PULLING VICTORY FROM THE JAWS OF DEFEAT
When ClearOne, Inc. needed a firm to defend a foundational patent covering its product that had propelled it to the top position in the market, ClearOne turned to L&P. The patent, U.S. Patent No. 9,264,553, is entitled “Methods and Apparatuses for Echo Cancelation With Beamforming Microphone Arrays.” The IPR petition was filed by Shure Inc. after ClearOne had accused Shure of infringing related patents, including the grandparent of the ’553 Patent. ClearOne had sought a preliminary injunction for infringement of one of the grandparent’s claim that was narrower than the broadest claims in the ’553 Patent, but the district court denied the injunction believing there was a substantial question of validity in light of a reference called “Kellermann.” Shure’s IPR petition was based on that same Kellermann reference. The PTAB instituted trial, thinking, like the district court, that Kellermann disclosed the same “fixed” beamforming as claimed in the ’553 Patent. After all, Kellermann described his beamformer as “fixed.”
In the trial, L&P convinced the PTAB that Kellermann’s beamformer is not really “fixed” as that term is used in the ’553 Patent, and the PTAB confirmed the patentability of all claims. The Federal Circuit summarily affirmed just two days after the oral argument, extending the perfect record of L&P attorneys representing appellees at the Federal Circuit. The case numbers were IPR2017-01785 at the PTAB and Appeal No. 2019-1755 at the Federal Circuit.
DEFENDING ASSERTED MEMORY CONTROLLER PATENTS IN IPR BATTLES
When Polaris Innovations. Ltd. accused NVIDIA Corp. of infringing six patents relating to memory-controller technology, NVIDIA reacted with a typical IPR strategy, filing IPR petitions against each patent, a grand total of eight petitions. L&P represented NVIDIA in each IPR, and the strategy backfired. L&P avoided institution of trial in three of the cases, won the trial completely in one case, and won the trial partially in two cases. NVIDIA was forced to settle. The Federal Circuit, by the way, vacated and remanded the PTAB’s unfavorable decision in the two remaining cases. In other words, L&P has prevailed fully or partially in all of the IPRs completed so far.
PAVING THE WAY FOR MULTI-MILLION DOLLAR VERDICT
The ubiquitous swivel cover for USB thumb drives is covered by U.S. Patent No. 6,926,544, owned by L&P client PAVO Solutions Ltd.
Kington Tech. Co. filed two petitions against the ’544 Patent after PAVO had sued Kingston for infringement. L&P took over the cases after the PTAB had instituted both trials. L&P prevailed in part in the trials, convincing the PTAB to confirm the patentability of many claims, including some that had been asserted in the litigation. Neither party was completely satisfied with the PTAB’s decision and the underlying claim interpretation, so PAVO appealed, and Kingston cross-appealed. The main issue on appeal was the interpretation of the terms “on” and “formed on” in phrases like “hinge protuberance (formed) on [a] side of the case.” Kingston argued “on” and “formed on” meant nearby, whereas L&P argued on behalf of PAVO that they meant physically attached. The Federal Circuit agreed with L&P. The result was an affirmance of all claims whose patentability determination L&P was defending on appeal and reversal as to all claims whose unpatentability determination L&P was attacking on appeal. In other words, the appeal was a complete victory for L&P and PAVO. Thereafter, PAVO litigated the patent against Kingston to obtain a base jury verdict of over $7.5 million plus a finding of willful infringement. The case numbers were IPR2015-00149 and IPR2015-00559 at the PTAB and 2016-2209, 2016-2328, and 2016-2391 at the Federal Circuit.
AVOIDING IPR TRIALS
Red Hat, Inc., Dell Inc., Dell Techs. Inc., EMC Corp., Hitachi Ltd., Hitachi Vantara Corp., Hewlett Packard Enter. Co., and Super Micro Computer, Inc. collectively filed two IPR petitions against U.S. Patent No. 6,718,436 owned by L&P client, Electronics & Telecommunications Research Institute (ETRI). The ’436 relates to logical volume management in a RAID storage system. L&P convinced the PTAB to deny institution of both petitions, enabling ETRI’s exclusive licensee to promptly resume litigation against the petitioners. These two cases brought L&P’s overall IPR record on behalf of ETRI to a perfect 8-0.
REEXAMINATION WIPE-OUT
In late 2018 L&P filed three reexamination requests against U.S. Patent Nos. 9,320,108, 9,685,582, and 9,842,961, respectively, owned by Seoul Semiconductor Co., Ltd. The patents relate to LED devices and methods for fabricating them. By January 2020, the PTO had finally concluded that all challenged claims are unpatentable and issued Notices of Intent to Issue Reexamination Certificates (NIRCs) to that effect.
US 6, Them 0
L&P lawyers represented the owner of U.S. Patent No. 6,978,346, entitled “Apparatus for Redundant Interconnection Between Hosts and RAID,” in six inter partes reviews (IPRs) filed by Dell, Hewlett-Packard, Net-App, VMware, IBM, and Oracle. Matt Phillips and Derek Meeker convinced the Patent Trial and Appeal Board (PTAB) to deny three of those six IPR petitions. In fact, of the fifteen total challenges made against the ‘346 Patent in the various IPR petitions, the PTAB instituted trial on only two challenges, resulting in two trials. The first trial concluded with the PTAB finding that the first challenge failed, and the Federal Circuit affirmed that decision. The second trial involved two joined IPRs, in which the PTAB also found that the last challenge failed, again confirming the patentability of all claims. We are proud to have successfully defended the ‘346 Patent against repeated IPRs.
The cases:
· IPR2013-00635 — Final written decision in favor of patent owner; affirmed on appeal
· IPR2014-00152 — Trial not instituted
· IPR2014-00901 — Merged with IPR2014-00949; Final written decision in favor of patent owner
· IPR2014-00949 — Merged with IPR2014-00901; Final written decision in favor of patent owner
· IPR2014-00976 — Trial not instituted
· IPR2015-00549 — Trial not instituted
Federal Circuit Affirms IPR Victory at PTAB
The U.S. Court of Appeals for the Federal Circuit ruled August 9, 2016 – just two business days after the oral argument – in favor of our client Electronics & Telecommunications Research Institute (ETRI) in appeal no. 2015-1719. The Appellants, Dell, Hewlett-Packard, and Net-App, had appealed a final written decision of the Patent Trial and Appeal Board (PTAB) in favor of ETRI in an inter partes review (IPR) of ETRI’s patent. The underlying IPR was one of six IPRs against the same patent, and we prevailed for ETRI in all six IPRs. Matthew Phillips and Derek Meeker represented ETRI at the PTAB and in the Federal Circuit.
Success Where Others Had Failed Through Pioneering Reexamination Strategy
In 2005, when a small family business in Vancouver, Washington, was sued for infringement of a patent that had been successfully enforced over ten times, Matt Phillips implemented a then-innovative strategy to have the United States Patent and Trademark Office (PTO) reexamine the patent. Although the reexamination route had been available since the early 1980s, it had been seldom used by accused infringers, as the popular belief had been that the PTO would simply "bless" or "gold-plate" the patent by confirming it again.
Matt filed reexamination requests based on prior art found deep within the city hall offices of Redmond and Bellevue, Washington, and his litigation team convinced the district court, where the infringement lawsuit was pending, to stay the court case while the reexamination was conducted. This reexamination-and-stay strategy saved the client from the immense costs and risks of patent litigation. Meanwhile, the PTO forced the patent owner to amend its claims to avoid the prior art.
When the court case resumed, Matt's litigation team obtained a summary judgment that the amendment foreclosed the patent owner from alleging infringement occurring prior to the conclusion of the reexaminations. As a result, the client was not liable for any past damages. Furthermore, the client re-designed and improved its product to avoid infringement of the amended claims. The net result was a complete victory for the client at a small fraction of the cost of typical patent litigation in court.
This reexamination-and-stay strategy subsequently became a standard tactic utilized by accused infringers big and small. In fact, until the enactment of the America Invents Act (AIA) in 2012 and its creation of patent review proceedings at the PTO, reexamination was the first page in the accused infringer's playbook. To read more about our post-grant review practice, click here.
Amicus Brief Moves Federal Circuit to Reverse Significant Intervening Rights Ruling
Matt Phillips led an effort to file an amicus brief in Marine Polymer Technologies, Inc. v. HemCon, Inc. to overrule a rogue decision that threatened to upset post-grant patent practice. The Federal Circuit originally decided that case in favor of HemCon, the accused infringer, by holding that Marine Polymer had in effect "amended" its patent claims in a reexamination by argument even though the words of the claim were unchanged. As a result, HemCon was absolved from liability for past infringement of the patent.
Sensing that this ruling could have dramatic effects on patents that have been through reexamination or other post-grant proceedings, on behalf of Intellectual Ventures Management LLC, a private company and holder of one of the world's largest patent portfolios, asked Matt to file an amicus brief to rehear the case and to change this ruling. Reports credited the brief as the catalyst for the court's decision to rehear the case en banc, and the court's en banc opinion closely follows the reasoning set forth in the brief.
On a personal note, Matt was extremely pleased to see that the en banc decision vindicated the view of Circuit Judge Alan D. Lourie, for whom Matt was a law clerk for two years. Judge Lourie had dissented from the court's original decision and authored the en banc opinion reversing the original decision.
Reexamination Victory
When a Seattle high-tech company was sued for patent infringement by a competitor, Matt Phillips once again implemented a reexamination strategy. Matt filed a series of reexamination requests against the patent, leading to final rejections of all claims, each under eight different grounds, and in due course a reexamination certificate cancelling the patent. Meanwhile, the litigation was stayed, and the client obtained this victory at a very small cost compared to traditional patent litigation.
District Court and Federal Circuit Victory in Inventorship Dispute
When the largest high-tech company headquartered in Oregon was sued by a former employee for wrongful termination, discrimination, and patent inventorship, Matt Phillips handled the patent aspects of the case. Matt and his colleagues obtained summary judgment, including a judgment that the plaintiff should not be named an inventor on any of the patent applications for inventions that he alleged to have invented. When the plaintiff appealed to the Federal Circuit, Matt handled the appeal, and the Federal Circuit unanimously and promptly affirmed the district court's judgment.
Pro Bono Victory for Disabled Veteran
Matt Phillips helped a disabled veteran secure compensation for debilitating neck injury incurred while he was in service in the Army. Matt took the case pro bono after the veteran had attempted for almost ten years to obtain compensation from the Department of Veterans Affairs (VA). Matt appealed the veteran's case to the Court of Appeals for Veterans Affairs. After Matt filed his principal brief, the government's attorney agreed to settle the case, stipulating to a reversal of the VA's decision, clearing the path for the veteran to receive the benefits he was due. Moreover, the government agreed to an award of attorney fees under the Equal Access to Justice Act.