Posts in District Courts

A Guide to Disclosures in Delaware Patent Litigation in the Face of Pending Federal Circuit Review

Heightened mandatory initial disclosures in patent litigation may affect a client’s decision to pursue litigation in a forum, especially if there is a risk (real or perceived) of having to disclose sensitive company information from the outset of litigation. In the District of Delaware, there has been much attention on recent requirements for transparency regarding litigation funding and company and/or patent ownership issued by Chief Judge Colm Connolly. The Chief Judge’s fervent enforcement of those requirements has prompted a writ of mandamus and potential review by the Federal Circuit. Although the propriety of the third-party litigation funding order may be reviewed by the Federal Circuit, best practices for complying with both the third-party litigation funding and Rule 7.1 Standing Orders will be discussed, along with potential impact of those orders on patent litigation in the long term, and considerations of whether certain information could be sealed.

Court Throws Out Trade Secrets Lawsuit Filed Against IBM China

The U.S. District Court for the Southern District of New York last week dismissed a trade secrets lawsuit against International Business Machines Corp (IBM) and IBM China by Beijing Neu Cloud Oriental System Technology Co. The Chinese firm alleged that IBM stole trade secrets from its joint venture in order to sell IBM products to the Chinese market. IBM China and Beijing Teamsun Technology Co. originally formed Beijing Neu Cloud in 2014 as a joint venture to distribute IBM technology in China. But in a 2021 complaint, Beijing Neu Cloud alleged that IBM induced “Neu Cloud and its majority owner through later-breached contracts to expend resources and provide IBM with access to sensitive, confidential customer information, which IBM then secretly used to create competing ventures in China.”

Federal Circuit Affirms Preliminary Injunction for CPAP Company

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the grant of a narrowly-tailored preliminary injunction to SoClean, Inc., a medical device company that makes CPAP machines, based on trademark infringement claims against Sunset Healthcare Solutions, Inc. SoClean alleged in 2021 that Sunset infringed its U.S. Trademark Registration No. 6,080,195. The registration covers the configuration of replacement filters for its sanitizing devices.

Federal Circuit Reins in Albright Again, Orders Quick Ruling on Apple’s Venue Transfer Motion

The U.S. Court of Appeals for the Federal Circuit (CAFC) today said in a precedential order that Judge Alan Albright’s Scheduling Order in a case between Aire Technology Limited and Apple, Inc. went too far in mandating additional substantive discovery and re-briefing that would result in nearly a year passing before the court rules on Apple’s venue transfer motion. Apple asked the U.S. District Court for the Western District of Texas in April 2022 to transfer Aire’s patent infringement case against it to the Northern District of California. Apple filed declarations during venue discovery to support the need for transfer, including a request to supplement its motion with additional declarants just prior to the close of venue discovery, and offered to make the declarants available for deposition and to extend the transfer proceedings for a “reasonable” amount of time.

CAFC Shoots Down Patentee’s Bid to Reclaim Deducted Patent Term

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday said the U.S. Patent and Trademark Office (USPTO) properly deducted days from a patentee’s Patent Term Adjustment (PTA) under Supernus Pharms., Inc. v. Iancu because there were clear steps the applicant could have taken to conclude prosecution. Eurica Califorrniaa owns U.S. Patent 10,245,075 for a “Nondestructive means of ectopic pregnancy management.” Following a lengthy prosecution, the examiner made an amendment indicating minor additional changes to the claim language and issued a notice of allowance on December 11, 2018. Califorrniaa requested an additional interview on January 7, 2019, and included a new proposed amendment.

CAFC Delivers Win and Loss for Uniloc in Separate Precedential Rulings on Standing

In a precedential decision issued Friday, the U.S. Court of Appeal for the Federal Circuit (CAFC) affirmed a district court decision that Uniloc USA, Inc., Uniloc Luxembourg, S.A. and Uniloc 2017 all lacked standing to sue Motorola and Blackboard for patent infringement because it was collaterally estopped by a previous decision in its case with Apple. But in a separate precedential ruling, the CAFC said Uniloc’s non-exclusive license with Fortress Credit Co, LLC was terminated by agreement prior to Uniloc’s patent suits against Google, eliminating Fortress’ ability to sublicense the patents-in-suit and maintaining standing for Uniloc.

Patent Filings Roundup: Old IP Edge Filings Explode; No New Discretionary Denials Again; Fortress-Backed DivX Rolls On

It was a return to form this week in the district courts, with 115 new patent filings (led by more than 40 new IP Edge complaints) to just 23 new Patent Trial and Appeal Board (PTAB) filings—the latter number being bolstered by a number of challenges to patents held by Raymond Anthony Joao subsidiary Beteiro, LLC by a conglomerate of gambling companies, including PointsBet USA, DraftKings, Inc., BetMGM, LLC, Hillside New Jersey LLC, and Entain Corporate Services Ltd. Micron filed another set of challenges against Katana Silicon Technologies patents, Ecobee challenged another Magnetar entity, Ollnova, which has brought suit on Internet of Things (IoT) related devices; and it was another week without any discretionary denials.

Amici Back Jump Rope Company in Supreme Court Case

Three amici filed briefs last week in Jump Rope System’s petition asking the U.S. Supreme Court to review a U.S. Court of Appeals for the Federal Circuit (CAFC) decision upholding a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Eagle Forum Education and Legal Defense Fund and the Fair Inventing Fund filed briefs in support of the jump rope company while DivX filed in support of neither party .

Jump Rope Systems, the inventor of a novel jump rope system, is petitioning the Supreme Court to clarify “whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”

CAFC Vacates Preliminary Injunctions Against Online Hoverboard Sellers

In two separate precedential opinions issued Friday, October 28, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated two separate preliminary injunction orders granted by the U.S. District Court for the Northern District of Illinois against hoverboard products alleged to infringe four design patents due to “substantive defects” in the court’s reasoning for granting the injunctions. Judges Dyk, Taranto and Stoll heard both appeals.

Patent Filings Roundup: Another Slow Week in the Courts; Discretionary Denials Drop to Near-Zero in Q3

It was another surprisingly light week in patent filings, compared at least with recent memory—just 29 new suits and 17 new filings at the Patent Trial and Appeal Board (PTAB), all inter partes reviews (IPRs). The filings include a few challenges against patents asserted by the Fortress-funded Neo Wireless and Netlist, as well as a slew of filings by Apple against Mullin Industries, LLC. After a week’s respite there were five new IP Edge suits—not as many as usual, but still enough to represent almost a fifth of all suits filed this week.

Johnny Depp and Jeff Beck Sue Folklorist Accusing Them of Stealing Lyrics to ‘Hobo Ben’ Poem

Johnny Depp and guitarist Jeff Beck filed a lawsuit last Friday against folklorist and SUNY Buffalo professor Bruce Jackson, who accused the pair of plagiarizing a song on their latest album, “18”. In two demand letters the folklorist sent in August, Jackson alleged that Depp and Beck infringed the copyright of the poem “Hobo Ben” by copying entire passages. However, in their lawsuit filed in the U.S. District Court for the Western District of New York, Depp and Beck’s lawyers argue that Jackson never owned the copyright to “Hobo Ben,” as it was “part of an oral tradition passed down for generations and performed by an unidentified individual.” Therefore, they are asking the judge for a declaration of noninfringement, so the pair can “preserve their rights, defend their good names, and protect their business and business relationships.”

Patent Filings Roundup: Light Week in District Court Buoyed by IV-Selloff Assertions; Vidal Grants Second Sua Sponte Review of Second Institution in OpenSky/VLSI Case

This week saw 26 Patent Trial and Appeal Board (PTAB) filings (all inter partes reviews [IPRs]) and just 28 new district court complaints—and notably and unusually, no new IP Edge filings. Most of the filings were related to three entities, the now-sprawling Bell Semiconductor campaign added a slew of new defendants, and Cedar Lane and Buffalo Patents, both campaigns comprised entirely of old Intellectual Ventures (IV) patents (both almost certainly transferred under IV’s late-stage low-cost time-limited backend deal structure). There was one (non-Fintiv) denial at the Board and a few IV patents were challenged directly by Honda; some pharmaceutical challenges were filed, but otherwise, it was a relatively quiet week in new filings, particularly in the district court (it’s the first week in as long as I can remember when there didn’t appear to be a single IP Edge filing, which certainly contributes to the lull).

Interactive Wearables is Not the 101 Case That You’ve Been Waiting For

On October 3, the U.S. Supreme Court once again requested the views of the Solicitor General (SG) in a Section 101 case, Interactive Wearables v. Polar Electric Oy. Last summer, there was excitement in the patent community when the SG, whose advice the Court usually follows, recommended granting review in American Axle v. Neapco. Although that petition was ultimately denied, this new case purports to fit the mold of American Axle. This has led some to hope that Interactive Wearables will also get the nod from the SG—and perhaps High Court review. To those eager for a Supreme Court decision that reins in patent eligibility jurisprudence, however, I regret to inform you that Interactive Wearables will not be that case. This case is quite unlike American Axle—and its claimed invention is in the heartland of what should be ineligible subject matter.

Federal Circuit Hands Zillow a Win, Ruling IBM Map Display Patents Cover Abstract Ideas

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision finding that two IBM patents directed to technology that allows users to select and view results on a map were directed to ineligible subject matter under 35 U.S.C. § 101. IBM had sued Zillow, alleging that several of the services offered on Zillow’s website and mobile applications infringed the claims. But the district court granted Zillow’s motion for judgment on the pleadings, finding the claims were directed to abstract ideas and lacked any inventive concept. The opinion was authored by Judge Hughes. Judge Stoll dissented in part, explaining that claims 9 and 13 of IBM’s U.S. Patent No. 7,187,389 were plausibly patent eligible and should not have been found ineligible at the pleadings stage.

Hughes Dissents in Partial Win for Inventor Against Google at CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision in part reversing and in part affirming a district court’s dismissal of an inventor’s patent infringement suit against Google under Federal Rule of Civil Procedure12(b)(6). Judge Hughes dissented in part from the majority’s opinion, which was authored by Judge Stoll, explaining that he would have found all of the challenged claims patent ineligible.