All Things Patent Blog


1 Comment

Software Patents Are Against the First Amendment?

The end may be nearing for software patents which have been highly controversial in the tech industry for some time. The verdict issued on Friday by the U.S Court of Appeals for the Federal Circuit, found that three patents asserted against anti-virus companies were patent-ineligible under 35 U.S.C. § 101 and that they did not pronounce a patentable invention. The patents were owned by Intellectual Ventures, which has a standing in the tech world as “patent troll”.

In the concurring opinion, Judge Haldane Robert Mayer indicated that patent law must provide similar safeguards as copyright law has in-built first amendment protection called the “fair use”. Judge Mayer states that “(1) patents constricting the essential channels of online communication run afoul of the First Amendment. (2) Claims directed to the software implemented on a generic computer are categorically not eligible for a patent.”

Considering the decision made by the Supreme Court in 2014 known as “Alice” covering patentable subject matter, Judge Mayer inferred that software is not patentable. “Software lies in the antechamber of patentable invention. Because generically-implemented software is an “idea” insufficiently linked to any defining physical structure other than a standard computer, it is a precursor to technology rather than technology itself”, says Judge Mayer.

This does not mean that there will be an immediate end to software patents as this opinion was the concurring opinion. Even now the legal authorities from relevant courts are skeptical about patenting software and the chances of rejections are high.

As per Maxval’s research and USPTO data the case details are as below:

 Type  Name
Court CAFC
Plaintiff Intellectual Ventures I LLC
Plaintiff Attorney Brooke Ashley May Taylor
Defendant Symantec Corp.|Trend Micro Incorporated|Trend Micro, Inc. (USA)|Intel Corporation
Defendant Attorney Dean G. Dunlavey
Defendant Law Firm Latham & Watkins LLP
Product Anti-virus and Internet security products
Patent US5987610|US6073142|US6460050|US7506155
Closed date 9/30/2016
Basis of Termination Affirmed-in-Part and Reversed-in-Part

For more details, please click on the case links:

http://litigation.maxval-ip.com/Litigation/DetailView?CaseID=7PjozxHUWm8%3d
http://litigation.maxval-ip.com/Litigation/DetailView?CaseID=c3hlZj0QJB8%3d
http://litigation.maxval-ip.com/Litigation/DetailView?CaseID=N6J_Pa908VM%3d

Advertisements
acacia-apple-verdict


Leave a comment

$22 Million Verdict: Cellular Communications Equipment wins demonstrative victory against Apple Inc.

acacia-apple-verdict

After finding that Apple willfully infringed on a patent, EDTX has adjured Apple to pay $22 million to Cellular Communications Equipment LLC, a subsidiary of Acacia Research. CCE holds a portfolio of telecommunications patents, mostly into Long-Term Evolution (LTE) technologies. Attorneys from Caldwell Cassady & Curry, a high-stakes civil litigation firm specializing in patent infringement and co-founder disputes, represented CCE in the Eastern District of Texas case.

The lawsuit, filed in January 2014, accused Apple of selling multiple products that infringe upon the U.S. Patent No. 8,055,820. The patent is titled ”Apparatus, system, and method for designating a buffer status reporting format based on detecting pre-selected buffer conditions”. The wrangle started when CCE impeached Apple of also infringing six other of its patents. By the time the cases went to trial, only one patent was in the stand. That patent was acquired by CCE from Nokia Corp. Engineer Benoist Sebire.

Apple attempted to prove that the claims of the ‘820 patent were invalid. However, the jury rejected the assertions made, as the evidence submitted was not convincing. Since the infringement was found to be willful, the patent holder can appeal to court towards enhancing the damage up to 3 times, which can roughly be around $68 million in this particular litigation.

According to USPTO data and MaxVal’s own research, Apple has not yet confirmed whether it will appeal the decision.

Maxval’s link of the case

Type

Names

Case Number 6:14-cv-00251
Court Texas Eastern District Court
Filed date 04/07/14
Judge K. Nicole Mitchell
Plaintiff Cellular Communications Equipment LLC
Plaintiff Attorney Jeffrey Ray Bragalone
Plaintiff Law Firm Bragalone Conroy PC
Counter Claimant Apple Inc.
Defendant Apple Inc. | AT&T Inc. | AT&T Mobility LLC|Verizon Communications, Inc.| Cellco Partnership 
doing business as Verizon Wireless|Sprint Corporation |Sprint Corporation |Sprint Solutions, Inc.| Sprint Spectrum L.P.| Boost Mobile, LLC|T-Mobile USA, Inc.| T-Mobile US, Inc.
Counter Defendant Cellular Communications Equipment LLC
Defendant Attorney Douglas E Lumish
Defendant Law Firm Latham & Watkins LLP 
Product Apple mobile devices and services for mobile device communications
Patent US6377804|US6819923|US7215962|US7941174|US8055820|US6810019
Closed date Yet to be closed
Basis of Termination Judgment on the Merits – Defendant
Outcome of District court judgment Defendant
Damages amount $ $22,118,216


Leave a comment

False Testimony Leads to Triple Damages Award by EDTX against Samsung

edtx-samsung_blog_banner

Samsung Electronics was punished with a $21 million enhanced damages award after finding egregious willful infringement of patents held by Imperium IP Holdings of the Cayman Islands.

Judge Mazzant cited the US Supreme Court’s decision this June in Halo Electronics v. Pulse Electronics while making his determination to triple the damages. At Halo, the majority opinion held that the two-step Seagate test is inconsistent with § 284, which has no explicit limit or condition on when enhanced damages are appropriate. Imperium IP Holdings v. Samsung Electronics in E.D. Tex. is the first case to apply with Halo standard for awarding enhanced damages.

The original complaint was filed on June 2014 by Imperium IP seeking damages from Samsung for infringing the patents. On February 2016, the jury verdict delivered that Samsung had willfully infringed upon the following  patents-in-suit:

1 – U.S. Patent No. 7092029 titled Strobe Lighting System for Digital Images.

2 – U.S. Patent No. 6271884, titled Image Flicker Reduction with Fluorescent Lighting.

An initial complaint of Imperium IP against Samsung seeking relief targeted Samsung products which allegedly infringed Imperium’s patents ‘029 and ‘884.

In this case, the court decided to award enhanced damages to Samsung, because of egregious behavior on the part of Samsung,  including attempts to copy the technology and  moreover, false testimony given by Samsung. Samsung’s representatives testified under oath that they only became aware of Imperium IP’s patents in June 2014, the first time the infringement action was brought to court. However, this was proved incorrect by depositions and other discovery during trial.  Previously, Samsung had also made an attempt to purchase the patents-in-suit from Imperium, concealing its identity through a patent broker. The court thus found that Samsung was aware of Imperium’s patents since at least April 2011 instead of June 2014.

While deciding to award enhanced damages, the court was guided by the non-exclusive factors developed by the U.S. Court of Appeals of the Federal Circuit decided in 1992. Likewise, Samsung has also made an attempt in defense to declare that it wasn’t liable for infringing on imaging sensors which it purchased from Tokyo-based Sony Corporation. During September 2015, a damages expert for Imperium deposed that the company wasn’t targeting sensors which Samsung purchased from Sony, but an infringement report on the same day which used a citation only listing Sony sensors.

Court decided that Samsung’s decision not to declare the Sony license defense until November 2015, post the deadline to file for summary judgement and months after receiving the Sony license agreement in April 2015, was evidence that Samsung vigorously intended to not assert the Sony license.

According to USPTO data  and MaxVal’s own research, Imperium accused Samsung in 3 PTAB cases out of which 1 wasn’t instituted.

 

Case Number Petition document Institution document Status
IPR2015-01231 Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. (Petitioners) hereby petitions for inter partes review of claims 1-6, 14, and 17-19 (“Challenged Claims”) of U.S. Patent No. 6,271,884. The petition was denied by order due to all challenged claims of the 884 patent  and adding further to the case, that no inter partes review was instituted. Not-instituted
IPR2015-01232 Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. (Petitioners) hereby petitions for inter partes review of claims 1, 6, 7, 14, and 16 (“Challenged Claims”) of U.S. Pat. No. 7,092,029 (“the ’029 Patent”), issued to
ESS Technology, Inc. (“ESS”).
Petitioner demonstrates that there is a reasonable likelihood of prevailing in showing the unpatentability of claims 1, 6, 7, 14, and 16 of the ’029 patent. Consequently, we institute inter partes review of claims 1, 6, 7, 14, and 16 as unpatentable over Shimada. ORDERED that inter partes review is instituted as to claims 1, 6, 7, 14, and 16 of the ’029 patent. Instituted
IPR2015-01233 Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. (Petitioners) hereby petition for inter partes review of claims 1 and 10 (“Challenged Claims”) of U.S. Patent No. 6,836,290. Petitioner has demonstrated a reasonable likelihood that it would prevail at trial in showing the unpatentability of claims 1 and 10 of the ’290 patent on certain of the grounds asserted in the Petition.
ORDERED that an inter partes review is instituted as to claims 1 and 10 of the ’290 patent.
Instituted

 

Indicators to predict patent litigation outcomes


1 Comment

5 Indicators to Predict Patent Litigation Outcomes

Indicators to predict patent litigation outcomes

If you are involved in any patent litigation, whether you are the plaintiff or defendant, you naturally want to know the potential outcome of your case. At this stage, it would be helpful to be able to forecast the outcome of the litigation.

Applying Data Analytics to Predict Litigation Outcomes

In the last 5 years, Litigation Analytics has gained popularity as a way for law firms and corporations to forecast the outcome of a case.

These indicators can help answer such questions:

For a case of this kind,

  • What were the previous outcomes in this domain?
  • What is the typical time-to-closure?
  • What is the success rate with a particular district court?
  • What are the trends on damages awarded?

Of course, there are many sophisticated algorithms to compute the outcome of an infringement case, but there are also other handy ways as illustrated below, to predict the outcome of the case even at the very early stages.

There is no doubt the outcome of a patent infringement case involves many other external factors like change in the policy, law, financial flexibility, ability to deal with the business disruption of the parties involved, etc. But some indicators and historic data will help you predict the likelihood of the case.

Key Indicators

In the uncertain world of litigation, metrics like time-to-closure, outcome by courts/judges, damages awarded and success rate by the traits of an opponent, for instance, can be deemed as key indicators. Using these data cues, one can very well connect the dots while evaluating the merit of a case without much complication.

For illustrative purposes, let us take the cases affiliated with the pharma industry*.

  • To analyze time-to-closure we reviewed cases filed in 2015
  • To analyze judgments by industry as well as by courts/judges we reviewed cases closed in 2015
  • To study the damages awarded by industry and success rates with regard to the nature of an opponent we reviewed cases closed from 2011 to 2015.

1. Time-to-closure

Not all district courts are patent owner–friendly. In jurisdictions such as Eastern Virginia, Delaware, or Eastern Texas a typical lawsuit goes to the trial stage and gets closed within a year, when compared to the average 3+ years from filing date to time-to-trial and then to closure with other district courts. Generally, these delays may also impact other factors like the cost to run the case, market value of the patent litigated, etc.

time-to-trial

In a panoramic view of patent litigations in 2015, we see the following statistics:

Over 550 Pharma cases were filed across various US district courts.

❏  The average time-to-closure was approximately 90 days.

❏  However, some power players took more than 325 days to contend with their opponents, for example CTE Global, Inc. and Otsuka Pharmaceutical Co. Ltd.

❏  About 70% of these cases were filed only in the district courts of Delaware and New Jersey.

2. Judgment by District Courts (or Judges)

Some US district courts have been showing a repeated pattern of outcomes in favor of either plaintiffs or defendants. Now look at the cases that closed with a judgment in 2015.

Charts to be handdrawn

Historically, the district courts of DE, Eastern VA, NJ, and Eastern TX are said to have been the favorite destinations to file cases due to their plaintiff-friendliness. However, for pharma cases given judgments in 2015, in these courts neither plaintiffs nor defendants were favored, while at the same time those in NJ slightly favored plaintiffs. This analysis can also be applied to judges and their rulings.

3. Outcomes Within the Industry

Many recent studies have revealed the outcome trends by industry. Outcomes of patent litigation can vary between industries. It is helpful to look at the outcomes within your specific field. Below are the outcomes for the pharma-related suits filed in 2015:

Charts to be handdrawn

More than 52% of pharma-related suits filed in 2015 were concluded as likely settlement and about 17% as voluntary dismissals.

4. Damages Awarded

The bio/pharma industry has been awarded the highest damages for patent litigations. Since 2011, the published value of awarded damages is more than $2.14B in the bio/pharma industry alone – Centocor Ortho Biotech, Inc. and SyntrixBiosystems, Inc. were among those who were apportioned the most expensive settlements in 2012 and 2013.

Charts to be handdrawn

In 2015, there were only two cases awarded damages in the pharma field in favor of plaintiffs – Astrazeneca AB and Monsanto. Astrazeneca, who had been combating this case since 2001 against Apotex Corporation, secured a large compensation of around $104.3M.

5. Success Rates by Traits of Opponents

NPE-vs-PEEvery year the number of litigations filed by NPEs, keep increasing. NPEs accounted for about 69% of the total cases that were filed in 2015 irrespective of industry type.

According to a recent study**, while the practicing entities had a lower median time-to-trial and a 10% higher success rate than NPEs for the last 10 years, in contrast, the median damages awarded for NPEs from 2011 to 2015 were 3 times greater than that for PEs.

While analytics becomes more and more handy and prescriptive, law firms and organizations have already started incorporating them as an essential component with their litigation strategies. By leveraging the analytical power of litigation tools like MaxVal’s Litigation Databank (or the API), you can forecast, strategize, and benchmark yourself against others.

Sources:
*MaxVal’s Litigation Databank
** PWC: 2016 Patent Litigation Study

For the methodology used in this blog and to order any such detailed custom reports, contact us at bd@maxval.com.


Leave a comment

Why do Korean Companies Care About US Patent Litigation?

South Korea’s WIPS Co. Ltd. has licensed MaxVal’s Litigation Databank to provide comprehensive information on US patent litigation to their clients.  WIPS is the leading online patent information service provider in South Korea.  WIPS Global is a web based patent search system with comprehensive global patent data coverage, including the US, Europe, Japan and China.

Why is US patent litigation data of interest to Korean companies?   The answer is that Korean companies are frequently involved in US patent litigation.  The information provided by MaxVal’s Litigation Databank enables Korean companies to keep up to date on their cases and to monitor litigation that affects their industry and provides them insight into the US patent litigation environment.

The table below shows the leading Korean technology companies that have been involved in patent litigation in 2015, and over the last five years.

Trimmed name used for search

Cases in 2015

Cases in the last  5 Yrs

Plaintiff

Defendant

Plaintiff

Defendant

Samsung Electronics

1

61 11

249

LG Electronics

1

41 5

200

SK Hynix

0

1 0

8

Hyundai Motor

0

10 0

46

Kia Motors

0

5 1

24

Nautilus Hyosung

0

1 1

2

The ongoing patent litigation between Apple and Korea’s Samsung Electronics is well known.  Samsung Electronics has been involved in a large number of cases – mostly as a defendant.   IPR2015-01135 is an interesting PTAB case involving Samsung Electronics and NVIDIA (MaxVal’s Litigation Databank includes PTAB cases).

LG Electronics was sued in California Central District Court ( case 8:13-cv-00134) in which Digitech Image Technologies charged infringement of its US 6,128,415 relating to capturing, transforming or rendering color images.

In 1.11:cv-04356 Korean semiconductor memory maker SK Hynix was sued in Illinois Northern District Court by Cascades Computer Innovation LLC over US patent 6,366,130 “High speed low power data transfer scheme”.

It is somewhat surprising to see how many cases Hyundai and Kia Motors are involved in.  Interesting cases include:

  • 1:11-cv-00934– Delaware District Court.  Beacon Navigation GmbH charged Hyundai with infringement over vehicle navigation  patent USPN 5,878,368.  Kia Motors was sued over the same patent in case 1:11-cv- .  Beacon Navigation also filed suit against Ford, GM, BMW, Honda, Mazda and other auto manufacturers.
  • 1:13-cv-00275 In Delaware District Court, 911 Notify LLC sued Hyundai Motor over USPN6,775,356, which claims system for notification relating to an emergency call from a telecommunication device. Ford Motor and other manufacturers were also sued by 911 Notify.
  • 6:09-cv-00479 Clear with Computers, LLC sued Hyundai in the Texas Eastern District Court over three US patents, including USPN 5,367,627 “Computer-assisted parts sales method”.

Finally, Diebold sued Korea’s Nautilus Hyosung over ATM machine patents in 2015.  In Ohio Northern District Court case 1:15-cv-02153 Diebold charged that the Nautilus line of HALO ATM machines infringed six of its US patents.

A manufacturer in any industry doing business in the highly competitive US market faces the risk of patent infringement suits. These examples show that Korean companies are no exception.   Given that patent litigation is a reality, it is important to stay current on specific cases and general trends.  MaxVal’s Litigation Databank makes it easy for companies to do so.

The Litigation Databank is a searchable database of US patent litigation.  Litigation Databank covers the US District Court, the US Court of Appeals, the US Supreme Court and the ITC.  MaxVal has recently added coverage of the USPTO’s Patent Trial and Appeal Board (PTAB).  Subscribers receive daily alerts and access to a web based search and reporting system.  The Litigation Databank is also available as an Application Programming Interface (API).  The API allows subscriber patent databases and tools interface directly with the Patent Litigation Databank database.

A video demonstrating the system is available Litigation Databank Demo.

For more information on Litigation Databank, contact MaxVal at bd@maxval.com.


Patent Litigation Analytics – Report on Judges in 2014 cases


Patent Litigation Analysis for Golden Bridge Technology, Inc.


Pharma & Biotech – Patent Litigation Report 2014