Posts in District Courts

In the recent case of Intellectual Ventures v. Toshiba, Judge Robinson noted that “the Federal Circuit has construed the language quite literally” in the use of the word “during.” The term is spelled out as “any ground that the petitioner raised or reasonable could have raised during that inter partes review” in § 315(e)(1). The judge noted that while extending the logic of non-instituted grounds as not being able to be raised “during” an IPR proceeding to prior art references that were never presented to the Patent Trial and Appeal Board at all “confounds the very nature of this parallel administrative proceeding, the court cannot divine a way around the Federal Circuit’s interpretation in Shaw.” Thus, she did not estop Toshiba from presenting the grounds never presented to the PTAB in a pair of orders in December and January, and heavily implied that the Federal Circuit should weigh in to clarify the issue.

Perhaps not your typical or average patent, the ‘443 patent has some 135 patent claims, which relate to a proximity authorization unit, a proximity service unit, a method of using the proximity authorization unit, or a system for implementing the proximity authorization unit. The majority of the claims, however, are drafted specifically to cover the devices (i.e., the proximity authorization and service units)… This is not the first time that Disney’s MagicBand wireless communication products have been the target of patent infringement litigation. In April 2015, radio frequency system developer InCom Corporation of Sutter, CA, filed a lawsuit in the U.S. District Court for the Central District of California (C.D. Cal.) alleging that Disney’s MagicBands infringed upon InCom patents covering audience tracking system technologies. Last August, the two companies agreed to settle the case after InCom had alleged that Disney sold about 10 million MagicBands at $12.95 each after being notified of the potential infringement.

Another covered business method review is overturned by the Federal Circuit because the Patent Trial and Appeal Board instituted a CBM on a patent that was not a CBM patent. China leads the world not only in stealing digital images protected by copyright but also in terms of trademark applications filed. The Catholic Church starts to take action in protecting its own intellectual property. Also, Alphabet’s self-driving car subsidiary files a lawsuit including patent and trade secret claims against ride sharing giant Uber.

Whirlpool successfully argued that it would be irreparably harmed without the relief of permanent injunction in addition to the settlement agreement, which is executed separately of the court order. The recent court order for permanent injunction also affirmed the validity of all four utility patents asserted in the case along with finding that the defendant’s importation and sale of replacement water filters infringed on claims covered by the patents-in-suit.

On February 17th, a judge in the U.S. District Court for the Northern District of Georgia (N.D. Ga.) granted a motion to dismiss a case for failure to state a claim after invalidating two patents under the patentability standards set by the U.S. Supreme Court in Alice Corp. v. CLS Bank International. The order ends a lawsuit (at least for now pending appeal) filed by Minnesota-based TAGI Ventures, LLC against Georgia-based media company Turner Sports Interactive, Inc. in which TAGI alleged that Turner Sports infringed on patents covering remote access to in-car camera views during a car race.

If the Eastern District of Virginia can dispatch patent cases in less time than the PTAB, why should we suffer the indignity of the lack of due process and constitutional infirmity of an Article II tribunal striping vested property rights without much, if any, real oversight by an independent judiciary?

Patent system savvy corporations are ganging up on a smaller developer within the nascent automotive software industry who had the temerity to assert a patent covering a technology it developed in-house… The IPR challenges the validity of a patent owned by InfoGation Corporation, Inc., of San Diego, CA, a designer and developer of navigation software for the automotive industry, which was founded in 1996… The filing of the Google IPR is a direct consequence of Infogation filing suit against HTC, ZTE and Huawei last July, each of which alleged infringement of the ‘743 patent.

In a patent suit targeting Chrome web browsers, Google was hit with a $20 million jury verdict for infringing patents covering malware protection software… Google was hit with a jury verdict for $20 million in damages awarded to one inventor and the family members of a deceased co-inventor for the infringement of three reissue patents covering malware protection software. The infringement suit targeted Google’s Chrome web browsers for laptops and mobile platforms as well as the sale of Google’s hardware products having that software pre-installed. The case was decided in the U.S. District Court for the Eastern District of Texas (E.D. Tex.).

Damages discovery in patent cases is usually contentious, expensive, and non-uniform in application by the courts. The patent owner, on one hand, wants to discover all possible revenue streams for settlement and resource allocation. The accused infringer, on the other hand, wants to minimize disclosure, because of the sensitivity of financial information and the belief that the suit is meritless. And the courts are caught in the middle. Compounding these issues, fulsome damages contentions typically are not defined until expert reports are presented, meaning the parties (and the court through a Daubert motion) will not know whether there is sufficient basis for the damages sought until late in a case.

The most active defendants in copyright lawsuits include department store chain Ross Stores, Inc. (NASDAQ:ROST), which was named as a defendant in 276 cases. Following Ross Stores are a series of retailers: TJX Companies, Inc. (NYSE:TJX), named a defendant in 123 cases; Amazon.com Inc. (NASDAQ:AMZN), a defendant in 84 cases; Burlington Coat Factory (NYSE:BURL), a defendant in 74 cases; and Rainbow USA Inc., a defendant in 66 cases. Except for Amazon, these are primarily off-price department stores offering brand name goods at discounted prices. Music publishers like Universal Music Group, Inc. (65 suits) and education publishers like Pearson Education, Inc. (NYSE:PSO) (50 suits) are also among the top defendants in copyright cases.

On the menu this week for Other Barks & Bites… Video game systems developed by Nintendo and Sony are targeted in a patent infringement suit filed in Delaware federal court. The infamous scan-to-email patent giving rise to the patent troll debate has finally been invalidated at the Federal Circuit. A multi-billion dollar copyright suits between two American tech giants gets new life from Oracle. California’s state legislature moves to create trademark protections for marijuana products at the state level, circumventing federal restrictions on such trademarks. And Zillow gets hit with a copyright infringement verdict.

Once the Federal Reserve Bank of Atlanta declined to take a license, Bozeman informed them that he believed they were infringing on his two patents… The complaint sets forth two claims for relief: one for declaratory judgment of non-infringement of the 6,754,640 patent, and the other for declaratory judgment of non-infringement of the 8,768,840. The complaint alleges that the Federal Reserve Banks do not infringe multiple elements of independent claims set forth in both patents and seeks a judicial declaration indicating as much, along with costs, expenses, and attorney’s fees.

At the center of each lawsuit is the assertion of a single patent covering personal data collection technology integrated into a series of smartwatches. The patent-in-suit asserted by Sportsbrain against each of these defendants is U.S. Patent No. 7,454,002, titled Integrating Personal Data Capturing Functionality into a Portable Computing Device and a Wireless Communication Device and issued to Sportbrain in November 2008… Each of the suits filed by Sportsbrain identifies a specific product and companion apps which work in tandem to collect personal data and provide feedback to wearers.

Apple requested that the Federal Circuit keep the case and the panel review the decision in light of the Supreme Court’s ruling, while Samsung requested that the Federal Circuit remand the matter to the district court for a new trial on damages. The Federal Circuit adopted neither suggestion. Instead, the Federal Circuit chose to remand the case for further proceedings, which the panel explained may or may not include a new trial on damages. Judge Koh will decide whether a new trial on damages is necessary.

On January 23rd, the Federal Trade Commission (FTC) announced that it had taken steps to resolve antitrust charges involving business activities employed by Irish/U.S. drugmaker Endo International (NASDAQ:ENDP) designed to delay the entry of generic pain medications into the U.S. to preserve monopoly profits. The FTC filed a complaint for injunctive relief and a motion for entry of stipulated order for permanent injunction against Endo and others in the U.S. District Court for the Northern District of California (N.D. Cal.). These actions revive charges from a lawsuit filed by the FTC last March against Endo involving pay-for-delay patent settlements.