Posts in District Courts

Vidal Memo Clarifying PTAB Discretionary Denial Analysis Says Fintiv Does Not Apply to Parallel ITC Investigations

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has issued a memorandum on the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” clarifying current Patent Trial and Appeal Board (PTAB) practice on discretionary denials of inter partes review (IPR) and post grant review (PGR) proceeding institutions. The memo and corresponding press release explain that the PTAB “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

CAFC Reverses January Decision Affirming Sufficient Written Description for Negative Claim Limitation Over Judge Linn’s Dissent

Earlier today, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc. granting a petition for rehearing from appellant HEC Pharm Co., Ltd. In granting HEC’s petition, the panel majority of Chief Judge Kimberly Moore, who authored the decision, and Circuit Judge Todd Hughes vacated a previous January ruling by the Federal Circuit, which had affirmed the District of Delaware’s final judgment that Novartis patent claims covering its Gilenya treatment for multiple sclerosis were not invalid for failing to satisfy the written description requirement under 35 U.S.C. § 112. Senior Circuit Judge Richard Linn authored a dissent arguing that the panel majority had improperly adopted a heightened written description standard and failed to take into account expert testimony from Novartis regarding a negative claim limitation that the district court found was supported by ample evidence.

Patent Filings Roundup: Mylan Accuses Bausch of Planting Trulance® Patent Thicket; American Patents Files 63rd Suit, Attacks Semiconductor Industry; Intel Joined to VLSI IPRs Years After Fintiv Denial

A normal (statistically) patent filings week saw 29 new Patent Trial and Appeal Board (PTAB) proceedings (including a pair of post grant reviews) and 67 district court patent complaints, with another 76 terminations. Among those cases, note: Peter Pedersen has continued to add defendants to what promises to be a wide-ranging assertion campaign based on a single patent covering organizing email lists; Samsung has settled a tranche of IPRs against Trenchant Blade Technologies (associated with Tanit Ventures, Inc., with old patents, presumably with a backend, from Taiwan Semiconductor Manufacturing Corporation TSMC); Google filed more inter partes reviews (IPRs) against Jawbone (the failed company “zombie” NPE now controlled by Fortress); Samsung filed a PGR on the single design patent that has been asserted repeatedly by WePay Global Payments against generic graphical user interfaces (D930702); and various highlights, below.

CAFC Reverses and Vacates Decision for L’Oréal, Finding District Court Claim Construction was Improper

On June 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed in part, vacated in part, and remanded a decision by the United States District Court for the District of Delaware relating to the University of Massachusetts’ (UMass’) suit against L’Oréal S.A. and its American subsidiary L’Oréal USA, Inc. (collectively, L’Oréal), alleging patent infringement of both U.S Patent No. 6,423,327 (the ‘327 patent) and U.S. Patent No. 6,645,513 (the ‘513 patent). The district court held that it lacked personal jurisdiction over L’Oréal S.A. and that the patents were invalid based on indefiniteness. UMass on appeal challenged both of the district court’s holdings, arguing that they were entitled to jurisdictional discovery against L’Oréal S.A. and that the claim construction performed by the district court was improper.

Top Gun Copyright Lawsuit—A Real Dog Fight or Destined to Flameout?

On June 6, Paramount Pictures got its tower buzzed for copyright infringement in the U.S. District Court for the Central District of California over the blockbuster film of the summer, Top Gun Maverick. According to the allegations in the complaint, in 1983, author Ahud Yonay wrote a magazine story about the real-life exploits of two naval fighter pilots entitled, “Top Guns.” Paramount allegedly secured the “exclusive motion picture rights to Ehud Yonay’s copyrighted story” and in 1986 released the motion picture Top Gun. Fast forward a few decades. In 2018, Yonay’s heirs (Plaintiffs in this action who are both Israeli citizens) allegedly served Paramount with a notice “terminating” the original assignment of the motion picture rights to Paramount. Paramount apparently took the position that the purported termination was ineffective and, over the Memorial Day weekend, launched Top Gun Maverick to critical acclaim at the box office (and to the delight of millions of fans of the original 1980s classic).

Another Peculiar Anti-Patent Court Decision in ParkerVision v. Qualcomm

Infringing patented inventions feels like stealing, from the innovator’s perspective, much like a smash and grab at a jewelry store. Politicians refuse to fix the gutted patent system so it can protect U.S. startups and small inventors. The American Dream is slipping away, as it consolidates into the hands of just a few tech giants and sending whatever is left to China. Case in point, ParkerVision v. Qualcomm, which illustrates just how anti-patent some courts have become. In this case the importance of ParkerVision’s seminal semiconductor chip technology that helped to transform cellphones into smartphones is at issue. ParkerVision invested tens of millions in R&D, but the courts have allowed it to be taken from them and transferred to a multinational corporation free of charge.

CAFC Affirms California Court’s Claim Construction and Damages Calculation in Flash Drive Infringement Suit

On Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the U.S. District Court for the Central District of California from an appeal by Kingston Technology Company LLC, in which the district court held that Kingston willfully infringed U.S. Patent No. 6,926,544 (‘544 patent) and awarded $7,515,327.40 in compensatory damages. The CAFC said in part that the district court can judicially correct claims when there are “obvious minor typographical and clerical errors in patents” without changing the scope of the claim.  

More Mandamus Maneuvering at the CAFC in Latest Venue Transfer Win for Apple

The U.S. Court of Appeals for the Federal Circuit (CAFC) today granted Apple’s petition for a writ of mandamus asking the court to direct the U.S. District Court for the Western District of Texas to transfer a case brought by BillJCo, LLC to the Northern District of California. BillJCo owns six patents directed to beacon technology, with Bill Johnson and his son Jason Johnson, who lives in Waco, Texas, named as inventors or co-inventors. The suit was brought against Apple for infringement based on its iBeacon protocol. Apple argued that it “researched, designed, and developed the accused technology from its headquarters within the [Northern District of California]; that evidence and witnesses would likely be in Northern California; and that neither BillJCo nor this litigation had any meaningful connection to Western Texas.”

Patent Filings Roundup: Petitions on Key Dupe Patents Denied Under Fintiv; Taxidermy Patent Filings Stuffed

It was a slow week at the Patent Trial and Appeal Board (PTAB) and a fast one in the district court, with 82 new patent complaints and 85 terminations, but just 18 patent filings at the PTAB. Those few filings were mostly a battery company challenging Maxell patents, a few bigger NPE cases, and Apple and Samsung filing against assertor Smart Mobile Technologies from the middle of last year. Askeladden had a petition denied on the merits, Microchip Technology had a petition denied on General Plastics, and The Hillman Group got four inter partes reviews (IPRs) denied under Fintiv, guaranteeing they will head to trial in the Eastern District of Texas; more below.

Hyatt Returns to SCOTUS with Request to Clarify Standard for Summary Judgment, APA Scope of Review Provisions

Gilbert Hyatt, an inventor who has been granted more than 70 patents and has filed more than 400 applications with the U.S. Patent and Trademark Office (USPTO), has petitioned the U.S. Supreme Court asking the Justices to weigh in on his challenge of a policy he alleges the USPTO implemented in the 1990s to categorically deny him issuance of any additional patents. Hyatt has been embroiled in litigation with the USPTO for decades and won a previous Supreme Court appeal in 2012.  

LG’s Recent Infringement Fight Against TCL Could Take Some Tips from DivX’s Approach

On April 21, 2022, LG Electronics Inc. filed suit against Chinese television manufacturer, TCL, through several of its affiliates and related entities, in the Eastern District of Texas for patent infringement. See LG Electronics, Inc. v. TCL Electronics Holding Ltd. et al, Case: 2:22-cv-00122 (EDTX). The patents relate to display hardware, wireless transmission technology, and user interface controls. Several of TCL’s 4-Series, 5-Series, and 6-Series TVs are accused of infringement. The patents asserted by LG are U.S. Patent Nos. 7,982,803, 9,080,740, 9,788,346, 10,334,311 and 10,499,431. LG requests a jury trial, seeks a permanent injunction, and a finding that the infringement is willful (for enhancement purposes) and exceptional (for the awarding of attorneys’ fees).

CAFC Clarifies Infringement Analysis and Vacates a Finding of Noninfringement for Hulu

On May 11, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the claim construction and decision of the United States District Court for the Central District of California to exclude evidence relating to damages but vacated its infringement determination and remanded a case alleging that Hulu, Inc. infringed Sound View Innovations, Inc.’s patent for data streaming technology. Sound View is the owner of expired U.S. Patent No. 6,708,213 (the ‘213 patent), which discloses “methods which improve the caching and streaming of multimedia data (e.g., audio and video data) from a content provider over a network to a client’s computer.” In June 2017, Sound View sued Hulu, alleging that its “Hulu Streaming Video on Demand products” infringed six Sound View patents, though only claim 16 of the ‘213 patent remained at issue on appeal.

Patent Filings Roundup: FintivDenials Over WD of TX, ITC Schedules; Vector Capital-Funded Semi Campaign Hits an IPR Wall

This week saw 60 district court patent complaints, 76 terminations, 26 Patent Trial and Appeal Board (PTAB) petitions (some post grant reviews [PGRs] in there), and two new Fintiv denials—one PGR and one inter partes review (IPR). Gesture Technology had a handful of IPRs instituted against its asserted portfolio; lots of dismissals from relatively high-profile semiconductor cases suggest either a group or cheap RPX settlement; and a number of older assertion campaigns seemed to wrap up with terminations.

Mailer’s Remorse: Notice Letters and Personal Jurisdiction for Declaratory Judgment Lawsuits

There are many reasons why patent holders might want to put potential infringers on notice of their rights. Such communications can serve the salutary goal of encouraging settlement of disputes without resort to lawsuits. And under some circumstances, notice may be legally necessary under 35 U.S.C. § 287 to enable a patent holder to recover damages for infringement. But a patent holder might be reluctant to do this if providing such notice can subject it to personal jurisdiction for a declaratory judgment suit in a remote and inconvenient forum.

SDNY Finds Patent for Processing Financial Transaction Data Invalid Under 101

Last week, the U.S. District Court for the Southern District of New York granted Block, Inc.’s Motion to Dismiss a complaint brought by AuthWallet, LLC against it for failure to state a claim. The district court found that the claims of AuthWallet’s patent were invalid because they claimed patent ineligible subject matter under 35 U.S.C. § 101. AuthWallet’s U.S. Patent No. 9,292,852 relates to systems and methods for processing financial transaction data. Block provides online platforms, products, and services that facilitate financial transaction data. Specifically, Block offers mobile payment options that provide a means for customers to earn and redeem rewards for multiple vendors. In its complaint, AuthWallet alleged that Block’s payment platforms infringe on one or more of claims of the ’852 patent, either literally or under the doctrine of equivalents. Specifically, AuthWallet alleged that Block put the inventions claimed by the ’852 patent into service (i.e., used them) and, therefore, Block benefited financially and commercially.