This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.
In Worlds Inc. v. Activision Blizzard, Inc., No. 12-cv-10576, Judge Casper denied Activision’s motion for attorneys’ fees and denied in part and granted in part Worlds Inc.’s motion for disallowance of costs.
In a case filed almost ten years ago, Activision sought attorneys’ fees under 35 U.S.C. § 285 for the period April 2020 to present, arguing the case was exceptional because Worlds continued to pursue infringement claims knowing that the asserted claims were invalid for lacking patent eligibility (§ 101).
At the joint request of Worlds and Activision, the case was stayed from 2016 to April 2020, while three IPRs filed by third party Bungie, Inc. were considered by the PTAB, and the PTAB’s findings of invalidity were appealed to the Federal Circuit. In 2018, the Federal Circuit vacated the decisions on the ground that Activision should have been named a Real Party in Interest (RPI). The PTAB on remand vacated its decisions and, in April 2020, the district court case was continued. Activision ultimately prevailed when its motion for summary judgment of invalidity of all claims on § 101 grounds was granted in April 2021.
As its only evidence, Activision cited statements by Worlds during the litigation acknowledging the “risk” of a possible invalidity finding based on § 101. The Court found that acknowledgement of potential risk alone did not make Worlds’ continued assertion of the claims objectively unreasonable, noting that Activision did not even raise possible patent ineligibility of the claims until one year after the Supreme Court’s decision in Alice.
In considering the parties’ litigation conduct, the Court found that, even if Worlds had not been speedy during fact discovery, Activision’s own litigation behavior weighed against exceptionality, particularly since Activision had concealed its status as a an RPI when requesting the stay. The Court noted that “had Activision’s RPI status been revealed to the PTAB in 2015, the IPR petitions would have been denied outright.” Even though Activision had ultimately prevailed in the litigation, the Court denied Activision’s motion.
With respect to Worlds’ motion to disallow Activision’s Amended Bill of Costs, the Court awarded all requested costs to Activision, with the exception of the costs of rough deposition transcripts. The Court allowed costs for reasonable attempts at service of process, deposition materials, hearing transcripts that were necessary to adjudicating an appeal by Worlds, and witness fees related to depositions taken at Worlds’ (the party opposing the request for costs) request.
The Court also awarded costs for eight depositions, citing “special circumstances,” such as witnesses that were either deposed at the request of party opposing costs, or potential opposing party witnesses, or both. The Court taxed costs for all eight depositions because they were either requested by Worlds, of individuals listed on its initial disclosures, or of individuals designated as a corporate witness pursuant to Rule 30(b)(6).
In Milliman, Inc. v. Gradient A.I. Corp., No. 21-cv-10865, Judge Gorton denied a motion to dismiss under 35 U.S.C. § 101 where the patents are directed to a three-step process for anonymizing the transmitting of healthcare data.
Under Alice Step One, the Court found that the asserted “patents are directed to the abstract idea of labeling and matching data,” and specifically found that the claimed subject matter was not analogous to that in cases such as DDR Holdings.
Under Alice Step Two, the Court searched for an inventive concept, finding that “[t]he claims at issue here arguably recite a specific, discrete implementation of the abstract idea of requesting and retrieving data that constitutes a patent-eligible inventive concept” (internal quotation marks omitted). Considering the Parties’ arguments, the Court concluded that there is “at least a genuine issue of material fact with respect to whether the claimed encryption, aggregation and reporting of anonymized information proceeds in an inventive manner resulting in a technical improvement of those aspects of the system.” Accordingly, the Court determined that, here, the question of patent eligibility was not amenable to resolution at the motion to dismiss stage.
In Decapolis Systems, LLC v. eClinicalWorks, LLC, No. 21-cv-502 (W.D. Tex.), No. 22-cv-40020 (D. Mass.), Judge Albright of the Western District of Texas transferred the case to the District of Massachusetts on forum non conveniens (28 U.S.C. § 1404) grounds. This is particularly noteworthy in that this case was not at issue in any of the multiple recent mandamus petitions involving forum selection in Texas federal courts.
Neither party is based in Texas. While there would be judicial efficiency gained due to Decapolis’ multiple related cases in the District, this was outweighed by the fact that eClinicalWorks (“eClinical”) was based in Massachusetts, where all relevant evidence and witnesses are located.
The Court analyzed the relevant factors as follows, ultimately finding that eClinical had shown that the District of Massachusetts was “a clearly more convenient forum” (emphasis by the Court):
|The Court’s Finding|
|Relative ease of access to sources of proof||Favors transfer|
Availability of compulsory process to secure the attendance of witnesses
Cost of attendance for willing witnesses
|All other practical problems that make trial of a case easy, expeditious and inexpensive||Disfavors transfer|
|Administrative difficulties flowing from court congestion||Disfavors transfer|
|Local interest||Favors transfer|
|Familiarity of the forum with law that will govern case||Neutral|
|Problems associated with conflict of law||Neutral|
Regarding “relative ease of access to sources of proof” and “cost of attendance for willing witnesses,” the Court found that notwithstanding the presence of an eClinical office in Austin, “eClinical headquarters are located in the [District of Massachusetts, or the] DM,” “the allegedly infringing products were developed in the DM, the eClinical employees with knowledge of the products are in the DM, and all the related code is there as well.” And, as to cost of attendance, the Court noted that while all eClinical witnesses who will likely testify live and work in Massachusetts, Decapolis’ only fact witness lives in New York.
As to “all other practical problems that make trial of a case easy, expeditious and inexpensive,” the Court focused on related litigation, and there was no dispute that fourteen cases involving the same patents were pending in Texas. As such, the Court found that “[s]ignificant judicial economy would be gained by trying all 14 cases in the same court.”
Regarding “administrative difficulties flowing from court congestion” the Court observed that “the speed in getting a case to trial is determinative” and that WDTX has a faster expected time to trial.
Last, as to “local interest,” the Court found that “[b]oth the DM and the WDTX have localized interests in this case. eClinical has a business presence in both districts. But the alleged infringing products were likely developed in the DM, and this case will call into question the work and reputation of eClinical and its employees, both of which have a presence in the DM.”
February 14, 2023
January 5, 2023
December 17, 2022
December 15, 2022
December 13, 2022
December 8-9, 2022
December 7-8, 2022
December 7-8, 2022
December 7, 2022
Visit our Unified Patent Court (UPC) resource center for insights on what to consider for European patents.