Patent Filings Roundup: No Fracking IPRs; New Magnetar NPE Identified; Board Rules on Scope of Adverse Judgment

With a pretty-standard 30 Patent Trial and Appeal Board (PTAB) petitions and 70+ district court complaints filed this week, it’s worth noting that the steady stream of IP Edge and Rothschild patent filings hasn’t let up, that the WSOU matters continue to bump up the numbers in both, and that Magentar Capital-related petitions and cases continue to flourish.  To wit, ZTE pulled the trigger on a few inter partes reviews (IPRs) against some of the WSOU patents asserted against them, showing a little backbone against the frequent assertor; Verizon has continued to trickle out the IPRs against Huawei; Gree earned another few denials under the Board’s discretion (and have now on a per-named-entity basis probably the biggest beneficiaries of it).  New NPE of unknown origin Sidekick Technology, LLC was DJ’d by a band of online car sales sites in 2:21-cv-06737 over 12 patents; and the same time that Samsung won some IPRs against Solas OLED, the Magnetar-backed entity hit them back (again) in District court.

Fracking IPRs Kicked Despite Plentiful Evidence of Likely Albright Trial-Date Delay: In a competitor-competitor Western District-plus-IPR fight over fracking, the Board exercised its Fintiv discretion to deny institution in March over an aspirational October trial date from an Albright scheduling order, despite lengthy evidence both of chronic delays in that court (which has yet to have a trial on “schedule”, and which saw a five-month increase in time-to-trial in 2020) AND specific evidence that the case before Judge Albright would likely be consolidated and moved back to accommodate the later-filed actions.  The Board found such evidence unavailing, finding the October date effectively dispositive, and setting another big patent trial into the ever-growing queue at the Courthouse doors. Nine Energy Service Inc. v. NCS Multistage Inc., IPR2020-01615, U.S. Patent 10,465,445.

Irish Rhapsody: The Magnetar Capital-funded Irish NPEs continue to roll with big-ticket litigation, and seem to have monetized well in some of their rounds (Solas OLED) and less so in others (Datascape), but obviously, people vote with their feet and their wallets—and Magnetar, now that they’ve had a taste, show no sign of slowing down.  They’ve recently acquired another 120 patents to a certain Scaramoge Tech. Ltd.  I’m no betting man and I’m just an outside observer here, but I’d bet $20 to $1 that Scaramoge launches either an ITC complaint, a big district court assertion campaign, or both, and I’ll bet it provokes either a slew of challenges or a slew of settlements that help fuel future speculative assertions.

Dying on the Vine: In a merits-denial in case between Gallo wine (the cheap college jug-o-wine go-to) and Vineyard Investigations, on the other hand, the Board judge labored through the detailed merits of the petition, finding that Gallo’s arguments were, while plentiful, weak and lacking in merit; having fully reviewed the merits and denied on them, the Board disregarded the arguments related to discretionary denial factors.  IPR2021-00077.

Conflict, Adverse: The scope and effect of adverse judgment versus the withdrawal of a petition or other alternative forms of termination continues to be hammered out at the Board.  In one interesting procedural case, IPR2020-00388, uniQure N.V. and UniQure Biopharma B.V. disclaimed most of the challenged claims prior to institution (something I’ve done in private practice) as a potential way to stave off institution, disclaiming claims 6 and 9–13 (dependent claims 14 and 15 were likewise challenged).  The gambit failed, with the Board instituting on 14 and 15.  The uniQure entities filed multiple motions to amend, and after the guidance from the Board came back in a way they didn’t like, contacted the Board to request adverse judgment on the remaining claims 14 and 15, but also to debate the scope of such an adverse judgment—did it cover the earlier-disclaimed claims, or just the instituted ones?

The Board reasonably ruled the estoppel effects of the Adverse Judgment didn’t apply to the earlier-disclaimed claims, just to claims 14 and 15.  Presumably, UniQure walked away from the more generic, possibly indefensible claims; but the limitations therein might have been found in the rest of their portfolio, and caused estoppel problems.  Interestingly, Arthrex held that the Board could extend estoppel to disclaimed claims, but the Board distinguished it here as a little discretionary.  Limiting estoppel to just claims 14 and 15 served to end the current challenge without enlarging it unintentionally beyond the bounds of the challenge.

Image Source: Deposit Photos
Author: Zerbor
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