Judge finds Allergan patents invalid in Eastern District of Texas and opines on sovereign immunity issue

Recently, in a 135-page opinion, Judge William C. Bryson (left), sitting by designation as a trial judge for the United States Federal District Court for the Eastern District of Texas, found that Allergan’s RESTASIS patents were infringed by Teva Pharmaceuticals USA, but that Teva had demonstrated invalidity of those RESTASIS patents by clear and convincing evidence.

“We are disappointed by the Federal District Court’s decision on the RESTASIS® patents. We are carefully reviewing the decision and are considering all options,” said Robert D. Bailey, Chief Legal Officer for Allergan. “Allergan remains committed to vigorously defending the intellectual property of our products, which allows us to continue to invest in developing and bringing forward new medicines for millions of patients.”

The patents include United States Patent Nos. 8,629,111; 8,648,048; 8,685,930 and 9,248,191. These patents, along with United States Patent Nos. 8,633,162 and 8,642,556, are listed in the Orange Book for RESTASIS® and expire on August 27, 2024.


Rovi sues Comcast for patent infringement of TV guide patents

On April 1, 2016, Rovi Corporation filed a patent infringement lawsuit against Comcast in the Eastern District of Texas, Marshall Division. In the complaint, which is quite detailed and very long (174 pages), Rovi is asking for a preliminary injunction, a finding that Comcast’s infringement is willful and deliberate, a finding that the case is exceptional and attorneys fees’ are appropriate, as well as damages for the infringement.

The lawsuit alleges that 12 years ago, Comcast took a license to Rovi’s patent portfolio, but that license expired on March 31, 2016, without being renewed. Rovi says that Comcast has failed to remove any of its products and services from the market and also continues to provide those products and services, all of which are now infringing because of the expiration of the patent license agreement.

“We disagree with Rovi’s accusations and intend to defend the cases vigorously,” said Jenni Moyer, Senior Director of Corporate Communications for Network & Operations at Comcast.  “Beyond that, we can’t comment on pending litigation.”


EDTX Closely Scrutinizes Nuisance Value Settlement Strategy

The following article discussing the increased scrutiny serial patent litigation against large numbers of defendants is receiving in the Eastern District of Texas comes courtesy of our friends at DLA PiperJohn Guaragna and Brian Erickson.

A trend is emerging in multi-defendant patent cases in the patent-heavy docket of the Eastern District of Texas – at least in the numerous cases assigned to Judge Leonard Davis in Tyler. Over the past several months, Judge Davis has repeatedly expressed concerns surrounding plaintiffs who assert questionable patents to extract “nuisance value” settlements. In a recent patent case brought by Raylon LLC, Judge Davis summarized his views:

[T]his Court has some concerns about plaintiffs who file cases with extremely weak infringement positions in order to settle for less than the cost of defense and have no intention of taking the case to trial. Such a practice is an abuse of the judicial system and threatens the integrity of and respect for the courts. Often in such cases, a plaintiff asserts an overly inflated damages model, seeking hundreds of millions of dollars, and settles for pennies on the dollar, which is far less than the cost of defense. Where it is clear that a case lacks any credible infringement theory and has been brought only to coerce a nuisance value settlement, Rule 11 sanctions are warranted. (more…)

Fractus Patents Hit with Nine More Reexamination Requests

Here is the latest  installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

In our post of November 22, 2010, we described Samsung’s strategy for defending against allegations that it and several other cell phone makers infringe nine antenna patents owned by Fractus – specifically by vigorously defending in the Eastern District of Texas and requesting reexamination at the PTO against all nine Fractus patents.  Now it appears that co-defendant Kyocera has filed its own set of reexamination requests against the “Fractus Nine” (Inter partes Nos. (5) to (11), (13) below).  Not all the details of the new requests are publically available because these new requests were paper-filed and because of certain procedural problems.  It is quite likely, however, that these requests will be granted and merged with Samsung’s earlier reexaminations.

Also of interest is a request filed by Abbott Diabetes Care Inc. against a DexCom patent for transcutaneous analyte sensors.  Abbott and DexCom spared in reexamination over that technology in the past, for instance regarding U.S. Patent Nos. 6,931, 327 and 7,276,029. (more…)

Federal Circuit Issues Writ of Mandamus to Transfer Patent Suit

Michael J. Sacksteder, Partner at Fenwick & West, sent along this alert he wrote with colleagues Ryan J.  Marton and Guinevere Jobson.

The Federal Circuit has taken away another tool used by patent plaintiffs to keep lawsuits in the Eastern District of Texas in spite of motions to transfer by defendants. “Non-practicing entities” (known as NPEs or sometimes by a more disparaging term) often attempt to make their lawsuits “stick” in the Eastern District by incorporating in Texas and/or by establishing a “headquarters” in that district. (One of the authors has considered performing an empirical study of how many NPEs list their address as 104 E. Houston Street in Marshall, Texas. 104 E. Houston Street is located next door to the Federal courthouse in Marshall). When considering venue transfer motions, Eastern District judges had previously declined to examine whether such tactics were motivated by litigation strategy or by other considerations. A recent Federal Circuit ruling changes that.

On November 8, 2010, the Federal Circuit in In re Microsoft Corp., No. 944 (Fed. Cir. Nov. 8, 2010) granted Microsoft’s petition for a writ of mandamus finding the District Court’s denial of Microsoft’s motion to transfer pursuant to 28 U.S.C. §1404(a). The Federal Circuit determined that the denial was a clear abuse of discretion and ordered the case to be transferred to the Western District of Washington as the more convenient forum. (more…)