Patent Filings Roundup: Forum Selection Clause Ends an IPR; Vape Wars: Philip Morris Strikes Back; Fortress Subsidiary Gets an NHK Spring Bounce

It was another business-as-usual week for patent filings in the District Courts and before the Patent Trial and Appeal Board, with 54 suits and 29 petitions (two post grant reviews and 27 inter partes reviews, no covered business method reviews) filed. The Board already cited and relied on the new Apple v. Fintiv case (IPR2020-00019) in denying an IPR (filed three months after a complaint was filed) against a Fortress IP subsidiary’s patent; this week also saw a battle between e-cigarette (i.e., vaping) giants, saw another implantable medical device suit against Medtronic, and a surprising number of pet-related patent disputes, including iFetch, LLC and a suit between Pet Qwerks, Inc. and Benebone, LLC.

Contract is King: In a pair of IPRs on patents being litigated in district court, the Board terminated both in view of a forum selection clause in a patent license. Judge Andre Birotte Jr. of the Central District of California (in Los Angeles—how is that central, again?) granted a motion for summary judgment and directed the parties, Guest-Tek Interactive Entertainment Ltd. And Nomadix, Inc., to jointly file a motion to terminate the IPRs based on the forum selection clause. The Board promptly complied, in another example of the rising importance of forum selection clauses and careful agreement drafting. IPR2019-00253 and IPR2019-00211 had been instituted, litigated, and a hearing had been held on the patentability of U.S. Patent 8,626,922 and 7,953,857.

e-Smoking guns: The great vape wars of the twenty-first century are underway. Tobacco titans RJ Reynolds (who owns RAI Strategic Holdings, Reynolds Vapor Company, and markets the Vuse product) and Philip Morris have been battling in district court on patent infringement of their vaping device units (particularly the IQOS®) while relative (but rather cash-flush) upstart Juul has filed many dozens of complaints and some ITC actions against smaller competitors. Here it seems clear that RJ Reynolds and Philip Morris have been negotiating a cross-licensing deal for some time; just weeks after Winston-Salem (where my father was a reporter!) titan RJ Reynolds sued Philip Morris, PM struck back with three IPRs this week.

Fortress IP gets another NHK Spring bounce: Fortress IP semiconductor subsidiary VLSI Technology LLC has again benefited from the Board’s precedential decisions tying trial dates to denying petitions. Here, again, the cases filed in the Western District of Texas were not granted a stay (and Fortress argues that they rarely do so). The Board noted that “the Western District of Texas has not granted a stay and there is no evidence suggesting that a stay might be requested or granted if an inter partes review were initiated.”  And while the trial date is October 5, 2020, both parties agreed that with COVID there was some uncertainty as to whether the trial would proceed (as judges across districts have had to cancel a number of upcoming trials in light of the restrictions, including this district). Nonetheless, the Board found that it wasn’t clear the trial deadline would be delayed. The Board also cited the recent Fintev case, finding that while the petition here was filed promptly just hree months after the party was sued, significant time and resources had already been spent, given the aggressive Markman and trial schedule in the Western District. Intel had argued that the nature of Fortress’ business and their tactics often avoided inter partes review; the Board found this irrelevant. The IPR, IPR2020-00106, challenged one of the many patents asserted in District court, the 7,725,759 patent. Fortress IP’s Uniloc assertions have substantially benefited from the Board’s discretion in recent months, resulting in a number of non-merits denials of institution, in particular in districts with aggressive trial schedules.

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