Judge Reyna in Packet Intelligence: it was clear error for the district court to base its finding of inventiveness on the abstract idea itself

There was a mixed decision in Packet Intelligence:



NetScout Systems, Inc. and NetScout Systems Texas,
LLC (“NetScout”) appeal from the judgment of the U.S.
District Court for the Eastern District of Texas after a jury
verdict and bench trial that (1) NetScout willfully infringed
claims 10 and 17 of U.S. Patent 6,665,725 (“the ’725 patent”), claims 1 and 5 of U.S. Patent 6,839,751 (“the ’751
patent”), and claims 19 and 20 of U.S. Patent 6,954,789
(“the ’789 patent”); (2) no asserted claim is invalid under 35
U.S.C. §§ 101, 102(a), 102(f); (3) Packet Intelligence LLC
(“Packet Intelligence”) is entitled to $3.5 million in damages for pre-suit infringement; (4) Packet Intelligence is entitled to post-suit damages of $2.25 million; (5) Packet
Intelligence is entitled to $2.8 million in enhanced damages; and (6) Packet Intelligence is entitled to an ongoing
royalty for future infringement of 1.55%. Packet Intelligence LLC v. NetScout Sys., Inc., No. 2:16-cv-230-JRG,
2018 WL 4286193, at *1 (E.D. Tex. Sept. 7, 2018).

Because the district court erred in denying NetScout’s
motion for judgment as a matter of law on pre-suit damages, we reverse the district court’s pre-suit damages
award and vacate the court’s enhancement of that award.
We affirm the district court’s judgment in all other respects.



Judge Reyna's issue:


I join the majority’s reasoning and conclusions as to all
issues except the patentability of the asserted claims under
§ 101. In my view, the claims are directed to the abstract
idea of identifying data packets as belonging to “conversational flows” rather than discrete “connection flows.” While
the claimed implementations of this idea may ultimately
contain inventive concepts that save the claims, it was
clear error for the district court to base its finding of inventiveness on the abstract idea itself and its attendant benefits.