Posts Tagged: "Patent Litigation"

PTAB Denies OpenSky’s Request for Rehearing But VLSI Cases Highlight Broader PTAB Problems

On March 28, the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) denied petitioner OpenSky Industries’ request for rehearing of an earlier decision denying institution of inter partes review (IPR) of one of two VLSI patents supporting a massive $2.2 billion infringement damages verdict in U.S. district court. The ruling is the latest chapter in a series of challenges to VLSI’s patent claims, which has forced VLSI to run a gauntlet arguably demonstrating that the PTAB fails to function as the alternative forum for speedy validity resolutions originally envisioned by Congress when it passed the America Invents Act (AIA) into law back in 2011.

CAFC Overturns Win for Nintendo Based on District Court’s Incorrect Claim Construction Analysis

On April 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a summary judgment decision by the U.S. District Court for the Western District of Washington in an infringement suit brought by Genuine Enabling Technology (Genuine) against Nintendo Company and Nintendo of America (collectively “Nintendo”) for allegedly infringing certain claims of Genuine’s U.S. Patent No. 6,219,730 (‘730 patent). The CAFC reversed the district court’s summary judgment decision because the district court erred in its construction of “input signal” and should have construed the term to mean “a signal having an audio or higher frequency.”

Judge Michel Implores Full CAFC to Fix ‘Fuzzy’ Rebuttable Presumption of Nexus Jurisprudence

On March 20, Zaxcom, Inc., the owner of U.S. Patent No. 9,336,307 for Engineering Emmy® and technical OSCAR award-winning wireless microphone technology, petitioned the U.S. Court of Appeals for the Federal Circuit (CAFC) for rehearing en banc after the court found its original patent claims unpatentable as obvious. Zaxcom argued that the CAFC’s precedent in Fox Factory, Inc. v. SRAM LLC, 944 F.3d 1366 (Fed. Cir. 2019), “confused the law” regarding a rebuttable presumption of nexus. Now, former CAFC Chief Judge, Paul Michel, has filed an amicus brief supporting Zaxcom and asking the full CAFC to resolve “unintentional confusion and conflict” in the court’s obviousness jurisprudence.

NIH’s Fight for Ownership of Moderna’s COVID-19 Patent Highlights Hazards of Business Collaborations

The National Institutes of Health (NIH) is at legal odds with Moderna, claiming that Moderna neglected to add three NIH scientists to Moderna’s patent application on a principal COVID-19 vaccine. If a court ends up siding with NIH, it would co-own any issued patents on the technology, which could prove to be quite valuable; in 2021, Moderna’s vaccine sales were forecasted to be in the range of $15 billion and $18 billion. With an equal undivided interest in the patent, NIH could do whatever it wishes with it, such as licensing it to others and collecting royalties.

Patent Filings Roundup: Intel Cancels Qualcomm Claims on Remand; New Rideshare, Cloud Storage NPE Campaigns Launched

Some new assertion entities popped up this week, including a high-stakes campaign filed by LS Cloud Storage Technologies LLC (a Waco vintage, if from 2016) on a couple of data-sharing patents (one very old, one somewhat new, U.S. 6,549,988 and U.S. 10,154,092). There was also a new ride-sharing NPE campaign from Fare Technologies LLC (another older LLC with apparent ties to monetizers) against Uber and Lyft on just one patent, RE46727. By the numbers: the district courts saw 70 new patent complaints and another 106 terminated cases this week; the Patent Trial and Appeal Board (PTAB) had their now-usual 25 petitions. 

CAFC Says Dyfan Claim Limitations are Not Invalid Due to Means-Plus-Function Format

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a decision by the U.S. District Court for the Western District of Texas that Dyfan, LLC’s claims were invalid as indefinite. The CAFC concluded that the disputed claim limitations were not drafted in means-plus-function format, and therefore 35 U.S.C. § 112 ¶ 6 did not apply. Patent owner Dyfan sued Target Corp. for infringement of various claims of U.S. Patent Nos. 9,973,899 and 10,194,292. Following a claim construction hearing, the district court found that the disputed (1) “code”/“application” limitations and (2) “system” limitations of the patents-in-suit were invalid as indefinite. Specifically, the district court found that: (1) these claim limitations of the patents-in-suit are in means-plus-function format under Section 112 ¶ 6 and (2) the specification does not disclose sufficient structure corresponding to the recited functions. Dyfan subsequently appealed.

Lessons from Junker v. Medical Components, Inc. on Commercial Offers for Sale Invalidating a Patent

Recently, the U.S. Court of Appeals for the Federal Circuit (CAFC) further explained the “on-sale” bar in Junker v. Medical Components, Inc., Case No. 2021-1649 (Feb. 10, 2022). As previously reported here, the case hinged on whether a letter between Larry Junker’s business partner and Boston Scientific Corporation (BSC) was a “commercial offer for sale” before the one-year grace period took effect. The CAFC held that all necessary terms for a commercial offer were present in the letter, and therefore, the letter qualified as a commercial offer for sale invalidating Junker’s patent.

CAFC Upholds PTAB Precedential Opinion Panel Decision Despite ‘Problematic’ Reasoning

On March 24, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel’s (POP’s) decision allowing patent owner DynaEnergetics Europe GmH to amend its claims, and also affirmed the PTAB’s decision that the original claims of the patent were unpatentable. Hunting Titan, Inc. petitioned for inter partes review of claims 1–15 of the U.S. Patent No. 9,581,422, asserting grounds of unpatentability based on anticipation and obviousness, including allegations that the claims were anticipated by U.S. Patent No. 9,689,223 (Schacherer). The Board instituted trial on all grounds and found all of the original claims unpatentable.

ED of Texas Adopts Magistrate’s Claim Construction in Finding No Infringement of Debit Card Patents

On March 16, the United States District Court for the Eastern District of Texas Marshall Division adopted the Report and Recommendation (R&R) of a magistrate judge and granted two motions of non-infringement for Simon Property Group L.P. (Simon) and Blackhawk Network, Inc. (Blackhawk). AlexSam, Inc. filed suit for patent infringement against Simon and Blackhawk, alleging infringement of U.S. Patent No. 6,000,608 (the ‘608 patent). AlexSam asserted that “[t]he ‘608 Patent covers a variety of important technologies relating to the debit card industry,” and “[t]he multifunction card system disclosed in the ‘608 Patent enabled consumers and retailers to use existing point-of-sales devices, the existing banking infrastructure, and a bank identification number (BIN) to perform financial transactions.”

Patent Filings Roundup: Fintiv Files Against Paypal; PPC Broadband Patents Challenged Based on Successful Reexams; Last CBM Decision Issues

It was a rather light week at the Patent Trial and Appeal Board (PTAB) with just 17 new petitions (the lowest in recent memory), with district court patent filings at 69—a few more than usual—and 60 more terminations. Samsung lost a series of five chip inter partes reviews (IPRs) at institution against an LED Wafer Solutions LLC (apparently associated with Oso IP) on the merits (they and Seoul Semiconductor were the only two plaintiffs yet sued); PPC Broadband got some IPRs from Amphenol based in large part on family members having been cancelled earlier in reexam on the same grounds; Raymond Anthony Joao entity Beteiro LLC filed a few further cases; Caselas, another of his entities, has now sued upwards of 40 banks on five patents of similar progeny; and there were lots of file-and-settle terminations in the district court, per usual. And what I believe is the final covered business method review (CBM) to be filed and pending has concluded with the claims being cancelled. The claims there were directed to currency trading systems.

VLSI/Fortress IP Patents Likely Invalid Despite OpenSky’s Bad Behavior

You’ve probably heard about all of the VLSI drama: the eye-popping $2.18 billion judgment won by non-practicing entity VLSI (funded by Fortress IP), mysterious post-judgment inter partes reviews (IPRs) filed against the VLSI patents, and finally the now-notorious email from OpenSky offering to disrupt their own IPR in exchange for a fee. Folks have jumped all over the email from OpenSky for its obvious bad behavior, but they are also using it as an indictment of the entire Patent Trial and Appeal Board (PTAB). What is noteworthy here is not the email—this type of behavior is extremely rare. The real story here is what the system got right, and where it failed.

Supreme Court Denies Petitions Challenging NHK-Fintiv and Section 285 Exceptionality Determination

On March 21, the U.S. Supreme Court issued an order list denying petitions for writs of certiorari in a pair of patent cases that had worked their way up to the nation’s highest court. In denying these petitions, the Supreme Court turns down Intel Corporation’s challenge to the NHK-Fintiv discretionary denial framework at the Patent Trial and Appeal Board (PTAB), while the Court also dismissed an appeal asking whether a patent infringement case can be determined to be exceptional for purposes of awarding attorney’s fees without a finding that the patent owner engaged in litigation misconduct.

CAFC Denies VoIP-Pal Petition for Mandamus Relief in Suit with Twitter

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied VoIP-Pal.com, Inc.’s petition for a writ of mandamus asking it to direct a California district court to vacate its decision in favor of Twitter, Inc. The U.S. District Court for the Northern District of California issued an order on November 2, 2021, refusing to grant VoIP-Pal’s motion to dismiss Twitter’s request for a declaratory judgment that its products do not infringe VoIP-Pal’s U.S. Patent No. 9,935,872. VoIP-Pal’s patents relate generally to a system for routing communications over Internet Protocol networks, and the company has been engaged in litigation with Twitter, Apple, Amazon and others for several years now.

Zaxcom Asks Full Federal Circuit to Clarify Court-Created Confusion on Presumption of Nexus

In February, the U.S. Court of Appeals for the Federal Circuit (CAFC) agreed with the Patent Trial and Appeal Board’s (PTAB’s) decision that the original claims of Zaxcom’s U.S. Patent No. 9,336,307 for Engineering Emmy® and technical OSCAR award-winning wireless microphone technology were unpatentable as obvious, but upheld the substitute claims Zaxcom had proposed. Now, Zaxcom has petitioned the court for rehearing en banc, arguing that the CAFC’s precedent in Fox Factory, Inc. v. SRAM LLC, 944 F.3d 1366 (Fed. Cir. 2019), “confused the law” regarding a rebuttable presumption of nexus.

Patent Filings Roundup: Heavy District Court Docket Sees Fortress Biotech ANDA Litigation; WePay Expands GUI Design Patent Assertion Against Major Online Payment Systems

It was another heavy week in the district court with over 100 new patent complaints filed, 64 terminated (mostly file-and-settle), and an average 26 Patent Trial and Appeal Board (PTAB) cases (one post grant review and 25 inter partes reviews). It was also another week with about half of all parties briefing Fintiv, but no denials, begging the question, “Why are parties being forced to brief it in the first place?” Intel and Xilinx combined to cancel a number of litigation-funded chip patents from Arbor Global Strategies and FG SRC LLC [the latter funded by Freeman Capital Partners]; a number of Fortress-funded subsidiaries were challenged; another 29 IP Edge subsidiary suits; some interesting pharmaceutical action; and companies WebRoot and OpenText, inc. have launched a new assertion campaign against Trend Micro, Kapersky Labs, CrowdStrike, and Sophos on cybersecurity products.