On Thursday, February 23, 2017, the United States Court of Appeals for the Federal Circuit granted a mandamus petition filed by Google, and ordered a Texas federal court to transfer a patent infringement case to a federal court that covers Silicon Valley, as requested by Google. See In re: Google Inc. This extraordinary remedy was delivered in the form of a non-precedential opinion authored by Chief Judge Prost and joined by Judge Lourie. Despite the Federal Circuit’s designation of the decision as non-precedential, the Court should be prepared for the onslaught of mandamus petitions that will now be filed given that they have shown a willingness to step in and re-weigh transfer factors de novo.
This petition for writ of mandamus arose out of a patent infringement suit brought by Eolas Technologies, Inc. against Google and various other defendants involving U.S. Patent No. 9,195,507. On the day this lawsuit was filed against Google, Eolas also filed two related suits in the same district, accusing various Walmart and Amazon entities of infringement. The Walmart and Amazon entities, like Google, sought transfer to the Northern District of California under 28 U.S.C. § 1404(a) for convenience. Weighing the relevant transfer factors, the district court concluded that the Northern District of California was not clearly a more convenient forum than the Eastern District of Texas.
Sony Corporation recently filed a patent infringement lawsuit in U.S. District Court for the Southern District of Florida against Japanese photography and imaging company Fujifilm. At the center of Sony’s legal action are magnetic tape products marketed by Fujifilm which allegedly practice technology copied from Sony without a license.
In the official complaint filed by Sony, the company asserts a series of four patents, which it alleges Fujifilm infringed through the sale of the company’s Linear Tape-Open (LTO) format magnetic tapes, specifically generation four, five and six LTO tapes (LTO-4, LTO-5, LTO-6).
Several months ago, respiratory health device developer ResMed Inc. filed multiple legal actions against Fisher & Paykel Healthcare. ResMed is alleging that multiple Fisher & Paykel products infringe upon its patents. ResMed filed actions with the U.S. International Trade Commission(ITC) and the U.S. District Court for the Southern District of California (S.D. Cal.), as well as courts in Germany and New Zealand.
ResMed argues that Fisher & Paykel is infringing upon patents it holds related to modular mask systems, headgear design, and cushion design for masks for sleep apnea patients. ResMed attempted to assert its rights on four particular patents in its portfolio.
In July 2010, MONKEYmedia filed a lawsuit for patent infringement in the U.S. District Court for the Western District of Texas (W.D. Tex.). The initial suit targeted American consumer tech giant Apple Inc. (amongst others) and targeted Apple’s use of user interfaces for document summarizations, video players and RSS readers which are capable of displaying multiple versions of text and/or audiovisual content.
MONKEYmedia’s complaint included five patents-in-suit:
- U.S. Patent No. 6177938, titled Computer User Interface with Non-Salience Deemphasis. It claimed a computerized system including a computer with a means for selectively shrinking the display of a first segment of objects to emphasize a second segment.
- U.S. Patent No. 6219052, same title as above. It claims a similar computerized system including a means for transforming a displayed object into shrunken and non-shrunken segments.
- U.S. Patent No. 6335730, same title. It also claims a computerized system using a relativity controller to selectively shrink a segment of objects and a scroll bar which changes in response to relativity controller activity.
- U.S. Patent No. 6393158, titled Method and Storage Device for Expanding and Contracting Continuous Play Media Seamlessly. It discloses a method for playing stored content which includes providing links to expansion content as the stored content plays.
- U.S. Patent No. 7467218, same title as ‘158 patent. It protects a computer-readable medium storing instructions to display content, provide links to expansion content and determine when such a link has been selected.
Six years of litigation later, an order of dismissal was filed indicating that both parties had settled their respective claims for relief filed in the case. A joint stipulation of dismissal was filed stating that both parties had stipulated to the dismissal of all claims and counter-claims asserted against each other. This comes about a year after MONKEYmedia had settled similar patent infringement claims against Sony Corporation, developer of the Blu-ray digital content standard which takes advantage of seamless expansion technologies covered by MONKEYmedia’s patents.
The defendants subsequently filed a motion for summary judgment of non-infringement of the ‘158 patent, the final patent remaining in the suit after patent reexaminations at the U.S. Patent and Trademark Office. In the motion for summary judgment, the defendants argue four points supporting their claim of non-infringement. First, they note that bonus content is available for an entire movie, not just segments of that movie. Second, the defendants argue that there are no expansion links in the movie content as defined by the claims of the ‘158 patent. Third, there is no fixed link from an expansion content to a continuing segment, so if a viewer wants to stop a movie to watch bonus content, that viewer has to actively choose to resume the movie. Finally, there are no cues to the bonus content which appear during the course of the movie; viewers must actively open menus and seek the content for themselves. The motion also includes definitions of Blu-ray technology features and descriptions of user interactions with those features by an expert witness, Mark R. Johnson.
MONKEYmedia filed a response in opposition to the summary judgment filed by the defendants. The response argues that the defendants are seeking a decision on the case “based on little more than the Court’s claim construction ruling, and without any evidence of non-infringement.” MONKEYmedia notes that, while Johnson’s expert witness declaration was attached to the motion, the witness did not put forward an actual opinion regarding non-infringement so much as a collection of observations made while watching a series of discs. The defendants’ assertion that the “links” and “segments” in Blu-ray content aren’t covered by claims of the ‘158 patent is based on an attorney argument and not by a qualified expert.
The case continues, but without Apple or Sony; both have now settled.
On September 27th, 2013, the Federal Trade Commission (FTC) announced that it had voted to collect public comments and gather information on 25 companies known as patent assertion entities (PAEs). The study was intended to shed more light on the PAE business model and create a better understanding of how their patent litigation activities affect innovation and competition in the U.S. economy. As defined by the FTC, PAEs are companies that do not produce, manufacture or sell goods but rather acquire patents from third parties which the PAE monetizes through negotiating licenses or litigating against an alleged infringer.
On October 6th, 2016, the FTC released the long-awaited findings of this report, titled Patent Assertion Entity Activity: An FTC Study, which includes analysis of 22 PAE respondents and more than 2,500 affiliates and related entities, conducted between January 2009 and mid-September 2014. The report’s findings and recommendations for legislative and judicial reform were intended to “balance the needs of patent holders with the goal of reducing nuisance litigation,” according to a quote attributed to FTC Chairwoman Edith Ramirez in the FTC’s official press release. Specifically, the FTC had concerns about the ex post nature of PAE patent transactions, in which licenses or settlements occur after a target has already developed a technology for marketing.