On March 14, 2018, the PTAB denied a request for adverse judgment brought by petition Commvault Systems, Inc. with respect to certain claims of U.S. Patent 8,717,204, owned by Realtime Data LLC. CBM2017-00061, Paper 18. Commvault had filed a petition for Covered Business Method Review (“CBM”), challenging all thirty claims of the ‘204 patent. Prior to the institution decision, Realtime Data disclaimed twenty two of the thirty claims. Realtime Data then demonstrated in its Preliminary Response that CBM jurisdiction did not exist with respect to the remaining claims. The Board agreed, and on January 18, 2018 denied institution of the CBM in full. Nearly a month later, Commvault contacted the Board to request that it enter adverse judgment against Realtime on the basis of the statutory disclaimers, citing the Federal Circuit’s decision in Arthrex v. Smith & Nephew, 880 F.3d 1345, 1347 (Fed. Cir. 2018). Realtime responded by demonstrating that the request was both untimely and substantively without legal merit. Paper 17. The Board agreed that the timing of Commvault’s request, if granted, would unduly prejudice Realtime Data.

On March 13, 2018, the Patent Trial and Appeal Board (“PTAB”) issued a final written decision in Apple v. Realtime Data, IPR2016-01737, in which it fully granted Realtime Data’s motion to amend with respect to fifty-five substitute claims. The decision replaces 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. The decision represents a very rare full victory for a patent owner on a motion to amend in post-grant proceedings. Out of 2,766 trials completed through September 30, 2017, the PTAB had only granted four (4) motions to amend in full, and ten (10) in part, according to statistics published by the Patent Office. Noroozi PC represented Realtime Data in connection with the motion to amend, and was brought into the proceeding only weeks before the deadline for filing the motion.

On January 25, 2018, the Patent Trial and Appeal Board entered a decision fully denying institution of an inter partes review challenge brought by NetApp against Realtime Data’s U.S. Patent 7,161,506. The win represents the fourth complete denial of institution obtained by Noroozi PC for Realtime Data, and eliminates the last of six IPR petitions NetApp brought against Realtime’s patents. NetApp voluntarily withdrew two other petitions.

IPR2017-01660 Denial of Institution

In a precedential and detailed decision issued on January 25, 2018, the Federal Circuit affirmed all aspects of a judgment of infringement and not invalidity in favor of Noroozi PC’s client, Conversant Wireless Licensing S.a.r.l.

With respect to patent eligibility, the Federal Circuit held that the two patents in suit, which are directed to visionary improvements in graphical user interfaces for small screen computing devices, are subject matter eligible under 35 U.S.C. § 101—setting an important precedent for GUI patents and Section 101 law more generally.

The appellate court also held that the district court’s construction of a key limitation, “unlaunched state,” was not erroneous, and embraced arguments and evidence put forth by Noroozi PC demonstrating that LG’s alternative construction would exclude preferred embodiments from the scope of all claims, and would directly clash with the teachings of the specifications.

The court also agreed with Conversant and the district court that substantial evidence supported the jury’s infringement verdict with respect to the “reached directly” limitation, particularly in light of testimony from LG’s own infringement expert as well as its user manuals, which contradicted LG’s positions.

The Federal Circuit further concluded that the jury was entitled to reject LG’s anticipation theory in light of cross-examination testimony from LG’s expert, which supported a finding that the prior art did not in fact teach the “limited list” limitation of the claims.

Conversant was represented on appeal by Noroozi PC and Russ, August, and Kabat, and at trial by Hueston Hennigan. LG was represented on appeal by Sidley Austin, and at trial by Greenberg Traurig.

Conversant Response Brief

Federal Circuit Decision

 

On January 18, 2018, the Patent Trial and Appeal Board (PTAB) issued a decision fully refusing to institute a Covered Business Method (CBM) challenge brought by Commvault Systems against a data compression patent owned by Noroozi PC’s client, Realtime Data. CBM2017-00061, Paper 10. In a separate decision, the Board also partially refused to institute an inter partes review challenge brought by Commvault against the same patent—rejecting Commvault’s anticipation allegations, among other aspects. IPR2017-01710, Paper 11.

The latest wins continue Noroozi PC’s remarkable track record before the PTAB. To date, the firm has avoided institution in full in 76.5% of proceedings (13 of 17) in which it was retained at the preliminary stages, both through non-institution decisions and pre-institution settlements. By comparison, only 30% of petitions avoid institution on average (17% via non-institution and 13% via pre-institution settlement).

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.