Posts in District Courts

Federal Circuit Upholds PTAB Claim Construction Conflicting with Parallel District Court Proceedings

On December 15, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in ParkerVision, Inc. v. Vidal affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of ParkerVision’s patent claim to down-converting electromagnetic (EM) signals in wireless communication networks. In so holding, the Federal Circuit upheld the PTAB’s use of claim construction conflicting with parallel proceedings in the Western District of Texas on the grounds that the patentee defined the term “storage element” as a lexicographer.

Key U.S. District Court Cases with Implications for IP in the New Year

Although the proceedings before federal district courts may not garner as much attention as those of the U.S. Court of appeals for the Federal Circuit or the Supreme Court, they can be an important proving ground for the decisions rendered by those courts. And 2023 was no exception to that rule. As discussed below, the Zogenix v. Apotex and Teva v. Eli Lilly decisions provide a glimpse into what litigants can expect in the aftermath of the GSK v. Teva and Amgen v. Sanofi decisions, respectively. These cases will have an especially significant impact on the life sciences industry, and watching how these decisions are applied by the district courts should be a priority for practitioners in this space.

Cisco Wins on Remand from CAFC in High-Profile Case with Centripetal

Centripetal Networks was dealt a blow by the U.S. District Court for the Eastern District of Virginia yesterday when the court ruled that it had failed to prove that Cisco infringed three of its patents. It’s a years-long case that the court referred to as having an “unusual history.” The district court first entered one of the highest damages awards ever issued in a patent case, following a 22-day bench trial. In an opinion authored by the late Judge Henry Coke Morgan, Jr., the court found that Cisco willfully infringed four out of five of Centripetal’s asserted patents and awarded enhanced damages in an amount of $755,808,545 (enhanced by a factor of 2.5X), and prejudgment interest in an amount of $13,717,925, which resulted in a total past damages award amount of $1,903,239,288.

Patent Filings Roundup: Slow Week at PTAB and District Court; VLSI Saga Continues

It was an overall below-average week for patent filings at both the Patent Trial and Appeal Board (PTAB) and district courts. The PTAB had only 15 new PTAB petitions—all inter partes reviews (IPRs), while the district court had only 24 new complaints filed. There were two more Fintiv discretionary denials this week, with the Board denying institution of two IPRs filed by IBM against inventor-controlled DigitalDoor Inc. [funding unknown] patents broadly related to various aspects of data security technologies.

AI is Not Creative Per the USCO and the Courts – And That’s a Good Thing

Recently, Wen Xie argued on IPWatchdog that the U.S. Copyright Office (USCO) and the U.S. Patent and Trademark Office (USPTO) have reached different conclusions regarding “the creative and conceiving capabilities of machines,” which leads to intellectual property (IP) law being self-contradictory. According to Xie, the USCO presumes that artificial intelligence (AI) is creative, while the USPTO does not reach a similar conclusion regarding AI inventorship. I disagree.

In Wild Opinion, Chief Judge Connolly Refers IP-Edge Affiliated Attorneys for Disciplinary Action

Several attorneys associated with patent monetization firm IP Edge are being referred to their state disciplinary bars, the Texas Supreme Court’s Unauthorized Practice of Law Committee, the U.S. Patent and Trademark Office (USPTO) and the Department of Justice for their conduct in directing several individuals, including a fried chicken restaurant owner and a surgical assistant, to undertake liabilities associated with patent litigation in U.S. district court without disclosing the interests of IP Edge, which stood to gain 90% of the gross recovery from the asserted patents.

A New Era of Copyright Litigation in Hollywood: Revisiting Pirates of the Caribbean One Year Later

In 2017, screenwriters Lee Alfred and Ezequiel Martinez Jr. embarked on what would be a five-year journey for their copyright infringement claim against Walt Disney Pictures over the Pirates of the Caribbean franchise. Now, one year after it resolved, their legacy lives on through a new era of copyright litigation in Hollywood. Courts continue to rely on the Ninth Circuit’s decision in the Pirates case to allow screenwriters and other artists to proceed past the pleading stage. With that pendulum swing, litigants in copyright cases over Hollywood films will face a range of undeveloped issues. This article provides a brief recap of the impact from the Pirates case and identifies several open issues that litigants are likely to address in future cases as a result.

BTIG Trade Secret Suit Against StoneX Group Alleges More Than $1 Billion in Unjust Enrichment

On November 13, global investment banking firm BTIG filed a lawsuit  in California state court against rival company StoneX Group, alleging trade secret and breach of contract claims related to a StoneX’s recruitment of several key BTIG employees in order to gain access to valuable proprietary software code developed at BTIG. BTIG’s suit seeks disgorged profits of $200 million as well as remuneration for StoneX’s unjust enrichment, which BTIG estimates could reach over $1 billion.

Google Escapes $20 Million Judgment as SCOTUS Denies Petition on CAFC Reissue Standard

Just a few weeks after Google waived its right to respond, the Supreme Court denied a petition challenging a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that held a Texas district court erred in ruling against the search engine and tech behemoth. The U.S. District Court for the Eastern District of Texas found the inventors of a method for protecting computers from malware—Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman)—had proven that Google’s Chrome web browser infringed their reissue patents RE43,500, RE43,528, and RE43,529 and that the claims were not invalid. After a first time at the Federal Circuit in which the case was remanded to the district court, a jury awarded Cioffi, et. al. $20 million in past damages and the district court in post-trial review rejected Google’s “original patent defense.”

Fraudulent Trademark Ownership Claims Lead to Near $4 Million Punitive Damages Verdict

On November 8, a Central California jury entered a verdict awarding $3.9 million in punitive damages against Internet financial platform ConsumerDirect. The verdict comes weeks after U.S. District Judge James Selna granted a motion for sanctions  after finding that ConsumerDirect fraudulently represented its ownership of unregistered trademarks while obtaining a preliminary injunction in U.S. district court against Array.

HTC Hit With $9 Million Damages Award After Losing Out on FRAND Rates as an Unwilling Licensee

On October 16, a jury verdict  entered in the District of Delaware awarded $9 million to 3G Licensing, a subsidiary of European patent pool operator Sisvel, after finding that Taiwanese consumer electronics company HTC Corp. willfully infringed upon a pair of cellular telecommunications patents. The verdict follows summary judgment rulings in the case against HTC and other defendants, who argued that the asserted patents were encumbered by fair, reasonable and non-discriminatory (FRAND) licensing obligations without establishing the patents’ essentiality to any standard.

Patent Filings Roundup: Nokia Takes on Amazon, New Fintiv Denial, Semiconductor Settlement

It was another slow week for patent filings at the Patent Trial and Appeal Board (PTAB) and a typical week in district courts, with 52 district court complaints filed and 22 new PTAB petitions. There was a new discretionary denial, a bunch of litigation-provoked high-profile PTAB challenges, and some notable new litigations. There was another Fintiv discretionary denial this week: here, a Chinese patent owner, Ningde Amperex Technology Ltd., benefited from the Board’s discretionary denial rules in a petition brought by another Chinese battery company. The case, IPR2023-00585, leaves unaddressed the questions raised about the validity of U.S. Patent 11329352.

Sonos v. Google: A Decision Based on Ignorance of Patent Law That Must Be Overturned

An interesting tale of intrigue and woe is being written in the decade-long relationship between Google and Sonos. The most recent chapter ended with the district court finding the Sonos patents at issue in their patent litigation against Google were unenforceable due to laches because Sonos had the audacity to file a continuation and seek claims supported by—and actually incorporated from—an earlier filing. According to the district court, because Sonos could have filed those claims in the continuation earlier, that created a laches defense for Google.

Federal Circuit Weighs in on Parameters for Prosecution Disclaimer

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision holding that a Delaware district court erred in its claim construction of a term with respect to Malvern Panalytical, Inc.’s patents. Specifically, the CAFC said the district court erred by relying heavily on the patent prosecution history statements for a related patent that had been cited in the information disclosure statement (IDS) during supplemental examination of one of the patents-in-suit to inform its construction of the term in question.

Newman Tells D.C. District Court Her Removal from Bench is ‘Unprecedented in American Judicial History’

Late yesterday evening, the New Civil Liberties Alliance (NCLA)—the firm representing U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Pauline Newman in her district court case against CAFC Chief Judge Moore and other members of the panel of the Judicial Council who are accusing Newman of being unfit to serve on the court—filed a brief asking the D.C. district court to deny the Council’s September Motion to Dismiss and to halt her recent suspension from duties. The brief calls the Council’s actions thus far “ultra vires and inconsistent both with constitutional strictures and the [Judicial Conduct and Disability] Act [of 1980] itself.”