Patent Filings Roundup: ‘Something in the Water’ with Sharp Spike in District Court Filings

Is there something in the water this week? While Patent Trial and Appeal Board (PTAB) filings were up slightly (the spike due entirely to 14 new petitions from Comcast against Rovi in their massive ongoing licensing dispute), the district courts—particularly the Texas branches—had a banner week, with 127 new patent filings—54 of which were filed Friday, April 24 alone. The majority, 31, were filed in Texas courts.

Good Friday? The 54 new complaints included a spate of filings by entities controlled by IP Edge and Leigh Rothschild, more VoIP-PAL suits, and some high-profile standard-essential patent infringement cases by Conversant Wireless against Tesla. They also included 16 new suits filed by a new entity, as described below.

Watertight case: Inventor-controlled litigation vehicle Kirsch Research and Development, LLC (Mark C. Strait) on Friday, April 24, 2020 sued 16 mostly U.S. manufacturing companies that make and sell roof liners in the Eastern District of Texas, the Northern District of Texas, and in Pennsylvania’s Eastern District, including Certainteed Corporation, DuPont, Intertape Polymer Corporation, Owens Corning, IKO Enterprises Limited, Bluelinx , Atlas Roofing Corporation, GAF Corporation, TAMKO Building Products LLC, Continental Materials Inc., Tarco Specialty Products, Inc., Underlayment Specialties Plus, LLC, IKO Industries, Inc., Epilay, Inc., FT Synthetics Inc., Dorken Systems, Inc., System Components Corporation, and InterWrap Corp. The two patents asserted, 6,308,482 and 8,765,251, claim a “Reinforced roof underlayment and method of making the same.”

Long time coming: It has been almost three years since Allergan partnered with the Saint Regis Mohawk Tribe in an attempt to avoid review of their patents in both District Court and the PTAB, prompting widespread condemnation and triggering Congressional attention. The idea—renting the sovereign immunity of an indigenous American sovereign nation to shield patents from invalidity review—failed spectacularly. While the District Court found it was a sham and the PTAB, Federal Circuit, and members of Congress introduced bills specifically targeting the scheme, it did have major implications for a less contrived situation—that where a state university, for instance, holds patents and seeks to shield itself from review. Those challenges were likewise unsuccessful, the Federal Circuit affirmed the ruling last summer, and they have now been denied certiorari (as of January this year). The PTAB, in a highly unusual move, stayed those petitions while the issue went up the Federal Circuit, and has now ruled on the petitions filed three years ago, styled Gilead Sciences, Inc. v. Regents of the University of Minnesota. The Board denied all three petitions on other grounds, which suggests that, had Minnesota not sought the stay and challenged the ruling up to the Federal Circuit and the Supreme Court, they would have had the cases settled years ago without these wasted resources. Of the challenges, two covered the same patent. The Board denied all three over a dissent from one of the panel, who argued that the majority inappropriately resolved a factual dispute in favor of the patent owner to reach an unmeritorious denial.  The dissent argued:

The majority, however, does not analyze the arguments that are presented in the current Petition. Instead, the majority focuses on whether additional prior art . . . provide a sufficient motivation to substitute fluorine at the 2’ down position. … I do not believe Petitioner has a burden to preemptively address those prior art teachings in the Petition itself. Nor would I resolve the type of factual dispute that the majority does in Patent Owner’s favor at this preliminary stage in the absence of a full evidentiary record.