Intellectual Ventures II LLC v. Bitco Gen. Ins. Corp.

362 F. Supp. 3d 370
CourtDistrict Court, E.D. Texas
DecidedJanuary 24, 2019
DocketCIVIL ACTION NO. 6:18-CV-00298-JRG (LEAD CASE); CIVIL ACTION NO. 6:18-CV-00299-JRG
StatusPublished
Cited by2 cases

This text of 362 F. Supp. 3d 370 (Intellectual Ventures II LLC v. Bitco Gen. Ins. Corp.) is published on Counsel Stack Legal Research, covering District Court, E.D. Texas primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Intellectual Ventures II LLC v. Bitco Gen. Ins. Corp., 362 F. Supp. 3d 370 (E.D. Tex. 2019).

Opinion

RODNEY GILSTRAP, UNITED STATES DISTRICT JUDGE

Before the Court is Defendants' Rule 12(c) Motion for Judgment on the Pleadings that Claim 14 of U.S. Patent No. 7,516,177 is Patent-Ineligible Under 35 U.S.C. § 101 (the "Motion"). (Dkt. No. 178.1 ) Having considered the same, and for the reasons set forth herein, the Court finds that the Motion should be and hereby is DENIED .

I. PROCEDURAL HISTORY

On January 20, 2015, Plaintiff Intellectual Ventures II LLC ("IV" or "Plaintiff") separately sued Defendants BITCO General Insurance Corporation f/k/a Bituminous Casualty Corporation and BITCO National Insurance Company f/k/a Bituminous Fire and Marine Insurance Company (collectively, "BITCO") and Defendant Great West Casualty Company ("Great West") (together, "Defendants") for infringement of U.S. Patent No. 7,516,177 (the "'177 Patent"). (See Case No. 6:18-cv-298, Dkt. No. 1 (originally filed as Intellectual Ventures II LLC v. Bitco Gen. Ins Corp. , Civ. No. 6:15-cv-59 (E.D. Tex.) ); 6:18-cv-299, Dkt. No. 1 (originally file as Intellectual Ventures II LLC v. Great W. Cas. Co. , 6:15-cv-60 (E.D. Tex.).) The cases were consolidated for pretrial purposes with Case No. 6:15-cv-59 as the lead case. (See Dkt. No. 33.)

The '177 Patent generally relates to a technique for aggregating information content, such as Internet content, at a personalized access point of a user. See '177 Patent at Abstract. Claim 14-the sole asserted claim at issue-depends from and inherits all elements and limitations of independent Claim 11. Claim 11 recites:

11. An apparatus for distributing content through one or more distributed information access points to a centralized access point of a user, comprising:
at least one server operative to store one or more of: a) content, b) links to content, c) information about content, and d) information about users including *373information about which content a user has chosen;
a centralized access point of a user accessible via a communications link and operative to provide the user with access to content chosen by or for the user;
at least one distributed information access point accessible via a communications link and operative to implement one or more of: a) list one or more content objects, b) allow a user to choose content for addition to their centralized access point, and c) provide the user with logon access to their centralized access point; and
an administrative interface in communication with the server and operative to create groupings of content into one or more distributed information access points;
wherein a user is enabled with the capability to log on to their centralized access point from one or more distributed information access point(s) and access content chosen from one or more distributed information access point(s).

'177 Patent at 55:4-27. Claim 14 recites:

14. The apparatus of claim 11 wherein the centralized access point is further operative to enable a user to manage any content contributed by them.

Id. at 55:35-37.

A. Claim Construction

On January 11, 2016, the Court construed the following disputed terms:

Claim Term Construction "centralized access point of a user" "a user's network resource that can be used to access content." "distributed information access point" "a network resource which is delivered to one or more users and that enables a user to interact with a centralized access point" "administrative interface" "a software management tool that facilitates administrative functions"

(Dkt. No. 116 at 20, 28.)

B. PTAB Proceedings

On February 25, 2016, Defendants moved, pursuant to Rule 12(c), to invalidate the '177 Patent under 35 U.S.C. § 101 (the "Initial 12(c) Motion"). (Dkt. No. 124.) However, in view of the Patent Trial and Appeal Board's ("PTAB") institution of inter partes review ("IPR") on challenged claims of the '177 Patent, the Court granted Defendants' Motion to Stay on May 12, 2016, without deciding the Initial 12(c) Motion. (See Dkt. Nos. 131, 145; see also Dkt. No. 183-5 (Great W. Cas. Co. v. Intellectual Ventures II LLC , IPR2015-01706, Paper No. 10 (PTAB Feb. 9, 2016) (granting partial institution of the '177 Patent but denying institution on Claims 11-15) ); 183-6 (Great W. Cas. Co. v. Intellectual Ventures II LLC , IPR2015-01707, Paper No. 11 (PTAB Feb. 9, 2016) (granting partial institution of the '177 Patent but denying institution on Claim 14) ).) The Court continued the stay pending the PTAB's final written decision in a separate IPR proceeding involving the '177 Patent between IV and defendants in another lawsuit. (See Dkt. No. 150.) The PTAB issued a final written decision on January 8, 2018, finding Claim 14 patentable under 35 U.S.C § 103. (See Dkt. No. 183-7 (Oracle Am. Inc. v. Intellectual Ventures II LLC , IPR2016-01434, Paper No. 52, at 33-34 & n.15, 39, 41 (PTAB Jan. 8, 2018) (holding that Claim 14 is patentable and Claims 11-13 and 15-20 are unpatentable) ).)

*374C. Continued District Court Proceedings

On March 14, 2018, IV moved to sever and lift the stay as to Claim 14. (Dkt. No. 158.) On June 21, 2018, the Court granted IV's motion, lifted the stay as to Claim 14, and severed the parties' claims pertaining to Claim 14 from Case Nos. 6:15-cv-59 and 6:15-cv-60 into Case Nos. 6:18-cv-298 and 6:18-cv-299, respectively. (Dkt. No. 166.) The Court subsequently consolidated the severed proceedings for pretrial purposes and designated Case No. 6:18-cv-298 as the lead case. (Dkt. No. 172.)

On July 13, 2018, the Court denied Defendants' Initial 12(c) Motion without prejudice and ordered refiling "in light of the new precedent from the Federal Circuit on § 101 and the recently lifted stay in this case." (Dkt. No. 173 at 1.) Defendants subsequently filed the Motion on August 7, 2018, challenging the patent-eligibility of Claim 14 under § 101. (Dkt. No.

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362 F. Supp. 3d 370, Counsel Stack Legal Research, https://law.counselstack.com/opinion/intellectual-ventures-ii-llc-v-bitco-gen-ins-corp-txed-2019.