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.
Crowdstrike and AO Kaspersky Lab received favorable institution decisions its challenges against a Webroot Inc. [associated with corporate parent and exclusive licensee Open Text Corporation] patent. However, Sophos did not fare as well in its IPR challenging another Webroot Patent, which was denied on the merits. Meanwhile, Micron Technology Inc. received favorable institution decisions in two IPRs challenging patents asserted by Sonrai Memory Ltd. [associated with Magnetar Capital].
Samsung had a mixed bag of results in final written decisions from the Board regarding its IPRs challenging three patents owned and asserted by Smart Mobile Technologies LLC [associated with IP Holdings, Inc.], with one decision finding all challenged claims unpatentable, one decision finding no challenged claims unpatentable, and one decision with mixed results.
On the district court front, there were a number of complaints continuing long-running campaigns, including Sensor360 and Patent Armory Inc. [both associated with Jeffrey M. Gross], Fleet Connect Solutions LLC [associated with Empire IP LLC], and S3G Technology LLC. Additionally, there was a Declaratory Judgment action filed by X Corp [formerly known as Twitter], as well as a new design patent campaign launched by Shenzhen Kunshengze Elec-tronic Commerce Co Ltd. Conversely, Oso IP, LLC entity, Jenam Tech LLC, and Google appear to have reached a settlement in their long-running campaign with all active cases being voluntarily dismissed this week.
Innovaport Patents Challenged in IPRs
Home Depot has filed three IPRs challenging three patents asserted by inventor-controlled Innovaport LLC (f/k/a PatentBank LLC). The patents (along with one other patent that Home Depot challenged in an IPR last week) are asserted against Home Depot by Innovaport in the Western District of Wisconsin. Innovaport has also asserted these patents (and two additional related patents) against other retailer defendants including Target, Walmart, Staples, Best Buy, IKEA, and Lowe’s—all in Eastern or Western District of Wisconsin.
The patents are generally related to providing the location information of a product within a store through a mobile device and targets the defendants’ provision of mobile apps and websites that inform customers of the availability and location of products within a retail store.
The VLSI Saga Continues
The biggest story of the week is the Federal Circuit’s reversal of Fortress-funded VLSI Technology’s $2.18 billion verdict. As quick background, VLSI filed suit against Intel Corporation in several U.S. courts, alleging infringement of several patents related to semiconductor technology, including U.S. Patent Nos. 7,523,373 (the ’373 Patent) and 7,725,759 (the ’759 Patent). After a trial, the jury found infringement of both patents and awarded VLSI a $2.2 billion judgement (rumored to be insured for $300 million), with an award of $1.5 billion for the ’373 Patent and $675 million for the ’759 patent. Intel appealed.
On appeal, the judgment was partially reversed and partially affirmed (and remanded). With respect to the ’759 Patent, the infringement ruling (on the Doctrine of Equivalents) was reversed entirely, reducing the award absolutely by at least $675 million. As for the ’373 Patent (and the $1.5 billion award), the Federal Circuit affirmed on literal infringement, but remanded for a new trial on damages, and further allowing the defendants to assert a license defense that the lower court refused to consider.
The Federal Circuit’s opinion suggests that there will likely be some reduction to the award for the ’373 Patent. However, adding another twist, both patents have since been held invalid in subsequent IPR proceedings, which Intel was able to join. Although VLSI has just recently appealed these decisions, the Fresenius precedent suggests that if the Federal Circuit affirms the cancellation of the ’373 patent while the damages retrial is pending, it may moot the judgment entirely (though there have been some developments since Fresenius that might complicate that a bit).
It is worth noting that Intel had previously filed IPRs challenging both patents, but both IPRs were denied under the then-new Fintiv rule without any merits or consideration. As indicated by the subsequent successful proceedings, which used the same prior art as the Intel IPRs, much of the complexities involved here could have been avoided had Intel’s IPRs had been considered on the merits.
Links to the cases discussed above and more are available in the Weekly UP, which can be found here.
Image Source: Deposit Photos
Author: md3d
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Kelly Hughes
Kelly Hughes is Senior Patent Counsel at Unified Patents, LLC where she handles PTAB filings including inter partes reviews and ex parte reexamination. Prior to Unified Kelly was a litigator […see more]
