Posts Tagged: "motion to dismiss"

The U.S. Court of Appeals for the Federal Circuit (CAFC), with Chief Judge Moore writing, today reversed and remanded a district court’s dismissal of an amended complaint in a case where the district court found a patent directed to a method of distributing large video files via a peer-to-peer (P2P) network patent ineligible under Section 101. While the CAFC did not rule on whether the claims are patent eligible, it held that “there are plausible factual allegations that the claims include inventive concepts, and that is enough to preclude dismissal” on a Rule 12(b)(6) motion.

Today, district courts evaluate whether patent infringement complaints satisfy the plausibility standard under Fed. R. Civ. P. 8 and the Supreme Court’s Iqbal–Twombly standard. Five years after abrogation of Form 18 (a sample patent infringement complaint that was said to be plaintiff-friendly) and nearly 15 years after Twombly, jurisdictional analyses have diverged. Fed. R. Civ. P. 12(b)(6) and 12(c) motions have developed into a targeted, widely-used tactic. Both motions provide defendants with a low-risk, high-reward opportunity. As plaintiff or defendant, start by evaluating the possible-to-plausible pleading spectrum.

The U.S. District Court for the Central District of California recently issued a decision in the closely watched Patagonia, Inc. v. Anheuser-Busch, LLC, 19-CV-02702 case. Here, the clothing company Patagonia sued the beer company Anheuser-Busch for trademark infringement, unfair competition, dilution of a famous mark, and cancellation of Anheuser-Busch’s various PATAGONIA trademark registrations. Anheuser-Busch moved to dismiss certain claims, including the dilution claim, for failure to state a claim under Rule 12(b)(6). The court issued a decision finding that Patagonia had adequately pled its dilution claim. The case provides trademark practitioners with insight into early case strategies when asserting and defending against a trademark dilution claim.

The U.S. District Court for the Eastern District of Michigan, Southern Division, on September 9 granted Motions to Dismiss in favor of all defendants in a federal trademark infringement action brought by R&B band Ready for the World, Inc. (Ready for the World) against Melvin Riley, John Eaton, Daniel Dillman, Renee Atkins, and Jan Mark Land. Ready for the World brought us classic 1980s hits including “Oh, Sheila!” and “Love You Down”. Riley and Eaton are original band members, while Dillman works for a nonprofit that promoted a concert performed by Riley and Atkins and Land were alleged to be employed by Riley. In their Motions to Dismiss, Eaton and Riley argued lack of subject matter jurisdiction because Ready for the World did not plead a claim arising under the Lanham Act. Citing Derminer v. Kramer, they argued that they are co-owners of the Ready for the World trademark and thus cannot infringe upon the mark. The court agreed, and also granted the motions of Dillman, Atkins and Land.

Several weeks ago, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Glasswall Solutions Limited v. Clearswift Ltd., affirming a district court’s findings that claims from two patents that were asserted in an infringement case filed by Glasswall were directed to unpatentable subject matter under 35 U.S.C. § 101… The Federal Circuit found that testimony offered by an expert witness for Glasswall didn’t preclude a dismissal on the pleadings as the alleged factual assertions in that testimony weren’t actually factual in nature but, rather, were conclusory legal arguments the district court wasn’t bound to accept as true.

In Berkheimer and Aatrix, the Federal Circuit indicated that although patent eligibility under Section 101 is ultimately a question of law, the determination may have factual underpinnings that, at least in some cases, render it inappropriate for motions to dismiss or for summary judgment… However, following Berkheimer and Aatrix, the Federal Circuit has itself affirmed numerous Section 101 rulings that were made at the dismissal or pleadings stage. This article provides a summary of recent district court decisions granting Rule 12(b)(6) motions to dismiss under Section 101.

This particular Rule 36 patent eligibility loss for the patent owner came in Digital Media Technologies, Inc. v. Netflix, Inc., et al., affirmed the district court’s finding that patent claims asserted by Digital Media against Netflix, Amazon and Hulu were invalid under 35 U.S.C. § 101 because they were directed to an abstract idea… Using Rule 36 in an area of the law as unstable, chaotic and unpredictable as patent eligibility is irresponsible. Whether the decision would be the same or not, the parties and the public have a right to have the Federal Circuit make sense ‘this § 101 conundrum.’

U.S. District Judge Indira Talwani of the District of Massachusetts signed an order dismissing a patent infringement suit brought by Malvern, PA-based wireless medical technology company CardioNet against Lowell, MA-based patient monitoring tech developer InfoBionic. Judge Talwani dismissed the suit after CardioNet’s asserted patent, which covers systems and techniques for monitoring cardiac activity, was found to be directed to patent-ineligible subject matter under 35 U.S.C. § 101… CardioNet filed a motion for leave to file a supplemental brief in support of the eligibility of the ‘207 patent arguing that the Federal Circuit’s decisions in Aatrix Software v. Green Shades Software and Berkheimer v. HP changed Section 101 precedent impacting several aspects of the district court’s patent eligibility analysis. However, Judge Talwani denied CardioNet’s motion a few days after it was filed.

On Wednesday, June 27th, a pair of orders of dismissal, one entered in the District of Delaware and the other entered in the Northern District of California, marked the official end of the patent war which played out between consumer tech giants Apple and Samsung for the better part of the past decade. This legal dispute, which was brought to courts in 10 different countries and even went to the U.S. Supreme Court, is notable because it undermines the argument that major patent infringement battles harm tech consumers through added costs and blocking innovation.

In this regard, a PTAB proceeding is not a suit in court, but instead an administrative proceeding in which the Patent Office (through the PTAB) takes “a second look at an earlier administrative grant of a patent.” Cuozzo, 136 S. Ct. at 2144 (2016); see also Oil States, slip op. at 7 (“[T]he decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration.”). Like other administrative actions in which States and Federal Agencies (e.g., the Federal Power Commission) may regulate rights or responsibilities of Tribes with respect to off-reservation activities, a PTAB proceeding is one of the “other mechanisms” available to the USPTO to resolve questions of patent validity as the administrative authority granting the patent in the first instance. Cf. Michigan v. Bay Mills Indian Cmty., 134 S. Ct. 2024, 2028 (2014).Even if the Tribe cannot be compelled to participate in this proceeding, the PTAB retains authority to adjudicate the validity of patents under review. Indeed, there is no requirement under the AIA that a patent owner participate in a proceeding in order for it to proceed.

???In Montauk U.S.A. v. 148 South Emerson Associates the Second Circuit vacated-in-part an earlier ruling in a trademark case. In that ruling, the district court denied a motion for preliminary injunction filed by Montauk, which was asserting its trademark rights to marks associated with The Sloppy Tuna restaurant.

On Monday, April 9th, the Court of Appeals for the Federal Circuit upheld the invalidity of a series of patents asserted against the American subsidiary of Japanese consumer electronics firm Funai. The patents, owned by Illinois-based Maxon, LLC, covered electronic means for improving user control over subscription entertainment content but the claimed technologies were deemed to be invalid under 35 U.S.C. § 101, the basic statute governing the patentability of inventions. The decision was issued by a panel comprised of Chief Judge Sharon Prost and Circuit Judges Todd Hughes and Kara Stoll.

So uncreative did Judge Michael Fitzgerald find Taylor Swift’s 2014 hit Shake It Off, he dismissed a copyright infringement case filed against her. In his opinion Judge Michael Fitzgerald explained the allegedly infringing lyrics used by Swift lacked even the modest level of creativity required for copyright protection… “The concept of actors acting in accordance with their essential nature is not at all creative; it is banal,” Fitzgerald worte. “In the early 2000s, popular culture was adequately suffused with the concepts of players and haters to render the phrases ‘playas … gonna play’ or ‘haters … gonna hate,’ standing on their own, no more creative than ‘runners gonna run,’ ‘drummers gonna drum,’ or ‘swimmers gonna swim.’”

In Atrix Software v. Green Shades Software, Aatrix sued Green Shades for infringement, and Green Shades moved to dismiss. The district court granted the motion, holding: (1) claim 1 of the ‘615 patent was not directed to any tangible embodiment and was not patent-eligible subject matter under § 101; and (2) under the Alice/Mayo two-step analysis, the remaining claims were for abstract ideas without inventive concepts and were also ineligible. Aatrix appealed. The Federal Circuit vacated the district court’s decision, reversed its denial of Aatrix’s motion for leave to file a second amended complaint, and remanded for further proceedings… Allegations in a patent infringement complaint that create a factual dispute about whether the claimed invention contains an inventive concept will defeat a motion to dismiss under § 101. For software inventions, such allegations include improvements in how a computer functions. An amended complaint to make such allegations should generally be allowed.