| Patent Report | April 3, 2018 |
| Post-Hoc "Parade of Horribles" Does Not Justify Award of Attorney Fees |
| Following a jury trial, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics as a whole were not exceptional. "Defendants’ strategy with its § 285 Motion seems to be to throw out as many different aspects of Plaintiff’s behavior as it can to support its fee request and 'see what sticks.' But it would be both tedious and wasteful for the Court to consider each and every individual tree when it should be looking at the landscape in the bigger forest. . . . And while perhaps true that Plaintiff had some shortcomings in its litigation and pre-litigation conduct and positions, the Court is unconvinced that those shortcomings amount to a showing that Plaintiff’s behavior was exceptional. . . . A party cannot simply hide under a rock, quietly documenting all the ways it’s been wronged, so that it can march out its 'parade of horribles' after all is said and done. That is the tenor of many of Defendants’ arguments here. Or alternatively, where Defendants did come forward at some point and challenged Plaintiff’s positions with some success, Defendants have not proven that they have been exceptionally wronged -- they got at least some of the relief they sought." |
| ATEN International Co., Ltd. v. Uniclass Technology Co., Ltd. et al, 2-15-cv-04424 (CACD 2018-03-30, Order) (Andrew J. Guilford) |
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| United States District Courts - New Cases |
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| 1-18-cv-02344 (ILND) |
April 2, 2018 |
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| Patents |
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| 7299510 |
November 27, 2007 |
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| Holder device for shower head and nozzle |
| 7373954 |
May 20, 2008 |
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| Multi-ways water distributing device |
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| 2-18-cv-11057 (MIED) |
April 2, 2018 |
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| Patents |
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| 8713425 |
April 29, 2014 |
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| Audio/video program-related hyperlink printer |
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| United States District Courts - Significant Decisions |
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| 2-15-cv-04424 (CACD) |
March 30, 2018 |
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| Motion for Attorney Fees (35 USC § 285) |
Denied |
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Attorney Fees Denied |
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Litigation Misconduct |
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Following a jury trial, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions and tactics as a whole were not exceptional. "Defendants’ strategy with its § 285 Motion seems to be to throw out as many different aspects of Plaintiff’s behavior as it can to support its fee request and 'see what sticks.' But it would be both tedious and wasteful for the Court to consider each and every individual tree when it should be looking at the landscape in the bigger forest. . . . And while perhaps true that Plaintiff had some shortcomings in its litigation and pre-litigation conduct and positions, the Court is unconvinced that those shortcomings amount to a showing that Plaintiff’s behavior was exceptional. . . . A party cannot simply hide under a rock, quietly documenting all the ways it’s been wronged, so that it can march out its 'parade of horribles' after all is said and done. That is the tenor of many of Defendants’ arguments here. Or alternatively, where Defendants did come forward at some point and challenged Plaintiff’s positions with some success, Defendants have not proven that they have been exceptionally wronged -- they got at least some of the relief they sought." (page 4) |
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Attorney Fees Denied |
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Pre-Filing Investigation |
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Following a jury trial, the court denied defendants' motion for attorney fees under 35 U.S.C. § 285 on the ground that plaintiff's pre-filing investigation was unreasonable. "Defendants’ affirmative arguments regarding the sufficiency of Plaintiff’s original infringement contentions and late-disclosed infringement theories leads the Court to again ask its number one reemerging question. (I.e., why didn’t Defendants raise its concerns with the contentions sooner?). The Court doesn’t believe Defendants’ belated arguments regarding Plaintiff’s contentions are sufficient to prove that Plaintiff conducted an insufficient pre-filing investigation. . . . Defendants simply haven’t persuasively proven, by a preponderance of the evidence, that Plaintiff failed to conduct an adequate pre-filing investigation. Importantly, the burden is on Defendants -- not Plaintiff -- to make such a showing on this Motion." (page 6) |
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| 1-17-cv-00426 (DED) |
March 30, 2018 |
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Outcome: Settled/Voluntarily Dismissed
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| Patent Infringement |
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| 2-18-cv-02620 (NJD) |
March 29, 2018 |
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Outcome: Non-merits dismissal
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| Patent Infringement |
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| 2-13-cv-00103 (TXED) |
March 29, 2018 |
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| Motion for New Trial |
Denied In Part, Granted in Part |
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Issues for Jury Versus Court |
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Recapture Rule |
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Following a jury verdict of infringement and no invalidity, the court granted in part defendant's motion for a new trial and ordered a bench trial on defendant's 35 U.S.C. § 251 invalidity defense. "[T]he Court concludes that sending a question as to the recapture rule justifies a grant of appropriate post-trial relief to [defendant]. While the Federal Circuit has indeed stated that the 'underlying factual findings [of the recapture rule] are reviewed for substantial evidence,' implying that resolution by a jury is proper, the appellate court has, on balance, reserved the issue to the determination of the trial court. . . . Absent definitive controlling authority to the contrary, the Court concludes that, like prosecution history estoppel, it is proper for the Court as opposed to the jury to determine whether or not the recapture rule was violated." (page 8) |
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Issues for Jury Versus Court |
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Recapture Rule |
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Following a jury verdict of infringement and no invalidity, the court denied in part defendant's motion for a new trial after ordering a bench trial on defendant's 35 U.S.C. § 251 invalidity defense. "[Defendant's] argument that a new trial on all issues is warranted in this case [is] without merit. In some instances, the improper submission of issues to the jury may cause jury confusion and can take material time away from the parties to present their cases. This is not such a case. . . . [Defendant] 'did not use its full 12 hours.' As to any possible jury confusion, juries routinely consider the evidence relevant to a § 251 consideration -- e.g., a patent’s claims, a patent’s specification, and opinion testimony -- to resolve fact issues in a patent infringement case. Such consideration is not confusing to juries and no evidence of confusion has been presented here." (page 10) |
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| Patent Trial & Appeal Board - New Petitions |
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| CBM2018-00033 (PTAB) |
April 2, 2018 |
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| Claim |
| PTAB Petition for Covered Business Method Patent Review |
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| Defendant |
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| Plaintiff |
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| Patents |
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| 7047196 |
May 16, 2006 |
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| System and method of voice recognition near a wireline node of a network supporting cable television and/or video delivery |
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| PGR2018-00059 (PTAB) |
April 2, 2018 |
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| Claim |
| PTAB Petition for Post Grant Review |
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| Defendant |
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| Plaintiff |
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| Patents |
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| 9695423 |
July 4, 2017 |
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| Interfering RNA molecules |
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| Patent Trial & Appeal Board - IPR/CBM Institutions |
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| IPR2017-02067 (PTAB) |
March 29, 2018 |
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| Petitioner |
Google LLC (and 6 others) |
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| Patent Owner |
Uniloc Luxembourg SA (and 1 others) |
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| Patent |
8995433 |
| System and method for instant VoIP messaging |
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| Administrative Patent Judge |
Miriam L. Quinn |
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| Institution Rulings |
| Grounds |
Claims |
Result |
| Anticipation (§102) |
9, 12-14, 17, 25 |
Denied |
| Obviousness (§103) |
1-8, 10, 11, 15, 16, 18-24, 26, 27 |
Denied |
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| PTAB Institution of Inter Partes Review |
Denied |
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PTAB Same prior art or arguments (35 U.S.C. § 325(d)) |
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Other PTO proceedings (35 U.S.C. 315(d)) |
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The Board denied the institution of inter partes review of an internet phone patent under 35 U.S.C. §§ 315(d) and 325(d) where the challenged patent claims were already the subject of other IPRs over the same primary prior art reference. "[O]ur exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on [WIPO patent application '824] as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on [the '824 application] in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, [the '824 application] is being considered on the merits in pending IPRs. . . . [and] the time of filing of this Petition leads us to conclude that Petitioner gained the benefit of Patent Owner’s preliminary responses in the previous IPRs. Patent Owner filed those responses . . . [and t]hree days later Petitioner filed the instant petition. . . . We look to Petitioner to explain its delay in its filing. Petitioner provides no reason here." (page 9) |
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| Patent Trial & Appeal Board - Significant Decisions |
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| IPR2017-00007 (PTAB) |
March 29, 2018 |
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| Petitioner |
Emerson Electric Co. (and 3 others) |
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| Patent Owner |
IPCO, LLC (and 2 others) |
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| Patent |
8233471 |
| Wireless network system and method for providing same |
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| Administrative Patent Judge |
Robert J. Weinschenk |
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| Patent Determinations |
| 8233471 |
Unpatentable/Cancelled |
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| Wireless network system and method for providing same |
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| Claim Terms Construed |
| 8233471 |
9 Terms |
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| Wireless network system and method for providing same |
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| PTAB Final Written Decision -- Patentability of Challenged Claims |
N/A |
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Combining/Modifying Prior Art Elements |
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In a final written decision, the Board found claims of a wireless network transmission patent unpatentable as obvious under 35 U.S.C. § 103 over a combination of references. "Petitioner argues that a person of ordinary skill in the art would have had a reason to combine the cited teachings of [a conference proceeding publication 1004] and [an IEEE article]. We agree with and adopt Petitioner’s reasoning. Specifically, [the conference proceeding and article] relate to the same field of endeavor as the ’471 patent, that is, a wireless network for transmitting data packets between clients and servers. . . . It would have been obvious to a person of ordinary skill in the art to combine [the two references] because [the IEEE publication's] search protocol would have improved [the conference publication's] network by increasing the likelihood of successfully transmitting a data packet to its intended destination. In addition, a person of ordinary skill in the art reasonably would have expected the combination to work. . . . Like [the conference publication and the IEEE article], [a conference proceeding publication 1007] relates to the same field of endeavor as the ’471 patent, that is, a wireless network for transmitting data packets between clients and servers. It would have been obvious to a person of ordinary skill in the art to combine [publication 1004] and [publication 1007] so that [the 1004 publication's] station implements [the 1007 publication's] authentication technique to advantageously prevent unauthorized access. In addition, a person of ordinary skill in the art reasonably would have expected the combination to work. . . . Petitioner has shown by a preponderance of the evidence that claims 2–4, 6–8, 10–12, 14–16, 40, and 41 of the ’471 patent are unpatentable." (page 30) |
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Secondary Considerations |
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In a final written decision, the Board found claims of a wireless network transmission patent unpatentable as obvious under 35 U.S.C. § 103 and rejected the patent owner's arguments for secondary considerations of nonobviousness. "Patent Owner argues that certain objective indicia, including a long-felt but unmet need and unexpected results, demonstrate non-obviousness of the challenged claims. . . . Patent Owner argues that there is a nexus between the evidence of a long-felt but unmet need and the challenged claims. In particular, Patent Owner contends that 'the ’471 patent solved this long-felt need . . . by employing both centralized and decentralized features in which a server maintains a tree with paths (centralized) and clients selected paths to the server independently (decentralized).' . . . [Patent Owner's expert] states generally in his Declaration that he performed a simulation on his 'wireless network invention.' But Patent Owner, [the expert] and [another declarant] do not compare the system on which [the expert] performed the simulation with the system or method recited in the challenged claims. . . . Further, [the expert's] Declaration indicates that the simulated system increased efficiency and reduced overhead burden because of a feature that is not recited in the challenged claims. . . . Based on the evidence of record, we determine that the nexus between Patent Owner’s evidence of a long-felt but unmet need and the challenged claims is weak. . . . Patent Owner relies on the same arguments and evidence . . . to show that there is a nexus between the evidence of unexpected results and the challenged claims. For the same reasons . . . we determine that the nexus between Patent Owner’s evidence of unexpected results and the challenged claims is weak. . . . Patent Owner’s weak evidence of long-felt but unmet need and unexpected results is substantially outweighed by Petitioner’s strong evidence of obviousness." (page 35) |
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| International Trade Commission - New Cases (1) |
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| 337-3305 (ITC) |
March 30, 2018 |
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| Claim |
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| Defendant |
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| Plaintiff |
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| Patents |
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| 9808713 |
November 7, 2017 |
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| Game controller with structural bridge |
| 9855498 |
January 2, 2018 |
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| Game controller with structural bridge |
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| International Trade Commission - Significant Decisions |
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| 337-TA-1075 (ITC) |
March 29, 2018 |
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| ITC Motion to Strike Discovery Response |
Granted |
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ITC Discovery Response Incomplete |
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ITC Discovery Response Untimely |
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ITC Evidentiary/Issue Sanctions |
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The ALJ granted complainant's motion to strike respondent's amended contentions, interrogatory responses, and invalidity defenses for respondent's failure to comply with the procedural schedule. "[Two and a half months ago], [respondent] served a response to Interrogatory No. 6, which listed 53 prior art references, but did not provide any analysis of the references. [Respondent] supplemented its response to include the requested analysis [two months later]. . . . The undersigned finds that [respondent] was obligated to provide the requested element-by-element analysis by the [initial] date. [Respondent's] position that it could wait [another two months] to do so is puzzling. . . . If parties were permitted to wait to provide any analysis until the later date, the initial date would be unnecessary. . . . [Complainant's] requested relief . . . is not one that should be considered lightly. . . . In this Investigation, however, [respondent] was on notice that more is required to comply with contention interrogatory deadlines." (page 1) |
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