Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent decision out of the District of Delaware, the Court denied Amazon’s motion to dismiss patent claims directed to voice-activated software alleged found in Alexa and Echo products. Amazon’s motion was based on Section 101/Alice (i.e., that the patent claims it attacked in the motion were directed to abstract ideas, and were representative of other claims in the patents). The Court founds that the claims attacked by Amazon were not representative of other claims, and that the representative claims were not abstract under Step 1 of the Alice/Mayo test. The takeaway here is that, while Section 101/Alice is a robust means of attempting to secure a dismissal, some courts including the District of Delaware may be less receptive to such challenges by holding parties’ “feet to the fire” on what is a representative claim, and being a bit more patentee-friendly in the analysis at the motion to dismiss stage, so that the issue can be (more appropriately in the author’s perspective) resolved on a fuller record at summary judgment.

2. In response to a petition for writ of mandamus, the Federal Circuit ordered the transfer of a case from the Eastern District of Texas (Sherman Division) to the Northern District of California. Hewlett-Packard and another company were sued for patent infringement over laptop and phone screens in the Eastern District of Texas. Given the dearth of connections between the parties and East Texas, the absence of witnesses and proof in the Eastern District of Texas (and their presence at least to some meaningful degree in the Northern District of California), and the Northern District of California having some familiarity with the technology in question, the Federal Circuit ordered a transfer of the case. The takeaway here is that the Federal Circuit continues to attempt to rein in the Eastern District of Texas’ broad view of proper venue. Wherever one wants to file a patent case, a careful consideration of venue should be made before filing; otherwise, a lot of ink can be spilled, and money spent, simply on the issue of venue.

3. In an interesting decision out of the Northern District of California, a Magistrate Judge issued an order compelling the depositions in a patent case of seven former employee-inventors of the plaintiff-patentee who reside outside the U.S. Some of the issues on which the witnesses’ depositions were needed pertaining to Section 112 written description and enablement defenses. The plaintiff objected to the Magistrate Judge’s Order and expressed concern about possible sanctions for not making the witnesses available, raising COVID and other issues. The District Judge affirmed the Magistrate Judge’s order and instructed that the depositions needed to move forward unless the plaintiff could show that the witnesses could not be produced despite all due diligence. One takeaway here is that despite COVID-related issues for possible travel and safety, depositions via Zoom or related video technologies are becoming much more common such that COVID may not be a credible excuse for delaying or avoiding a deposition.