There was a slight uptick in district court filings last week after a slow January and February, with 43 new patent filings, including a design patent battle involving tumblers and multiple filings indicating an association with high-volume plaintiffs such as Jeffrey Gross and Leigh Rothschild. It was a busy week at the Patent Trial and Appeal Board (PTAB), with over 32 new challenges last week, with only one procedural denial on an institution decision—but that was not based on discretionary denial, which remains often briefed but rarely successful for the time being. Of course, the big news this week was that the Federal Circuit has revived an Administrative Procedure Act (APA) challenge to the Fintiv decision on discretionary denial itself as arbitrary agency action that skirted proper procedure and had an outsized impact on a broad swath of cases.
The United States Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling Monday that vacated and remanded a district court ruling on patent infringement in a case between Amazon and AlterWAN. The circuit judges vacated the ruling, which found Amazon did not infringe on two AlterWAN patents for internet network technology. Based on two of the district court’s claim constructions, the parties entered into a stipulation of non-infringement; however, AlterWAN appealed the case and contested the district court’s construction of two terms relevant to the patent claims. The CAFC found the stipulation to be vague and lacking detail, and thus vacated the ruling and sent it back to the district court.
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday said that Apple has standing to pursue its claim that the U.S. Patent and Trademark Office (USPTO) Director’s instructions to the Patent Trial and Appeal Board (PTAB) regarding discretionary denial practice under Apple Inc. v. Fintiv, Inc. were made without proper notice-and-comment rulemaking. The CAFC affirmed the district court’s ruling on two other challenges brought by Apple, Cisco, Intel and Edwards Lifesciences, but said that at least Apple had standing to present the challenge that the discretionary denial instructions were improperly issued and reversed on that ground. The appeal relates to Apple’s and the other companies’ challenge of the Fintiv instructions governing the PTAB’s discretion to deny institution of inter partes review (IPR) proceedings based on their contention that they will result in too many denials.
On March 2, U.S. District Judge Mitchell S. Goldberg of the District of Delaware received several filings related to the impact of the U.S. government’s recent statement of interest filed in a patent infringement suit against Moderna’s COVID-19 vaccine. That statement argued that Moderna should be released from infringement liability under the terms of a government contract that “authorize[d] and consent[ed] to all use and manufacture” of any U.S. patented invention. The federal government’s statement of interest, filed on February 14, contended that the use of such authorization and consent clauses should eliminate Moderna’s alleged liability under 28 U.S.C. § 1498, the statute governing remedies for patent infringements by government use. While there’s nothing surprising about the positions taken by defendant Moderna or plaintiffs Arbutus Biopharma and Genevant Sciences, the relevance of Section 1498(a) to arguments surrounding government control of drug pricing could make Judge Goldberg’s next ruling an important moment in the drug pricing debate.
Patent filings continue to be slightly depressed in the district courts and at the Patent Trial and Appeal Board (PTAB) compared to the highs of last year, with 17 new PTAB cases and 38 new district court filings. New filings consist primarily of a few apparently funded cases—a Fortress entity, for instance, sued Amazon, and a Taiwanese entity with no Internet presence has sued Apple and Samsung on wireless charging patents, with some new Jeff Gross entity filings, a slew of Dynapass filings, and some other banking campaigns picking up steam; at the Board, most of the fillings revolved around existing campaigns Robocast and Daedalus Prime, as detailed below. Ericsson continued with challenging some Phillips patents; and there’s even a funder, Element Capital, who has been hit by inter partes reviews (IPRs) after suing in their own name (via a Singapore subsidiary, against Chinese subsidiaries of other companies, including Motorola).
U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today issued a second Director Review decision correcting the Patent Trial and Appeal Board (PTAB) on its approach to the “compelling merits” analysis outlined in her June 2022 Guidance Memo. In AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530, Vidal vacated the PTAB’s denial of AviaGames’ petition to institute IPR of certain claims of Skillz’s U.S. Patent 9,479,602 B1. She explained that the Board’s determination to deny the petition following a Fintiv analysis was improperly based on the district court’s judgment of invalidity under 35 U.S.C. § 101, since that is “a statutory ground that could not have been raised before the Board” and “does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.”
Last week, U.S. District Judge Yvonne Gonzalez Rogers issued an order denying Cellspin Soft’s motion for recusal that sought the vacatur of a summary judgment that released Fitbit, Nike, Under Armour, and others from patent infringement liability. Judge Gonzalez Rogers wrote “in short, plaintiff’s attack on the integrity of the judiciary… not only demonstrates a measure of desperation, but is divorced from the law and the facts.”
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, February 17, ruled in a precedential opinion that a Nebraska district court abused its discretion in granting a preliminary injunction barring the owner of patents on holiday string lights from communicating to its customers that a competitor was infringing its patents. Lite-Netics, LLC sued Holiday Bright Lights (HBL) in the U.S. District Court for the District of Nebraska for infringement of its U.S. Patent Nos. 7,549,779 and 8,128,264, both titled “Magnetic Light Fixture.” HBL was at one time a customer of Lite-Netics and also sells holiday string lights, including one it calls a “Magnetic Cord,” which is one of the two products Lite-Netics alleged infringed its patents. HBL’s U.S. Patent No. 11,333,309 describes the product and issued in 2022 based on a 2021 application. Lite-Netics’ patents issued in 2009 and 2012.
The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion on Monday that reversed and vacated in part a previous lower court ruling in a patent case related to fuel tank sensors. In 2020, SSI Technologies filed a lawsuit against Dongguan Zhengyang Electronic Mechanical LTD (DZEM), alleging infringement of two patents that covered fuel tank sensor technology. SSI accused DZEM of producing systems to reduce emissions for diesel truck engines that infringed U.S. Patent Nos. 8,733,153 and 9,535,038. In September 2021, a Wisconsin district court dismissed the patent infringement claims by SSI, as well as DZEM’s counterclaims that the patents were invalid.
The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming a Delaware court’s grant of summary judgment for Elysium Health that the asserted claims of ChromaDex, Inc.’s patent on an isolated form of vitamin B3 are directed to unpatentable subject matter under Section 101. Judge Prost authored the opinion. ChromaDex sells dietary supplements embodying the patent, which it licenses from Dartmouth College, and sued Elysium for patent infringement in 2018. Elysium moved for summary judgment that the claims were invalid under Section 101 and the district court agreed, finding that the claims were directed to a natural phenomenon, specifically, “compositions comprising isolated [NR], a naturally occurring vitamin present in cow milk.”
Luxury fashion brand Hermès won their trademark lawsuit against Mason Rothschild, the creator of the non-fungible tokens (NFT) MetaBirkins, on Wednesday. The trial was the first legal case that tested the bounds of artistic expression in NFTs against the country’s intellectual property laws. A nine-member New York jury ordered Rothschild to pay Hermès $110,000 for infringing on the luxury brand’s trademark, and $23,000 for cybersquatting. The jury ruled that Rothschild had to pay the cybersquatting damages because he used a domain name confusingly similar to that of Hermès.
In February 2020, ParkerVision filed a patent infringement lawsuit against Intel in Judge Alan Albright’s Waco, Texas, courthouse in the Western District of Texas. Only three years later, and through the pandemic, today, the case settled all pending matters. ParkerVision still has remaining patent infringement cases in process against TCL, LG, MediaTek and RealTek in Judge Albright’s court. A settled case is the best way to close a patent infringement dispute. It not only reduces costs for the parties, but it also reduces the court’s burden of a trial. When the parties agree to settle, everyone goes home happy.
In June 2020, a few months into the pandemic, a group of four large publishing houses—Hachette Book Group, HarperCollins Publishers, John Wiley & Sons, and Penguin Random House (collectively, the Publishers)—sued Internet Archive (IA) in the Southern District of New York for “willful mass copyright infringement.” The spat centers around IA’s Open Library project, which scans millions of physical books and delivers them digitally across the globe for free to anyone with an internet connection. IA proclaims that the “ultimate goal of the Open Library is to make all the published works of humankind available to everyone in the world,” but it conspicuously fails to mention that its utopian vision doesn’t include getting permission from copyright owners before offering their works on its virtual bookshelves. IA argues before the court that it doesn’t need permission because its actions qualify as fair use under the dubious new theory of controlled digital lending (CDL), which it claims to be “fundamentally the same as traditional library lending” since it “poses no new harm to authors or the publishing industry.”
It was a relatively average week for patent filings, with 58 district court complaints and 19 new Patent Trial and Appeal Board petitions filed—that’s a tad low—all inter partes reviews (IPRs). There were more fake meat IPRs filed against Impossible Foods by Motif Foodworks; no discretionary denials last week; lots of frequent litigants saw IPRs instituted against asserted patents this week; unknown Qualserve Solutions LLC sued Samsung on what appears to be standard-essential LTE networking functions, though it’s unclear how handsets would exactly infringe; AGIS and Verizon appear to have settled; Speir Technologies [Magentar Capital] went down the line and hit TCL (after reportedly offering a five-year RPX license to settle all Magnetar suits with their members).
During the PTAB Masters 2023 program, which was held this week on Tuesday and Wednesday at IPWatchdog’s headquarters in Ashburn, Virginia, former U.S. Patent and Trademark Office (USPTO) Director David Kappos explained on a panel about potential reform of the Patent Trial and Appeal Board (PTAB) that the PTAB was meant to be an alternative to district court, but “that hasn’t worked out.” Kappos was Director during the enactment and implementation of the America Invents Act (AIA), which established the PTAB.