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In Microsoft Corporation v. Virnetx Inc., Microsoft filed a petition seeking inter partes review of U.S. Patent No. 7,188,180 (“the ‘180 patent”) on May 19, 2014. The ‘180 patent was asserted in a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:07-cv-00080 (E.D. Tex. filed April 5, 2007) (“the 2007 complaint”), and a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:10-cv-00094 (E.D. Tex. filed March 17, 2010) (“the 2010 complaint”). The ‘180 Patent also is involved in VirnetX Inc. v. Microsoft Corp., Docket No. 6:13-cv-00351 (E.D. Tex.) (“the 2013 complaint”) as well as other pending litigation, two inter partes reexaminations (one concluded and one pending), and a second, concurrently filed inter partes review.

The issue before the Board was whether Section 315(b)’s one year time limitation to file a petition after being served with a complaint barred Petitioner’s IPR in light of the 2007 and 2010 complaints or whether the time should run from the service of the 2013 complaint:

Petitioner was served with a complaint alleging infringement of the ‘180 patent on three occasions. The first complaint (i.e., the 2007 complaint) was served on April 5, 2007, and the second complaint (i.e., the 2010 complaint) was served on March 17, 2010. The 2007 complaint and the 2010 complaint were both served more than one year prior to the date on which the Petitioner filed the present Petition requesting inter partes review (February 4, 2014). The third complaint (i.e., the 2013 complaint) was served less than one year prior to the date on which the Petitioner filed the present Petition requesting inter partes review…As described above, 35 U.S.C. § 315(b) states that an inter partes review may not be instituted if the petition is filed more than one year after the date of service on Petitioner of a complaint alleging infringement of the patent.

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Juno Lighting, LLC (“Juno”) filed a complaint against Nora Lighting, Inc. (“Nora”) on February 11, 2013. The complaint alleged that Nora infringed Juno’s patent, No. 5,505,419 (“‘419 Patent”), entitled Bar Hanger for a Recessed Light Fixture Assembly. Nora filed a counterclaim on May 28, 2013.

After the case was stayed pending a reexamination of the patent by the Patent Office and a summary judgment motion for literal infringement was granted in favor of Juno, Nora filed a motion to dismiss for lack of standing.
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In Coho Licensing LLC v. Glam Media, et al., Coho filed suits against defendants AOL Inc. (“AOL”), Glam Media Inc., Ning Inc., LinkedIn Corp., Rovi Corp., and Twitter, Inc. (collectively referred to as “Defendants”). On May 16, 2014, AOL filed petitions for IPR challenging the validity of all the claims of two of the three asserted patents, and, on June 17, 2014, AOL filed a petition for IPR challenging the validity of all claims of the third patent. Defendants subsequently moved to stay the above captioned cases pending the IPR. As summarized below, the Court granted AOL’s motion to stay and granted the motions of the remaining defendants on the condition that they agree “to be estopped from asserting any invalidity contention that was actually raised and finally adjudicated in the IPR proceedings.”
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Plaintiffs filed the declaratory judgment complaint in this patent case after receiving a letter from defendants alleging that Plaintiffs’ products infringe two of defendants’ patents. Plaintiffs sough declaratory judgment that Defendants’ patents, U.S. Patent Nos. 6,830,014 (filed Aug. 5, 2003) (“the ‘014 Patent”) and 7,267,082 (filed Dec. 30, 2005) (“the ‘082 Patent”), were invalid and/or that Plaintiffs’ products do not infringe the patents. Defendants asserted counterclaims of infringement. The remaining issues for trial involved the scope and validity of the ‘082 Patent and whether Plaintiffs’ product design infringed the ‘082 Patent.

The individual defendant filed a motion to re-align the parties to allow himself to present his case first because he had the burden of proof on the “most important issue” remaining for trial. Plaintiffs opposed the motion on the grounds that they bore the burden of proof on the declaratory judgment claim of invalidity and because they initiated the lawsuit.
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In Affinity Labs of Texas, LLC v. Ford Motor Co., Affinity moved in limine to exclude any reference to the decision of the PTAB regarding an inter partes reexamination filed by a defendant in an earlier case involving a related patent, i.e.., one stemming from the same application and thus sharing the same specification. In the prior decision, the PTAB found that the specification lacked written description for the term “soft button.” Affinity argued that the PTAB’s decision should be excluded because it conflicted with a prior decision of the district court on the same issue.
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Plaintiffs Alpha One Transporter, Inc. and American Heavy Moving and Rigging, Inc. (collectively “Alpha One”) filed a complaint against Defendant and Third-Party Plaintiff Perkins Motor Transport, Inc. (“Perkins”). Perkins subsequently filed a motion to dismiss Alpha One’s complaint for lack of standing on one of the patents-in-suit (the ‘897 Patent) because a co-inventor of the patent had not assigned his rights to Alpha One.

In its opposition, Alpha One did not dispute that the co-inventor status but argued that the co-inventor’s (Mr. McGhie’s) prior assignment of rights in a 2002 provisional patent application (“2002 Assignment”) provided Alpha One ownership of the ‘897 Patent. Because the parties disputed these jurisdictional facts, the district court determined that Alpha One bore the burden of proof to show it had standing to sue on the ‘897 patent.
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In the Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc., the Patent Owner moved for additional discovery to depose a third party witness whose declarations were relied upon by Petitioner in its Reply to the Patent Owner’s Response. The witness originally submitted declarations in reexamination proceedings involving a patent related to the challenged patent.

In its motion, the Patent Owner argued that the Garmin factors each strongly support granting the deposition. In particular, the Patent Owner argued that ” (Factor 1) there is credible, concrete evidence (more than a possibility and mere allegation) that the deposition of [the witness] will provide significant evidence regarding the non-obviousness of and teachings away from the invention in the [challenged] patent;” that (Factor 2) the deposition does not seek Petitioner’s litigation positions or their underlying basis;” that (Factor 3) the “Patent Owner has no ability to obtain information from [the witness] by other means;” that “(Factor 4) the deposition will follow common deposition protocols and easily understandable instructions;” and, that “(Factor 5) the deposition only requires production of [the witness] and is not overly burdensome.
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Plaintiff Dri-Steem Corporation (“Dri-Steem”) sought production of documents in the possession and control of the defednant’s parent company National Environmental Products, Ltd. (“National”), via its wholly-owned subsidiary NEP Inc., dba Neptronic (“NEP”). Dri-Steem asserted that NEP has custody and control of the requested documents because it can secure them from National to meet its business and litigation needs, as demonstrated by NEP’s ability to obtain highly confidential National documents and information at will.

Although NEP had already been given an opportunity to brief the issue, NEP did not dispute the relevancy of the requested discovery under Rule 26, nor did it provide any argument or evidence to dispute that it has access or control over these documents in order to meet its own business needs. Instead, NEP asserted that it does not have possession and control of the documents.
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In inter partes proceeding Apple Inc. v. Rensselaer Polytechnic Institute et al., IPR2014-00320, Petitioner Apple sought a second request for rehearing, before an expanded panel of the PTAB, on the Board’s decision not to institute an inter partes review of RPI’s U.S. Patent No. 7,177,798 (“the ‘778 Patent”). The Board held that Apple’s request was unauthorized and therefore ordered it expunged from the record of the proceeding.

On January 3, 2014, Apple initially filed its IPR petition seeking invalidity of the ‘798 Patent based three pieces of prior art that Apple alleged anticipated and/or rendered obvious certain claims of the ‘798 Patent. On April 17, 2014, RPI filed its preliminary response asserting that the Board should deny the petition just as it denied Apple’s first petition for inter partes review of the ‘798 Patent. In its preliminary response, RPI asserted that the Board already considered (and rejected) the same grounds and prior art that Apple now relies on in the second petition. Accordingly, RPI argued that the second petition should be denied because “[t]he Board denied the first petition [which included the same prior art asserted in the second petition] as to all challenged claims because Apple failed to establish that it would prevail in showing that even a single claim of the ‘798 Patent is unpatentable.”
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Amazon.com (“Amazon”) filed a motion to dismiss Tuxis Technologies, LLC’s (“Tuxis”) complaint for failure to state a claim. Tuxis alleged infringement of the 6,055,513 (“the ‘513 patent”) against Amazon. As explained by the district court, the ‘513 patent relates to a method of upselling. The term “upsell” is defined in the patent to be “an offer or provision of a good or service which is selected for offer to the customer and differs from the good or service for which the primary contact was made.” The patentee defined “real time” as “during the course of the communication initiated with the primary transaction or primary interaction.”

Amazon moved to dismiss, asserting that the ‘513 patent’s claims are invalid because they do not claim patent-eligible subject matter under 35 U.S.C. § 101. After analyzing the recent case law on section 101 of the Patent Act, including Alice Corp., the district court found that “[i]n applying the framework set out above, it is clear that the claim 1 of the ‘513 patent is drawn to unpatentable subject matter. It claims the fundamental concept of upselling–a marketing technique as old as the field itself. While the additional limitations of the claim do narrow its scope, they are insufficient to save it from invalidity.”
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