Sony Prevails in Two IPRs Invalidating Claims of Imation Patents
On December 27, 2016 and January 3, 2017, Lerner David obtained decisions from the Patent Trial and Appeal Board (“PTAB”) finding unpatentable all challenged claims of U.S. Patent Nos. 6,908,038 and 6,890,188. Imation filed a lawsuit in 2014 against Sony Electronics Inc. for patent infringement of the ‘038 and ‘188 patents in the District of Minnesota (Imation Corp. v. Sony Electronics Inc., C.A. No. 14 628 (D. Minn.) (MJD/SER)). The patents were alleged to cover flash drives having multiple connectors. Imation particularly alleged that Sony’s MicroVault Smartphone USB Flash Drive infringed claims of both patents. Lerner David filed two petitions on behalf of Sony Corporation seeking Inter Partes Review of various claims of the ‘038 and ‘188 patents, and obtained a stay of the district court proceedings. The PTAB’s final written decisions found that Sony proved that all challenged claims of the ‘038 patent were invalid as anticipated by a prior art patent, and that all challenged claims of the ‘188 patent were invalid as both anticipated and obvious over the prior art. The decision for the ‘188 patent followed an unsuccessful attempt by another petitioner to challenge Imation’s patent claims based on the same prior art. Based on the more complete record developed by Lerner David in the present IPRs, however, the PTAB determined that Sony met its burden of proving that all challenged claims were invalid. The PTAB cases are Sony Corp. v. Imation Corp., Case No. IPR2015-1556, Paper No. 19 (Dec. 27, 2016) and Sony Corp. v. Imation Corp., Case No. IPR2015-1557, Paper No. 17 (Jan. 3, 2017).
Federal Circuit Affirms Judgment of Noninfringement in Favor of Buffalo
On December 28, 2016, Lerner David obtained an affirmance from the United States Court of Appeals for the Federal Circuit of a final judgment of non-infringement of U.S. Patent No. 4,977,577 on behalf of its client Buffalo Americas, Inc. Buffalo was sued by Northpeak Wireless, LLC in October 2008 for infringement of the ‘577 Patent and related U.S. Patent No. 5,987,058. Northpeak contended that Buffalo’s 802.11(b)-compliant “Wi-Fi” products infringed Northpeak’s patents directed to spread-spectrum wireless communication devices. After successfully transferring the case from Alabama to the Northern District of California, Buffalo and the other defendants then instituted ex parte reexamination against both patents, and stayed the litigation pending reexamination, during which the challenged claims of the ‘058 Patent were invalidated. The claims of the ‘577 Patent survived reexamination, but were significantly narrowed in light of a prior art reference that Lerner David attorneys originally identified and advanced as a basis for invalidity. This facilitated a favorable claim construction ruling, which was the basis for the district court’s judgment of non-infringement. The Federal Circuit affirmed the district court’s construction of a dispositive claim term in light of, inter alia, the arguments Northpeak had made during reexamination to avoid the prior art. The case is Northpeak Wireless, LLC v. 3Com Corp. et al., Appeal Nos. 2016-1477, 2016-1481 (Fed. Cir.).
Lerner David Succeeds In Defeating 101/Alice Motion
Lerner David defeated an “Alice” motion to dismiss a patent infringement claim filed by Lowe’s Companies, Inc in Iron Gate Security, Inc. v. Lowe’s Companies, Inc., 15-cv-8814-KBF, S.D.N.Y. Lowe’s contended that a patent for indexing multimedia data such as video, which was asserted by Iron Gate Security, Inc. against Lowe’s Iris surveillance system, was an unpatentable abstract idea under 35 U.S.C. § 101 and Alice Corp. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). On August 3, 2016, Judge Katherine B. Forrest of the Southern District of New York issued an opinion in which where she agreed with Iron Gate and denied Lowe’s motion, holding that the patent was not directed to an abstract concept (thereby passing step one of Alice), and also contained an inventive concept that transformed the claims into a patent-eligible invention (thereby passing step two of Alice).
Lerner David Succeeds In Instituting IPRs On Behalf Of Sony
On December 25, 2015 and January 4, 2016, Lerner David received decisions from the Patent Trial and Appeal Board instituting Inter Partes Review on behalf of Sony Corporation against two Imation patents. The patents, U.S. Patent Nos. 6,908,038 and 6,890,188, are directed to multi-connector portable memory cards. The Board found that Sony had made a showing that all challenged claims of the patents were either anticipated or obvious in light of the prior art. The Board’s institution of IPRs follows Lerner David success in obtaining a stay of related district court proceedings involving the same patents. Imation sued Sony in the District of Minnesota in 2014, alleging that Sony’s MicroVault Smartphone USB Flash Drive infringed both the ‘038 and ‘188 Patents. Following initial contentions, early discovery and the filing of the two IPR petitions, the case was stayed, allowing invalidity issues at the heart of the case to be litigated in the PTAB, with its favorable burden of proof and claim construction standards. The PTAB cases are Sony Corp. v. Imation Corp., Case No. IPR2015-1556, Paper No. 8 (Dec. 29, 2015) and Sony Corp. v. Imation Corp., Case No. IPR2015-1557, Paper No. 7 (Jan. 4, 2016).
Lerner David Obtains Judgment Of Noninfringement For Buffalo
On December 16, 2015, Lerner David obtained a final judgment of non-infringement of U.S. Patent No. 4,977,577 on behalf of its client Buffalo Americas, Inc. The decision concluded litigation in the United States District Court for the Northern District of California and the Patent Office. Northpeak Wireless originally sued Buffalo for infringement of the ‘577 Patent and related U.S. Patent No. 5,987,058 in October 2008, contending that Buffalo’s 802.11(b)-compliant “Wi-Fi” products infringed Northpeak’s patents directed to spread-spectrum wireless communication devices. Buffalo and other defendants successfully transferred the case from Alabama to the Northern District of California. The defendants then instituted ex parte reexamination against both patents, and stayed the litigation pending reexamination, during which the challenged claims of the ‘058 Patent were invalidated. The claims of the ‘577 Patent survived reexamination, but were significantly narrowed. This facilitated a favorable claim construction ruling, which was the basis of the judgment of non-infringement. The case is Northpeak Wireless, LLC v. 3Com Corp. et al., C.A. No. 09-602-SI (N.D. Cal.). Northpeak has filed an appeal in the Court of Appeals for the Federal Circuit.
Sony Wins Invalidity Determination Against Orinda
In 2008, four Sony entities were sued by Orinda Intellectual Properties USA Holding Group, Inc. (“Orinda”) in the United States District Court for the Eastern District of Texas (“EDTX”) alleging that various PlayStation products and VAIO laptops capable of playing Blu ray disks infringed claims of Orinda’s U.S. Patent No. 5,438,560. Sony initially succeeded on a motion to transfer the lawsuit from the EDTX to the Northern District of California (“NDCA”). Sony then filed a request for reexamination of all claims of the ‘560 Patent, and an Examiner at The United States Patent and Trademark Office (“PTO”) rejected all claims as invalid. The NDCA granted a motion filed by Sony to stay the lawsuit pending reexamination of Orinda’s patent. The PTO Examiner maintained that the only remaining claim was invalid. Orinda appealed the PTO’s invalidity determination to the Patent Trial and Appeal Board (“PTAB”). In 2013, the PTAB affirmed the Patent Examiner’s invalidity determination. Orinda then appealed the PTAB’s decision to the United States Court of Appeals for the Federal Circuit, which then affirmed the PTAB’s invalidity determination. The NDCA dismissed Orinda’s lawsuit with prejudice on August 13, 2015.
Sony Wins Knock-out Jury Verdict
Sony Corporation and four of its subsidiaries (Sony Computer Entertainment Inc., Sony Computer Entertainment America LLC, Sony Electronics Inc., and Sony Corporation of America) prevailed on all counts of non-infringement and invalidity in a jury trial in the United States District Court for the Northern District of California against Television Interactive Data Corporation ("TVI"). TVI had alleged that Sony's Blu ray players, DVD players, and PlayStation3 consoles infringed claims in four patents related to autoplay of optical discs (DVDs and Blu-ray discs). The asserted patents are U.S. Patent Nos. 5,597,307; 5,795,156; 6,249,863; and 6,418,532. After a three week jury trial, the nine member jury delivered a verdict finding that Sony did not infringe any claim and that all asserted claims were invalid as anticipated and obvious to one of ordinary skill in the art. TVI had requested damages of $84M plus enhanced damages for alleged willful infringement. The jury delivered a knock-out blow to all of TVI's allegations. As reported in the March 28, 2013 edition of IPLaw360 "We felt very strongly from the beginning that there was no infringement, and that the patents were invalid," said Sony's attorney Greg Gewirtz of Lerner David. During closing arguments, Mr. Gewirtz made clear that Sony fought the battle with TVI "because of true justice, true principle" as Sony created and implemented autoplay in optical disc players well before TVI's patents were filed. The lawsuit was first filed in 2009 when TVI sued about a dozen consumer electronics companies alleging that all DVD and Blu-ray players infringed its patents. Sony was the only remaining defendant in the case and was very pleased to confirm its beliefs that its products did not use TVI's technology and that all asserted patent claims were invalid.
Bell'O Int'l's Counterclaims of Inequitable Conduct Remain in Lawsuit Against Whalen Furniture Mfg, Inc.
Whalen Furniture Mfg, Inc. ("Whalen") filed a lawsuit against Bell'O Int'l Corp. ("Bell'O") alleging infringement of United States Patent Nos. 8,079,311 ("the '311 Patent") and 8,191,485 ("the '485 Patent") in December 2011. Bell'O has maintained that none of the patent claims are infringed, that all claims will be found invalid, and will be held unenforceable due to inequitable conduct committed by two of Whalen's executives, Ken Whalen and Paul Jones, who are the named inventors of the asserted patents. On November 29, 2012, Judge Marilyn L. Huff of the United States District Court for the Southern District of California issued an Order advancing Bell'O's case by denying Whalen's motion to dismiss Bell'O's inequitable conduct counterclaim and affirmative defense. The Order concluded: In sum, Bell'O has sufficiently plead enough facts to state a claim for inequitable conduct under Rule 9(b) and Exergen. Accordingly, the Court denies Whalen's motion to dismiss Bell'O's Third Counterclaim for failure to state a claim. The Court then applied the same reasoning to deny Whalen's motion to strike Bell'O's affirmative defense concerning inequitable conduct. In reaching its ruling, the Court explained: Bell'O alleges specifically that two name inventors knew of the withheld references. (Id. 21.) Although, the Court in Exergen reasoned that mere knowledge of a reference does not make it reasonable to infer that the person has actual knowledge of the information contained in the reference, Exergen, 575 F.3d at 1330, the situation here is different. Bell'O alleges that both men, in addition to being the named inventors, were senior executives of Whalen at the time of the prosecution of the patents-in-suit. (Doc. No. 44 32.) As both executives of Whalen and the named inventors of the patents-in-suit, Bell'O alleges that the two men had knowledge of the products being sold, were familiar with their ability to function in the three identified configurations and were familiar with the 3 in 1 configuration feature, and understood the materiality of such references to the patentability of the claims. (Id. 40.) Therefore, Bell'O alleges sufficient facts to argue an inference that the inventors had knowledge of the material information contained in the references. Bell'O's president, Marc Sculler, stated that he was pleased with the Court's finding and looks forward to a final decision establishing that Whalen's patents are not infringed, are invalid, and are unenforceable due to inequitable conduct. A copy of the Court's Order is available here.
Bell'O Int'l's Request For Reexamination Granted – All Asserted Claims Of Whalen Furniture Mfg.'s U.S. Patents Rejected By PTO
On November 9, 2012, the United States Patent and Trademark Office granted Bell'O International Corp.'s request for inter partes reexamination of U.S. Patent Nos. 8,079,311 ("the '311 Patent") and 8,191,485 ("the '485 Patent"), and also issued office actions rejecting all claims of the '311 and '485 patents at issue in the reexamination proceedings. The '311 and '485 Patents are the subjects of a patent suit filed by Whalen Furniture Mfg., Inc. against Bell'O International Corp. on December 21, 2011 in the United States District Court for the Southern District of California, civil action no. 3:11-cv-02988-H-DHB. The '311 and '485 Patents are related to television stands for flat panel televisions. In particular, Whalen has alleged that its '311 and '485 patents cover television console kits that permit flat panel televisions to be mounted in any one of three configurations (on the console, on a pole secured to the back of the console, and on a wall above the console). Marc Sculler, CEO, of Bell'O International, commented that "we are very pleased that the United States Patent and Trademark Office has adopted our arguments and has rejected all of Whalen's asserted '311 and '485 patent claims in the reexamination proceedings. Bell'O has not infringed any of Whalen's alleged patent rights and will continue to vigorously defend against Whalen's allegations of patent infringement. Bell'O will continue to pursue invalidity of the '311 and '485 patents via the PTO reexamination proceedings and in the lawsuit." Copies of the PTO's Orders granting Bell'O's reexamination requests and corresponding Office Actions can be accessed through the link below. Office Action '311 Patent Order Granting Reexam Request '311 Patent Official Action '485 Patent Order Granting Reexam Request '485 Patent.
Sony's Motion to Strike VoxPath's Infringement Contentions Granted In-Part
On November 15, 2012, Judge Cavanaugh of the United States District Court for the District of New Jersey issued a decision and order granting in-part a motion filed by Sony and codefendants to strike infringement contentions served by plaintiff, VoxPath RS, LLC, in civil action no. 2:12 cv 00952-DMC-JAD. Pursuant to the order, VoxPath's infringement allegations against hundreds of accused products were stricken, and Voxpath will not have the opportunity to amend its infringement contentions. The lawsuit involves VoxPath's allegations that optical disc players infringe claims of U.S. Patent Nos. 5,450,378 and 6,304,530. In granting Sony's motion, the Court confirmed that the local patent rules "require a chart mapping out where each infringing product (identified by model number) contains each element of the claim it infringes." VoxPath was thus required to provide as specific an identification as possible of the accused products, which allegedly infringe VoxPath's patents. The Court recognized that VoxPath accused hundreds of models of optical disc players (DVD players, Blu-ray player, and Sony's Playstation3 console), but only provided infringement contention charts for a small portion of the accused products. The Court agreed with Sony that this approach was unacceptable. In some cases, it was found that VoxPath did not include charts for entire product classes, including all DVD players, most Blu-ray players, and various PlayStation3 consoles. The Court specifically held that: Not only does VoxPath concede that hundreds of infringement charts for accused products are lacking, but it fails to make any argument to support the similarities between the charted products and the other accused products for which a chart has not been submitted. VoxPath is not permitted to take a broad stroke approach by alleging infringement against hundreds of products without providing specific evidence of elements that allegedly infringe. The Court agreed that VoxPath was on notice of the rules, had sufficient time to comply, and had enough information to file proper infringement contentions and charts. Thus, the Court granted Sony's motion filed on behalf of all defendants to strike the claims regarding the uncharted products without leave to amend. Copies of the Court's opinion can be accessed through the link below. Opinion Granting In-Part Sony's Motion to Strike Infringement Contentions Order Correcting Opinion to Strike Infringement Contentions.
Sony Prevails In Motion To Transfer VoxPath Case Out of The Eastern District Court Of Texas
Sony Corporation and several of its subsidiaries were sued in the Eastern District of Texas, with the complaint alleging that Sony’s Blu-ray players, DVD players and PlayStation3 consoles infringed claims of two patents owned by a non-practicing entity, VoxPath RS, LLC. Numerous other consumer electronic companies were named as codefendants with Sony in the case. We led Sony and the joint defense group in their motion to transfer the lawsuit from the Eastern District of Texas to the District of New Jersey by providing evidence to establish that the balance of private and public interest factors clearly supported Sony's position. Judge Gilstrap of the Eastern District of Texas issued his Order on January 23, 2012, concluding that the District of New Jersey was clearly more convenient than the Eastern District of Texas in the case, such that Sony's motion to transfer venue was granted. Click here to obtain a copy of the transfer Order.
Sony Continues to Prevail in Patent Dispute against Orinda
In September 2009, we helped Sony win a transfer of a patent infringement lawsuit from the Eastern District of Texas to the Northern District of California. The lawsuit alleges that various of Sony's VAIO pc and PlayStation products capable of playing Blu-ray Discs infringed claims of a patent owned by a patent holding company, Orinda Intellectual Properties USA Holding Group, Inc. On August 11, 2010, the District Court for the Northern District of California granted Sony's motion to stay the lawsuit pending reexamination of Orinda's asserted patent. Sony explained in its motion that the asserted patent is believed to be invalid as indicated in the PTO's grant in April 2010 of Sony's reexamination request, which identified various substantial new questions of patentability based on the prior art. The Northern District of California's opinion and order held that Sony proved that a stay of the proceeding was warranted because: (1) the lawsuit was at an early procedural stage; (2) reexamination is likely to simplify or moot the lawsuit; and (3) Orinda was not likely to be unduly prejudiced by the stay. Click here if you would like to obtain a copy of the transfer order.
Sony Succeeds Again in Transfering Lawsuit out of Eastern District of Texas
Sony Electronics Inc. was sued in the Eastern District of Texas along with seven codefendants alleging that its various USB flash drive products infringed claims of a patent owned by a patent holding company, Ennova Direct, Inc. We lead a joint defense team to help Sony (and all other defendants) obtain an order transfering the lawsuit from the Eastern District of Texas to the Northern District of California. The Court held on March 31, 2010 that the balance of various private and public interest factors clearly supported Sony's position. The Court thus ruled that the evidence presented by Sony established that the Northern District of California was a more convenient forum for the patent dispute than the Eastern District of Texas selected by the plaintiff. Click on the following link if you would like to obtain a copy of the transfer order.
Sony Succeeds in Transfering Lawsuit out of Eastern District of Texas
Four Sony entities were sued in the Eastern District of Texas (EDTX) alleging that various VAIO and PlayStation products capable of playing Blu-ray Discs infringed claims of a patent owned by a patent holding company, Orinda Intellectual Properties USA Holding Group, Inc. On behalf of Sony we obtained a rare win on a motion to transfer the lawsuit from the EDTX to the Northern District of California (NDCA) by submitting evidence establishing that the balance of various private and public factors clearly supported Sony's position. The EDTX court issued its order on September 29, 2009 explaining why Federal Circuit and Fifth Circuit law and the evidence presented by Sony established that the NDCA was clearly a more convenient forum for the patent dispute than the EDTX selected by the plaintiff. Click on the following link if you would like to obtain a copy of the transfer order. About Lerner, David, Littenberg, Krumholz & Mentlik, LLP Since its founding in 1969, Lerner David has been devoted exclusively to intellectual property law. The firm has earned a solid reputation for active and effective client representation in the Patent and Trademark Office, in the courts and at the bargaining table — but our role as “counselors” remains paramount. By providing sound, practical advice, Lerner David’s 55+ attorneys help clients make informed, intelligent choices about the benefits and risks associated with intellectual property.
Sony Wins Successful Settlement of Blu-ray Patent Dispute
SONY DADC U.S. INC. v. TARGET TECHNOLOGY, LLC ET AL. , SA CV 04-1083 (DOC), CDCA. Sony successfully intervened in a lawsuit in April 2007 that was pending in the Central District of California between Target Technologies, LLC and Williams Advanced Materials, Inc. and others. Target had asserted that it owned a large family of patents covering optical discs, such as Sony's Blu-ray DVDs. We asserted that Sony was the actual owner of the patents and succeeded in obtaining a favorable settlement for Sony in late 2008.
Lerner David Leads Sony to Successful Settlement in Historically Significant Patent Litigation
New Jersey-based intellectual property law firm Lerner, David, Littenberg, Krumholz & Mentlik, LLP recently concluded simultaneous litigation involving a total of 58 patents against the Eastman Kodak Company. Representing Sony Corporation, various Sony subsidiaries and Sony Ericsson Mobile Communications, Lerner David secured a successful settlement after several years of extensive negotiation and litigation, including a Markman hearing involving 27 patents. The patents covered digital cameras and other technology used in scanners, printers, software and film cameras. All told, these simultaneous litigations may collectively constitute the largest patent litigation ever brought in the United States or elsewhere.