Intellectual Property – Miscellaneous

November 8, 2013

Publication| Intellectual Property

Judge Stark Finds Patent Claims Ineligible for Patent Protection under 35 U.S.C. § 101 and Grants Motion for Judgment on the Pleadings

In Buysafe, Inc. v. Google, Inc., C.A. No. 11-1282-LPS (D. Del. July 29, 2013), Judge Stark concluded that the asserted claims were not eligible for patent protection under 35 U.S.C. § 101 and granted defendant Google, Inc.’s (“Google”) motion for judgment on the pleadings. The Court found that the patent failed the “machine-or-transformation” test because, among other reasons, the process was not tied to a particular machine or apparatus and it could be conducted manually by a human. The mere recitation of “computer” in each independent claim was not convincing, as the patent’s process could be “performed exactly the same by a person and by a computer, the only difference being that the computer performs the process significantly faster than a human.” The Court relied on the Federal Circuit’s en banc decision in CLS Bank Int’l v. Alice Corp. Pty, 717 F.3d 1269 (Fed. Cir. 2013). More generally, the Court also concluded that the patent’s process of underwriting commercial transactions by a third party to guarantee performance was abstract and not directed to any specific device or system, concrete application, or specific industry.

Judge Stark Bifurcates Damages from Liability Issues

In British Telecommunications PLC v. Google Inc., C.A. No. 11-1249-LPS (D. Del. July 22, 2013), Judge Stark granted defendant Google Inc.’s motion to bifurcate damages from liability issues pursuant to Federal Rule of Civil Procedure 42(b). Specifically, the Court was willing to bifurcate expert discovery and trial relating to damages, after the completion of fact discovery, to reduce juror confusion, which was likely due to the complicated nature of the case involving multiple patents, a variety of asserted claims, differing theories of infringement, and a wide range of accused products (around 50).

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