For the third time in the past month, Noroozi PC has obtained a denial of institution as to all claims on all grounds for Realtime Data LLC. The latest decision pertains to an inter partes review petition brought by NetApp, Inc. against Realtime’s U.S. Patent 9,054,728. Applying the seven-factor test set forth in General Plastic v. Canon, the Board concluded that instituting NetApp’s petition “would be a significant waste of the Board’s resources,” and would create “significant prejudice to Patent Owner.” IPR2017-01354, Paper 16 at 13. In October 2017, the Board denied institution in full as to two other NetApp inter partes review petitions challenging Realtime’s U.S. Patents 7,415,530 and 9,116,908.
On October 31, 2017, the Patent Trial and Appeal Board upheld the validity of all claims of U.S. Patent 9,116,908, rejecting an inter partes review challenge brought by Petitioners Dell, HP, Oracle, Riverbed, Echostar, Teradata, Hughes Networks, and Veritas. The Board’s decision emphasized cross-examination admissions obtained by Kayvan Noroozi, noting that key aspects of the expert’s declaration could not be reconciled “with the plethora of his own testimony on cross-examination to the contrary.” IPR2016-01002, Paper 71 at 17. In a separate decision, the Board also fully denied institution of another inter partes review petition against the ‘908 patent brought by NetApp. IPR2017-01196, Paper 10. The ‘908 patent, which claims novel methods for accelerated data storage using lossless data compression, has been asserted in litigation against dozens of accused infringers.
In a piece published in Law360, I explore the arguments and merits at play in Oil States Energy v. Greene’s Energy, in which the Supreme Court will decide whether inter partes review is unconstitutional under the “public rights” exception to Article III. I predict the Court will uphold IPRs. The piece was one of the top 5 most read expert analysis articles on Law360 during the week it was published, and the most read such piece in the patent realm.
In a piece published in Investor’s Business Daily, I give a personal perspective on the iPhone, the drivers of its success, and why Apple’s battle with Qualcomm signals a troubling shift for the company and Apple’s costumers.
Richard Epstein and I have published an updated version of our article discussing the FRAND bargain, and why systematic misunderstandings and biases driving American courts’ application of FRAND presents notable dangers that extend far beyond the realm of licensing standard-essential patents. The article will be published in the Berkeley Technology Law Journal later this year.
I was honored to speak at an event hosted by the Hoover Institution at Stanford University, in conjunction with Global Competition Review, regarding the intersection of antitrust and IP law. My esteemed co-panelists, including Mark Lemley, provided a variety of insights as to the role that antitrust should play in setting IP policy. Despite our diverse perspectives, we all largely agreed that antitrust belongs at the periphery of IP law, and that antitrust concerns should only come into play where the patent holder seeks a greater advantage or monopoly than a patent itself confers, e.g., where a branded pharmaceutical company and generic collude as part of a “pay for delay” arrangement. Antitrust should have little say, by contrast, with respect to the proper interpretation or application of FRAND commitments—an issue that is largely a private contractual dispute, and not a basis for government antitrust intervention.
On November 2, 2016, Judge Gilstrap issued an order enhancing damages against LG and entering final judgment for Noroozi PC’s client, Core Wireless Licensing S.a.r.l.
The Court’s decision emphasized LG’s detailed pre-suit knowledge of the patents-in-suit, as well as its licensing negotiation conduct, in which LG invited Core Wireless representatives to Korea only to state that LG found litigation “preferable” to a license.
The Court also noted testimony obtained during a deposition by Kayvan Noroozi, in which LG’s corporate representative admitted that “after thorough review of the patents-in-suit he concluded that the patents are novel and non-obvious.” Dkt. 47 at 2.
In conclusion, the Court found that LG’s conduct was “driven by its resistance to being the first in the industry to take a license, and not by the merits or strength of its non-infringement and invalidity defense.” Dkt. 47 at 3.
The decision appears to be the first damages enhancement in a standards-essential patent case. LG had previously sought to categorically preclude such an outcome through a motion for summary judgment, arguing that willful infringement is unavailable in cases involving standard-essential patents. The Court disagreed, acknowledging extensive evidence of willfulness presented in Core Wireless’s opposition briefing and refusing to adopt LG’s “bright line” proposition.
On September 16, 2016, a jury in the Eastern District of Texas found that LG has willfully infringed two telecommunications patents owned by Noroozi PC’s client, Core Wireless S.a.r.l., a division of Conversant Intellectual Property Management. The jury awarded a running royalty of 6 cents per unit.
The patents are directed to improving battery life and voice quality in mobile phones, and are part of a portfolio of more than 1,200 patents and applications formerly owned by Nokia.
Noroozi PC, along with co-counsel from Russ, August, and Kabat, entered the case on June 19, 2016, and significantly shifted the litigation landscape despite a mostly closed record.
Core Wireless will seek enhancement and ongoing royalties.
Coverage & Press Releases:
On August 4, 2015, the Federal Circuit issued its long-awaited opinion in Carnegie Mellon University v. Marvell Technology Group, Ltd., et al., deciding key issues in a multi-billion dollar patent litigation matter.
Most critical, however, was what the court did not decide: namely, whether Marvell (MRVL) can be held liable for the sale of billions of accused chips that were manufactured abroad and never entered the United States. Instead, the appellate court sent that issue back down to the district court for further development of the factual and legal record.
That outcome raises two questions: (1) whether the result of the remaining litigation will materially impact Marvell shares based on current valuations, and if so; (2) what litigation outcome should we expect, and why?
This analysis addresses the first question and concludes that Marvell shares are likely to move materially based on the pending litigation outcome. The second issue—whether Marvell will win or lose—will be the subject of a separate, forthcoming analysis.