Patent Filings Roundup: ITC/District Court/PGR Fight Over Body Sculptors; Fintiv Denials Benefiting Funded NPEs; Uniloc Not Naming Fortress Despite District Court Standing Dismissal

The week before Christmas brought the biggest post-grant review (PGR) bulk filing to date, with 10 matters all stemming from a pharmaceutical dispute between Allergan and BTL Medical Technologies (and one other, unrelated). That’s a steady average of 30 inter partes reviews (IPRs) propped up by the glut of 11 PGRs stemming from that dispute, discussed below. The 81 district court patent filings were again propped up by WSOU adding their usual dozen or so complaints and a new defendant, this time adding Salesforce to their ever-growing campaign asserting some of their 4,000 or so Nokia patents against seemingly the entire world.

Section 314 Denials Continue to Favor Large NPEs and Litigation-Funded Campaigns over Small Inventors: It seems beyond question at this point that Section 314 denials over trial dates have largely favored denial of institution for the most sophisticated litigation-focused (and wide-asserting) NPE entities pushing for district court trials.  That includes a number of denials for Uniloc [Fortress], AGIS Software Development, LLC, Personalized Media Communications, LLC, VLSI Technology [Fortress], Solas OLED [Magnetar], and Optis Cellular Technology [Brevet Capital], to name a few.  All have all benefited from suing on multiple patents and avoiding litigation-provoked validity challenges under the non-merits denial rules. Interestingly, some have resulted in some instituted, and others denied—in the Solas OLED matter, for instance, the LG case was denied (despite the International Trade Commission [ITC] trial being cancelled), but other challenges were instituted.

Setting the Tone: Medical device company BTL markets and sells an FDA-approved “body-contouring” device (Emsculpt®) that uses “high-intensity, focused electromagnetic energy to tone muscles” in ab, thigh, butt, and calve muscles for purely aesthetic purposes.  More or less, it’s a method of applying magnets to muscles to provoke contractions, and it’s patent-protected.  In 2017, Allergan acquired Zeltiq, a company then marketing the CoolSculpting® product, which is marketed as using cooling technology to reduce fat. In 2019, Allergan/Zeltiq began selling CoolTone®, a product that BTL now accuses Allergan and Zeltiq of willfully infringing at least five of their patents covering Emsculpt®.  There must be plenty of money in these devices, because BTL filed both ITC and District Court complaints in September (in Delaware).  Now Allergan & Co. have filed twelve post-grant challenges (to date)— 11 PGRs—All told, twelve challenges, one IPR and eleven PGRs.  This may be one of the first really high-profile competitor/competitor suit involving a widely-marketed patented product new enough and successful enough that most of the patents qualify for PGRs, and it will be interesting to see how they all play out in light of the ITC action and the speed with which they were filed.

Uniloc Not Naming Fortress as a Party Despite District Court Ruling: Three weeks ago, a district court judge ruled that Uniloc Corporation Pty. Limited had defaulted on a credit agreement with Fortress in 2018, had not moved to cure, and, by not naming Fortress as the exclusive licensee in any matter then pending or later filed, lost (or in some cases never had) standing to maintain the action. Despite that public ruling, Uniloc has not moved to amend its pleadings in its many other matters in district court, on appeal, and before the Board—despite the fact that it would appear all of those matters now lack a necessary party, the exclusive licensee.

That case, Uniloc USA, Inc. et al v. Apple Inc., 3:18-cv-00358 ECF 186 (filed Dec. 4, 2020), noted that Uniloc was under an agreement to forfeit all control of their patents if they did not raise and return $20 million to Fortress—and they fell $6 million short, triggering the default.  Which means that entity (and presumably others associated with it) needed to name Fortress as a necessary party—and hasn’t, to date—to have standing to file in the first place.

PTAB (41)

District Court (82)

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