IP Newsflash
Keeping you updated on recent developments in intellectual property law.
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IP Newsflash
A district court in the Western District of Washington denied Adaptics Ltd.’s (“Adaptics”) motion for summary judgment of patent exhaustion, which was based
on a theory that an authorized sale by a downstream reseller can exhaust patent rights against an upstream manufacturer. The plaintiff, Perfect Company
(“Perfect”), alleged that two of Adaptics’ app-based products infringed Perfect’s U.S. Patents No. 8.829,365 and No. 9,772,217. Perfect also sued Apple Inc.
(“Apple”), alleging that Apple’s sale of Adaptics’ products infringed the same patents.
on a theory that an authorized sale by a downstream reseller can exhaust patent rights against an upstream manufacturer. The plaintiff, Perfect Company
(“Perfect”), alleged that two of Adaptics’ app-based products infringed Perfect’s U.S. Patents No. 8.829,365 and No. 9,772,217. Perfect also sued Apple Inc.
(“Apple”), alleging that Apple’s sale of Adaptics’ products infringed the same patents.
IP Newsflash
On February 14, 2017, Judge Chhabria of the Northern District of California granted, in part, Apple’s motion to exclude the expert report of Unwired Planet’s
survey expert, Dr. Allenby. Dr. Allenby was hired to conduct a consumer survey to assess the value of the claimed method for “provisioning” a mobile
communication device. This process involves the mobile communication device connecting with a server and being authenticated to allow the user access to
certain services. According to the decision, Dr. Allenby’s report, however, relied on Unwired Planet’s proposed definition of “provisioning,” and not the court’s
construction. The expert had defined the term “provisioning” to mean something akin to “providing;” however, the court’s construction was far narrower.
survey expert, Dr. Allenby. Dr. Allenby was hired to conduct a consumer survey to assess the value of the claimed method for “provisioning” a mobile
communication device. This process involves the mobile communication device connecting with a server and being authenticated to allow the user access to
certain services. According to the decision, Dr. Allenby’s report, however, relied on Unwired Planet’s proposed definition of “provisioning,” and not the court’s
construction. The expert had defined the term “provisioning” to mean something akin to “providing;” however, the court’s construction was far narrower.
IP Newsflash
During IP license negotiations, prudent negotiators will often avoid sharing privileged information about the IP to avoid waiving the attorney-client privilege.
But in a recent District of Massachusetts case, the court upheld a claim of privilege to patent prosecution strategy communications between parties who
were in the process of negotiating an exclusive license.
But in a recent District of Massachusetts case, the court upheld a claim of privilege to patent prosecution strategy communications between parties who
were in the process of negotiating an exclusive license.
IP Newsflash
On November 1, 2016, The Honorable Rodney Gilstrap of the United States District Court for the Eastern District of Texas added $456,000 in enhanced
damages after a jury found that LG willfully infringed two patents owned by Core Wireless LLC. The jury had awarded Core Wireless $2,280,000 in actual
damages.
damages after a jury found that LG willfully infringed two patents owned by Core Wireless LLC. The jury had awarded Core Wireless $2,280,000 in actual
damages.
IP Newsflash
In Affinity Labs of Texas, LLC v. Amazon.com, Inc., Chief Judge Prost affirmed a district court’s finding that Affinity Labs’ patent was invalid for being directed
to ineligible subject matter because it was directed to an abstract idea and contained no inventive concept. Affinity’s U.S. Patent No. 8,688,085 is directed to
media systems that deliver content to a handheld wireless electronic device. The court went through the two step process articulated in Alice to determine
the patent’s eligibility under § 101.
to ineligible subject matter because it was directed to an abstract idea and contained no inventive concept. Affinity’s U.S. Patent No. 8,688,085 is directed to
media systems that deliver content to a handheld wireless electronic device. The court went through the two step process articulated in Alice to determine
the patent’s eligibility under § 101.
IP Newsflash
On Wednesday, the District Court for the Northern District of California granted defendant F5’s renewed motion for JMOL that it did not willfully infringe
plaintiff Radware’s patent. The court determined that plaintiff failed to submit sufficient evidence to support the jury’s willfulness finding, even under the new
preponderance of the evidence standard set forth in the Supreme Court’s Halo decision.
plaintiff Radware’s patent. The court determined that plaintiff failed to submit sufficient evidence to support the jury’s willfulness finding, even under the new
preponderance of the evidence standard set forth in the Supreme Court’s Halo decision.
IP Newsflash
On August 15, 2016, Judge Orrick of the Northern District of California granted-in-part defendant Sophos’s motion to exclude the testimony of plaintiff Finjan’s
damages expert. Sophos urged, among other things, that the expert’s apportionment methodology improperly inflated her royalty base. Specifically, Sophos
argued that Finjan’s expert improperly inflated the royalty base by double or triple counting revenue attributable to the “threat engine” and “live protection”
features of the accused software products. That is, Finjan’s expert apportioned the royalty base by 28.6 percent (or 2/7) as to both patents-in-suit, even
though each patent covered those same two features. “In this way, [the expert] counts the revenue attributable to certain features multiple times in
calculating her royalty base such that her total apportionment calculation uses a royalty base that is over 100 percent of the total value of several of the
accused products.”
damages expert. Sophos urged, among other things, that the expert’s apportionment methodology improperly inflated her royalty base. Specifically, Sophos
argued that Finjan’s expert improperly inflated the royalty base by double or triple counting revenue attributable to the “threat engine” and “live protection”
features of the accused software products. That is, Finjan’s expert apportioned the royalty base by 28.6 percent (or 2/7) as to both patents-in-suit, even
though each patent covered those same two features. “In this way, [the expert] counts the revenue attributable to certain features multiple times in
calculating her royalty base such that her total apportionment calculation uses a royalty base that is over 100 percent of the total value of several of the
accused products.”
IP Newsflash
On August 10, 2016, plaintiff VirnetX argued that Apple received a fair trial when the jury handed down a $625 million verdict against it. This comes after U.S.
District Judge Robert W. Schroeder III of the Eastern District of Texas set aside the jury’s verdict, citing potential fairness issues based on repeated references
to earlier litigation between these two parties.
District Judge Robert W. Schroeder III of the Eastern District of Texas set aside the jury’s verdict, citing potential fairness issues based on repeated references
to earlier litigation between these two parties.
IP Newsflash
On August 8, 2016, the Federal Circuit affirmed the finding of the district in Utah that claims of the patent-in-suit were indefinite under the Supreme Court’s
Nautilus, Inc. v. Biosig Instruments, Inc. decision and therefore invalid. The patent-in-suit generally disclosed an exercise and health system that is capable of
providing feedback and encouragement to the user simulating the function of a personal trainer. The district court had ruled on the indefiniteness issue in the
context of claim construction. Specifically, the district court found that, in light of Nautilus, the claim terms—“in-band,” “out-of-band” and “relationship”—are
ambiguous and incapable of construction; therefore, the district court held that the claims of the patent-in-suit were invalid for indefiniteness.
Nautilus, Inc. v. Biosig Instruments, Inc. decision and therefore invalid. The patent-in-suit generally disclosed an exercise and health system that is capable of
providing feedback and encouragement to the user simulating the function of a personal trainer. The district court had ruled on the indefiniteness issue in the
context of claim construction. Specifically, the district court found that, in light of Nautilus, the claim terms—“in-band,” “out-of-band” and “relationship”—are
ambiguous and incapable of construction; therefore, the district court held that the claims of the patent-in-suit were invalid for indefiniteness.