Alexsam, Inc. v. The Gap, Inc. et al
ORDER ADOPTING REPORT AND RECOMMENDATIONS for 87 Report and Recommendations, GRANTING 15 SEALED PATENT MOTION For Partial Summary Judgment To Dismiss Defendants' On-Sale Bar Defenses And Counterclaims filed by Alexsam, Inc. and FURTHER ORDERED that dfts on-sale bar defenses are DISMISSED. Signed by Judge Michael H. Schneider on 4/26/2013. (sm, )
United States District Court
EASTERN DISTRICT OF TEXAS
BEST BUY STORES LP
Cause No. 2:13-cv-2
LEAD CASE FOR INVALIDITY
BARNES & NOBLE, INC. AND BARNES & NOBLE
MARKETING SERVICES, LLC
Cause No. 2:13-cv-3
THE GAP INC. AND DIRECT CONSUMER
Cause No. 2:13-cv-4
J.C. PENNEY COMPANY, INC. AND J.C. PENNEY
Cause No. 2:13-cv-5
MCDONALD’S CORPORATION AND P2W, INC.
Cause No. 2:13-cv-6
TOYS “R” US—DELAWARE, INC. AND TRU-SVC,
Cause No. 2:13-cv-7
THE HOME DEPOT, U.S.A., INC. AND HOME
DEPOT INCENTIVES, INC.
Cause No. 2:13-cv-8
ORDER ADOPTING REPORT AND RECOMMENDATION
OF THE UNITED STATE MAGISTRATE JUDGE
The above-entitled and numbered civil actions were heretofore referred to United States
Magistrate Judge Caroline M. Craven pursuant to 28 U.S.C. § 636. The Report of the Magistrate
Judge which contains her proposed findings of fact and recommendations for the disposition of
such actions has been presented for consideration. Defendants filed objections to the Report and
The Court conducted a de novo review of the Magistrate Judge’s findings and
conclusions. Defendants’ objections are without merit. The Court is of the opinion that the
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findings and conclusions of the Magistrate Judge are correct. Therefore, the Court hereby adopts
the Report of the United States Magistrate Judge as the findings and conclusions of this Court.
Defendants first argue that a pre-critical date fax from Mr. Dorf to Debbie Anderson of
MCI clearly states that Mr. Dorf tendered a sale contract to MCI for prepaid card activation
services. Defendants believe that the fax’s reference to Mr. Dorf sending a contract to MCI
indicates an intent to be bound. The Court disagrees. Defendants provide no evidence or facts
addressing the subject or terms of the alleged contract. Thus, a fact finder would have no basis to
determine whether the contract actually qualified as an offer for sale rather than preliminary
negotiations or product promotion. Furthermore, the fax does not suggest that MCI could have
entered into a binding contract by simple acceptance. Accordingly, the Court finds Defendants’
objection without merit.
Defendants additionally allege that there is a material fact question pertaining to whether
Alexsam performed the patented method for commercial purposes prior to the critical date. In a
pre-critical date fax from Mr. Dorf to Mary Sue Rhoda of LinkUSA, Mr. Dorf explained that he
had a system “presently live in the retail environment” (Doc. No. 16-3 at 2). Defendants believe
this reflects that Mr. Dorf was actually performing the patented method for commercial
purposes. The Court disagrees. As highlighted by Defendants, “performing the patented method
for commercial purposes before the critical date constitutes a sale under § 102(b).” Plumtree
Software, Inc. v. Datamize, LLC, 473 F.3d 1152, 1163 (Fed. Cir. 2006). But here, there is no
evidence to support this claim. First, there is no evidence that the system Mr. Dorf refers to in the
fax is the patented invention. Second, there is no evidence that “presently live” equates to
commercialization or an attempt to profit from the commercial use of the invention. Therefore,
the Court finds Defendants’ objection without merit.
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Accordingly, it is hereby ORDERED that Plaintiff Alexsam, Inc.’s Motions for Partial
Summary Judgment to Dismiss Defendants’ On-Sale Bar Defense (2:13-cv-2, Doc. No. 16);
(2:13-cv-3, Doc. No. 14); (2:13-cv-4, Doc. No. 15); (2:13-cv-5, Doc. No. 16); (2:13-cv-6, Doc.
No. 15); (2:13-cv-7, Doc. No. 15); (2:13-cv-8, Doc. No. 15) is GRANTED.
It is further ORDERED that Defendants’ on-sale bar defenses are DISMISSED.
It is SO ORDERED.
SIGNED this 26th day of April, 2013.
MICHAEL H. SCHNEIDER
UNITED STATES DISTRICT JUDGE
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