IP Law Daily Court pares down soil sample tracking patent infringement litigation
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Wednesday, January 17, 2018

Court pares down soil sample tracking patent infringement litigation

By Joseph Arshawsky, J.D.

Taplogic, LLC’s ("Taplogic") motion for summary judgment of non-infringement on all claims, except independent Claim 1, of U.S. Patent No. 8,286,857 ("the ’857 Patent") was granted by the federal district court in Fort Wayne, Indiana. The court also granted summary judgment of no direct infringement of Claim 1 and no contributory infringement of Claim 1, leaving only indirect infringement of Claim 1. The court denied Taplogic’s motion for summary judgment of invalidity and its motion to dismiss for improper venue and lack of jurisdiction. The court also denied plaintiff Agri-Labs Holding LLC’s ("Agri") motion for summary judgment on infringement (Agri-Labs Holding LLC v. Taplogic, LLC, January 16, 2018, Springmann, T.).

On January 22, 2015, Agri sued Taplogic alleging infringement of the ’857 Patent regarding a "Soil Sample Tracking System and Method." There are two independent claims, Claim 1 recites a method and Claim 13 recites a system. The product accused of violating the claimed method and system is called the AgPhD Soil Test application ("the AgPhD App"), developed by Taplogic for use with smartphones. The opinion arose on the parties’ cross-motions for summary judgment, and Taplogic’s motion to dismiss.

Jurisdiction and venue. The court rejected Taplogic’s jurisdictional objection on grounds that it was waived when Taplogic appeared, answered, and asserted counterclaims against Agri. Given that the case has been pending for nearly three years, even though Taplogic objected to venue shortly after the Supreme Court’s decision in TC Heartland, the granting of Taplogic’s motion to dismiss for lack of venue "at this late stage in the case would not promote the just, speedy, and inexpensive resolution of the dispute." The court found that Rules 12(g)(2) and (h)(1)(A) notwithstanding, Taplogic’s motion to dismiss for lack of venue was not timely. Accordingly, the court denied both motions to dismiss.

Patent-ineligible concept. Taplogic argued that the ’857 Patent is directed to an abstract idea, which is ineligible for patent protection under 35 U.S.C. § 101. The court disagreed. The court agreed with Taplogic that soil sampling for the purpose of evaluating nutritional deficiencies in a field is an abstract idea. However, the court did not agree that a method for performing soil sampling is abstract. Claims directed to a "new and useful technique" for performing a particular task are not directed at an abstract idea. The court found that the patent purports to solve issues associated with existing techniques by coming to the end result more efficiently and accurately. Therefore, "the Court does not find that the ’857 Patent is directed to an abstract idea that is ineligible for patent protection." Even if it had, the court found that the patent-in-suit did not meet the second step in the analysis, because it found that the ’857 Patent claimed an inventive concept. The court compared the invention with prior practices and found that the invention embodied in the ’857 Patent improves the technological process of soil sampling and the manner in which containers are tracked and associated with the geographic location in the field. "The method and system claimed in the ’857 Patent therefore accomplish something the industry had not previously been able to accomplish and resolve a particular problem related to the collection of soil samples." The court therefore found as a matter of law that the patent introduces an "inventive step" and is not invalid under the section 101 challenge.

Obviousness. Taplogic offered only a patent attorney declaration that was conclusory and not factually supported, in order to argue obviousness under the prior art. Taplogic presented little to no evidence regarding the scope and content of the prior art, or the level of ordinary skill in the art. Taplogic failed to provide the court with copies of the prior art references. The declaration does not cite any specific reason to combine any prior art reference. The court could not evaluate obviousness, and therefore denied Taplogic’s motion for summary judgment on invalidity.

Direct infringement. The court reviewed each of the eight steps of the method claim, Claim 1, and compared each step with a function of the AgPhD App. The court concluded that "there remain genuine issues of material fact as to whether, in the course of using the AgPhD App for its intended purpose, all of the steps of the method of Claim 1 are performed." However, the court granted summary judgment of non-infringement as to dependent claims 2-12. Without expert testimony, Agri could not meet its burden of proof at trial to show that bags with QR codes delivered by Midwest Laboratories for use with the AgPhD App meet claim 2, or that the term "database" and "syncing" applies to the design of the program, the subject of claims 3, 4, and 4. Dependent claims 5-12 require the "database" limitation from Claim 3. The court granted summary judgment as to the system Claim 13 because of the need for experts to discuss the term "database" which Agri did not provide.

The court still found no direct infringement for Claim 1. "Even if some acts of direct infringement occurred, there is no evidence that each of the steps of the method are attributable to Taplogic." Accordingly, since Taplogic did not perform every step, the court granted summary judgment of no direct infringement of the ’857 patent.

Indirect infringement. Due to Taplogic’s market share, a reasonable juror could not "conclude that not a single one of [Taplogic’s] customers in this sizable share of the market used the devices for their intended purposes." The instructions for the AgPhD App taught an infringing use. Thus, the court found that a reasonable juror could not infer that "not a single one" of the end-users of the AgPhD App directly infringed the ’857 Patent. Taplogic admitted that it knew about the ’857 Patent at least as early as December 2014. Thus, if the jury finds that the instructions teach an infringing use, the jury could also find that Taplogic knew or should have known that such use would infringe, that Taplogic intended to induce infringement, and that therefore Taplogic indirectly infringed the patent-in-suit. Thus, the court did not grant summary judgment as to the issue of induced infringement.

Contributory infringement. The court found that the AgPhD App could be used in a non-infringing manner by manually recording a unique identifier instead of scanning it. Therefore, because the AgPhD App has a substantial non-infringing use, the Defendant is not liable for contributory infringement under § 271(c).

The case is No. 1:15-cv-00026-TLS.

Attorneys: Dean E. McConnell (Indiano & McConnell LLP) for Agri-Labs Holdings LLC. Julie A. Tennyson (Marcum Tennyson PLLC) and Scott A. Davidson (Boehl Stopher & Graves LLP) for TapLogic LLC.

Companies: Agri-Labs Holdings LLC; TapLogic LLC

MainStory: TopStory Patent IndianaNews

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