Federal Judiciary

Summary Judgment Granted by N.D. Cal. in PartsRiver v. Shopzilla

By Michael C. Smith

PartsRiver, Inc. v. Shopzilla, Inc. et al (4-09-cv-00811) (N.D. Cal. August 21, 2009)

Judge: Claudia Wilken (N.D. Cal.)

Holding: Motion for Summary Judgment on Invalidity GRANTED

Readers may recall that PartsRiver was one of the first cases transferred out of the Eastern District of Texas earlier this year following the Federal Circuit's opinion in In re TS Tech, with Judge Folsom granting the pending motion to transfer venue to California, finding that "based on the regional nature of this case, that the Northern District of California is clearly more convenient to the parties and the potential witnesses" (he noted that the case was against six California defendants, with a seventh in Washington). 

Last week District Judge Claudia Wilken showed just how convenient California was for the defendants, granting their defendants' summary judgment motion of invalidity based on the on-sale bar. The court found that plaintiff made an offer for sale where "[its] proposal was a formal, written proposal that described the . . . project in five phases, identifying the work to be performed in each phase. . . . The . . . proposal also included a price and time-line for completion of the first phase and estimated costs for phases two through five, broken out by development and data entry. . . . Under these facts, a commercial offer for sale of the patented invention was made."  Judge Wilken rejected plaintiff's argument that a written proposal was part of its experimentation. "[B]ecause experimental use cannot preclude the on-sale bar after a reduction to practice," she wrote, "and Plaintiff concedes that the invention here was reduced to practice, Plaintiff cannot claim experimental use."  The court also rejected plaintiff's argument that "because the demo was a local embodiment and not the internet embodiment, the invention was not reduced to practice. . . . The fact that the inventors did not fully understand the 'full potential' of their invention or still needed to work on the internet embodiment does not preclude a finding that the invention was reduced to practice."

Full post as published by Eastern District of Texas Federal Court Practice on August 25, 2009 (boomark / email).