbert Hyatt had a legitimate reason to excuse his prosecution delay.
Federal Circuit Holds “User Identification Module” Is A Means-Plus-Function Term And Invalid As Indefinite For Failing To Disclose Corresponding Structure
On March 2, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing the district court’s conclusion that a claim was not invalid as indefinite. Rain Computing, Inc. v. Samsung Elecs., Am., Inc., __ F.3d __ (Fed. Cir. Mar. 2, 2021). The CAFC held that the claim term, “user identification module,” was a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, and invalid as indefinite for failure to disclose corresponding structure (here, an algorithm).
U.S. District Court For The Northern District of Illinois Finds Patent Claims Related To HIV DNA Replication To Be Patent Eligible Under Section 101
On December 1, 2020, the United States District Court for the Northern District of Illinois issued an opinion denying plaintiff Abbott Laboratories’ motion to dismiss infringement counterclaims brought by defendants Grifols Diagnostic Solutions Inc., Grifols Worldwide Operations Ltd., and Novartis Vaccines and Diagnostics, Inc. Abbott brought a declaratory judgment action against defendants asserting that U.S. Patent No. 7,205,101 (“the ’101 patent”) is invalid. Defendants filed a counterclaim asserting that Abbott infringes claim 7 of the ’101 patent. Abbott moved to dismiss the counterclaim on the basis that claim 7 is invalid as a matter of law under 35 U.S.C. § 101 because it is directed to a patent-ineligible natural phenomenon.