Blog May 2, 2022
EDTX & NDTX Monthly Wrap-Up — December 2020
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This post summarizes some of the significant developments in the Northern District of Texas and the Eastern District of Texas for the month of December 2020.
Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00493-JRG-RSP (E.D. Tex. Dec. 14, 2020), Dkt. No. 316: Denial of Defendant's Motions for Attorney's Fees
In late 2018, Uniloc alleged that Google's Pixel line of smartphones infringed various claims of U.S. Patent No. 6,836,654. The '654 patent relates to device-blocking functionality "subsequent to a mounting of a linked user identification module" in a mobile device. '654 patent, cl. 1. Uniloc generally accused the Pixel's removable and non-removable Subscriber Identity Modules ("SIMs") of meeting independent claim 1's "linked user identification module" limitation. See Dkt. No. 294-3 at 12.
The court's January 2020 claim construction order determined that dependent claim 4 was indefinite and construed "linked user identification module" to mean "a user identification module that is the only one that permits normal operation of the device." Dkt. No. 165. As a result of the court's indefiniteness finding, Google sent Uniloc a February letter requesting that dependent claim 4 be dismissed. Google then sent a March letter arguing that removable SIMs were excluded by the court's construction of independent claim 1. The parties continued to litigate the case until it was voluntarily dismissed by Uniloc in June 2020.
Following dismissal, Google moved for attorney's fees. Google contended that the substantive strength of Uniloc's litigating position following claim construction was so weak that attorney's fees were warranted under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014)). Google further contended that Uniloc's refusal to dismiss claim 4 following the indefiniteness finding constituted exceptional conduct.
Ultimately, the court disagreed with Google. It determined that, while Uniloc did not dismiss dependent claim 4, it stopped litigating it and that Google was unable to identify any frivolous or bad faith arguments with respect to claim 4. Similarly, regarding independent claim 1, the court reasoned that Uniloc continued to have a plausible infringement theory in view of the non-removable SIMs. Given the totality of the circumstances, the court determined that the case was not "exceptional" within the meaning of 35 U.S.C. § 285.
Gree, Inc. v. Supercell OY, No. 2:19-cv-00311-JRG-RSP (E.D. Tex. Dec. 17, 2020), Dkt. No. 134: Denial of Plaintiff's Motion to Compel
Plaintiff GREE sued Supercell in September 2019 alleging that various features in the Clash of Clans, Clash Royale, and Hay Day video game franchises infringed U.S. Patent Nos. 9,079,107 and 9,561,439. The asserted patents generally relate to systems and methods for controlling a computer-implemented "social game in which it is possible to constitute a group referred to as a guild by a plurality of users (players) who play the game." '107 patent at 1:57-59.
In October 2020, GREE moved to Compel Supercell to produce "an executable version of its Clash Royale [Clan Wars 1] game 'as it existed prior to August 31, 2020.'" The core of GREE's complaint was that the version of the source code provided by Supercell, while fully executable, did not have access to a live, multi-player environment that would activate many the accused features.
Supercell responded that GREE's request would require them to "undertake the unreasonable burden and expense of building a game environment to simulate a live event that no longer happens[, which is] beyond the scope of discovery and not proportional to any need of this case." Dkt. No. 113 at 6. Moreover, Supercell argued that GREE had ample opportunity to document the accused features in pictures and video, some of which it had already done in GREE's infringement contentions. Finally, Supercell noted that GREE had previously taken Supercell's position that it "cannot restore executable versions of [games that] require a server and client architecture and are not offered today with the features in question active." Id.
The court agreed with Supercell and denied GREE's motion to compel. Importantly, it determined that requiring Supercell to recreate a fully functional version of the Clan Wars 1 gaming environment would be unduly burdensome in light of GREE's current access to the source code and prior access to the live gaming environment.
AlexSam, Inc. v. UMB Financial Corp. and UMB Bank N.A., 2:20-cv-00081 (E.D. Tex. Dec. 21, 2020), Dkt. No. 43: Denial of Defendant's Motion to Dismiss for Improper Venue
AlexSam sued UMB Financial and UMB Bank (the "UMB Entities") in May 2020 alleging infringement of U.S. Patent No. 6,000,608. AlexSam accused the UMB's Entities' practice of providing their health savings account customers with medical cards that operated on the VISA and MasterCard networks as infringing the '608 patent.
In its Amended Complaint, AlexSam alleged that venue was proper because the UMB Entities allegedly (1) marketed, promoted, and sold their health savings account products in Texas; and (2) were signatories for a lease in Plano, which is located within the Eastern District of Texas. See Dkt. No. 18.
UMB Financial moved for dismissal for lack of venue on the grounds that it is a holding company, did not provide the infringing cards, and was only a signatory to the Plano lease, which was purportedly operated by UMB Bank. Dkt. No. 26. Because it was merely "a tenant of record" to the Plano lease, UMB Financial argued, the Plano location did not constitute a "regular and established place of business." Id.
Ultimately, the court denied UMB Financial's motion to dismiss for lack of venue. The court reasoned that "[w]hen there has not been an evidentiary hearing and jurisdictional discovery the district court must construe all pleadings and affidavits in the light most favorable to the plaintiff and accept the uncontroverted allegations in the plaintiff's complaint as true." Accordingly, the court determined that AlexSam's venue allegations were sufficiently pleaded.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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