On June 4, 2018, legal news site Law360.com published an analysis of the DOJ’s recent policy shift as to the application of antitrust scrutiny to owners of declared standard-essential patents subject to FRAND commitments.
The Law360 piece extensively quoted Kayvan Noroozi and Prof. Richard A. Epstein with respect to their law review article, Why Incentives for “Patent Holdout” Threaten to Dismantle FRAND, and Why It Matters.
The Epstein & Noroozi article created significant policy impact even prior to its publication in the Berkeley Technology Law Journal. In a prepared speech delivered in March 2018, Assistant Attorney General Makan Delrahim—head of the DOJ’s antitrust division—cited extensively to Epstein & Noroozi in announcing that U.S. policymakers and courts have given far too much attention to the unsubstantiated problem of “patent hold up” while giving far too little heed to the countervailing problem of “patent hold out.”
Among other points, Mr. Delrahim cited to Epstein & Noroozi for the observation that the longstanding hostility U.S. policymakers and courts have shown toward injunctions in the FRAND context has been misguided, and “can cause great harm to consumers.” See The “New Madison” Approach to Antitrust and Intellectual Property Law, at 15 & n. 54.
Speaking to Law360, commentators described the DOJ’s policy shift as “radical” and “abrupt”—a testament to the influence of a series of recent scholarship, including by Epstein and Noroozi, which has exposed the fundamental errors with the longstanding preference American courts and policy makers have given to implementers over innovators.
On May 25, 2018, the Patent Trial and Appeal Board (“PTAB”) issued a final written decision upholding all claims of Realtime Data’s U.S. Patent 9,054,728. The decision sided against Dell, EMC, HP, HP Enterprise, Teradata, and Veritas, each of which was represented by major law firms.
The Board’s decision emphasized that Petitioners’ combination theory was “undermined” by the cross-examination admissions of their expert, who testified against the theory at the heart of the Petition’s contentions, and who made clear he did not support the Petition’s core allegations. In light of the testimony Noroozi PC obtained from Petitioner’s expert, as well as the testimony offered by Patent Owner’s expert, the Board concluded that the Petition’s allegations did not prevail.
The decision upholds the patentability of thirteen claims of the ‘728 patent, which has been asserted by Realtime Data in fifty-one (51) cases.
On May 15, 2018, the Patent Trial and Appeal Board (“PTAB”) issued a final written decision upholding all challenged claims of Realtime Data’s U.S. Patent 7,415,530. The decision emphasized that Petitioners’ allegations could not be “reconcile[d]” with the cross-examination admissions of their expert witness.
The Board’s decision upheld the patentability of thirteen claims, including two that had previously been found invalid by a Texas jury.
In recognition of the outcome, Law.com once again featured Noroozi PC in its “Skilled In the Art” weekly IP briefing, noting: “Noroozi has pulled off another upset special.” The decision was also featured by Law360.
The petition was brought by numerous technology companies, including Dell, HP, Oracle, Riverbed, Teradata, Echostar, and Veritas, which were represented by seven major law firms.
In a unanimous decision issued on May 3, 2018, the full Federal Circuit denied LG’s request that the court reconsider, en banc, its precedential decision in Core Wireless v. LG, 800 F.3d 1356 (Fed. Cir. 2018). LG had argued that the decision was “entirely inconsistent” with the Supreme Court’s decision in Alice v. CLS Bank, and created a “sweeping exception” to that case. Core Wireless refuted that contention in its briefing to the en banc court. The Core Wireless decision has been widely cited in a matter of months, including by the Patent Office in a recent guidance to examiners as to Section 101 eligibility. The denial of en banc review upholds Core Wireless as significant precedent, and maintains the Federal Circuit’s affirmance of a judgment of patent infringement liability entered against LG with respect to two Core Wireless patents in the Eastern District of Texas. See 2:14-cv-911.
Kayvan Noroozi of Noroozi PC drafted Core Wireless’s briefing on appeal, both before the panel and the en banc court.
On April 10, 2018, the Patent Trial and Appeal Board (“PTAB”) issued a decision in which it fully denied institution of an inter partes review challenge filed by Commvault Systems, Inc. against U.S. Patent 9,054,728, belonging to Realtime Data LLC. The decision addressed the last of five Commvault IPRs filed against Realtime Data patents. In total, the Board denied institution in full as to four of the Commvault petitions (80% non-institution rate), and partially denied institution as to a fifth. The 80% non-institution rate Noroozi PC achieved against Commvault is particularly remarkable given that, on average, only 24% of IPRs in the relevant technology category are not instituted on the merits. The win represents the ninth complete non-institution Noroozi PC has achieved for Realtime Data.
On March 27, 2018, the Patent Trial and Appeal Board fully denied institution of an inter partes review challenge brought by Unified Patents against Noroozi PC’s client, Realtime Data. Citing numerous “deficiencies” in the Unified Patents petition, the Board found the petition inadequate to warrant further consideration. The patent at issue, U.S. Patent 8,717,204, is directed to accelerated transmission of data using data compression and decompression.
To date, Noroozi PC has fully avoided institution in 80% of PTAB trials (16 of 20) when retained at the outset. The firm’s non-institution rate is 2.5x higher than the average non-institution rate for PTAB challenges involving electrical/computer patents (32%), according to statistics published by the Patent Office.
The Assistant Attorney General of the United States for the Antitrust Division, Makan Delrahim, recently announced a significant policy shift in the DOJ’s view of potential antitrust concerns with respect to standard-essential patents and FRAND commitments. AAG Delrahim expressed concern that “courts and enforcers have overly indulged theories of patent hold-up as a supposed competition problem,” while noting that the models they have cited in support are in fact “devoid of economic or empirical evidence that hold-up is a real phenomenon, much less one that harms competition.” Throughout the speech, AAG Delrahim extensively cited and quoted to an unpublished law review article by Richard A. Epstein & Kayvan B. Noroozi, Why Incentives for ‘Patent Holdout’ Threaten To Dismantle FRAND, and Why it Matters, which has called on American courts and policymakers to reconsider the anti-patent policies of the past decade. 32 Berkeley Tech. L. J. (forthcoming 2018) (available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2913105).
In recognition of the firm’s recent victory against Apple, ALM has featured the firm in its “Skilled in the Art” IP briefing for the second time in two months.
On Monday, March 19, Noroozi PC obtained its fifth victory in five consecutive business days. The Patent Trial and Appeal Board issued a decision fully denying institution of an inter partes review challenge brought by Commvault Systems, Inc. against U.S. Patent 7,415,530, belonging to Realtime Data LLC. The Board found that Commvault’s petition “suffer[ed] from a fundamental deficiency” and did not present a reasonable likelihood of proving that the challenged claims were unpatentable.
On Friday, March 16, the firm also secured a complete victory as to a second motion to amend. In Apple v. Realtime Data, IPR2016-01738, the Board fully granted Realtime Data’s motion to amend with respect to fifty-six substitute claims, replacing each original claim the Board found unpatentable. The Board’s decision found that the amended claims were patentable despite ten obviousness combinations presented by Apple. Noroozi PC was not involved in the underlying inter partes review challenge, which resulted in findings of unpatentability as to the original claims.
The firm has now secured 33% of all motions to amend fully granted at the PTAB (2 of 6) in more than 2,800 completed AIA trials.
In the three prior business days, the firm secured three additional victories—defeating institution of another Commvault petition in full, defeating Commvault’s adverse judgment request, and obtaining fifty-five additional substitute claims in a related IPR proceeding between Realtime and Apple.
On March 15, 2018, the Patent Trial and Appeal Board fully denied institution of an inter partes review challenge brought by Commvault Systems, Inc. against U.S. Patent 9,116,908, belonging to Realtime Data LLC. The Board’s decision recognized numerous flaws in Commvault’s allegations, and noted that Commvault’s reasoning was driven by “improper hindsight.” The decision represents the second win Noroozi PC has achieved for Realtime Data before the PTAB as to the ‘908 patent. The patent was the subject of prior inter partes review challenges by Dell, HP, Oracle, Riverbed, Echostar, Teradata, Hughes Networks, and Veritas. Those proceedings ended in complete victory for Noroozi PC’s client.