Skilled in the Art

Everything IP

Scott Graham

Feb 09, 2018

Welcome to another swinging patent pendulum edition of Skilled in the Art. I'm IP reporter Scott Graham and I've got news of the first potential blockbuster patent decision of 2018, even as I digest the 2017 Patent Year in Review as told by Lex Machina.

As always, email me tips on anything IP and find me on Twitter @scottkgraham.


It's 2 a.m. and Alice Is Going Home

Well, the Federal Circuit has just thrown a big wet blanket over the Section 101 party that accused infringers have been having the last three years.

With the appellate court's blessing, many district judges have been applying the Supreme Court's Alice decision at the pleadings stage. That's allowed hundreds if not thousands of companies to short-circuit patent infringement suits without the expense of discovery and claim construction, to say nothing of trial.

Just a second, a Federal Circuit panel led by Judge Kimberly Moore said Thursday. "Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination," she wrote. And sometimes, fact issues require trials to resolve.

Well duh! But that's not the shared reality judges and litigants have been indulging since late 2014. Now any patent owner with an expert declaration might be able to get past the pleadings stage, was the reaction in segments of the patent bar on Thursday.

On his Patently-O blog, University of Missouri law professor Dennis Crouch wrote that Moore's decision "is in substantial tension with prior treatment of eligibility analysis" and the "court needs an en banc powwow to clarify the issues here."

My thinking on all this: If Berkheimer v. HP becomes the prevailing view of the Federal Circuit, and the Supreme Court surprises (almost) everyone and rules for patent owners in Oil States, why it'll be 2011 again before you know it.


New Digs for Joe Mullin; Another Kill for Unified

Long before I knew Section 101 from Highway 101, Joe Mullin was ALM's resident IP expert. Joe just joined the Electronic Frontier Foundation from Ars Technica, arriving with a snappy take on an IPR judgment in a wearable technology case.

Sportbrain Holdings had asserted U.S. Patent 7,454,002 in some 148 district court cases, 17 of which were still pending at the time of the PTAB's Feb. 6 final written decision, according to petitioner Unified Patents. Led by chief IP counsel Jonathan Stroud and counsel from Wilmer Cutler Pickering Hale and Dorr, Unified persuaded the PTAB that all 16 claims of the '002 were obvious in light of various combinations of prior art.


Documenting the Patent Case Diaspora

Lex Machina is out with its annual patent litigation year in review. The company's associate general counsel, Brian Howard, presented highlights earlier this week along with Paul Hastings partner Yar Chaikovsky.

Here's Lex Machina's chart of the judges handling the most patent cases last year. (Apologies for making you squint, if you're reading on mobile.)

A couple of things stood out to me, and Lex Machina has been kind enough to forward the data sets. The first is that U.S. District Judge Rodney Gilstrap of the Eastern District of Texas still leads the league with 550 patent filings in 2017—but that was half of his total from 2016, pre-TC Heartland.

One judge you don't expect to see in the top 15: U.S. District Judge Joseph Bataillon of Nebraska, who had the ninth most patent filings with 40. He's one of the judges who's pitched in to take some of the overflow from Delaware, which has seen a big uptick in filings since the Supreme Court's TC Heartland decision.

Howard said he expects "a lot of probing and prying of different districts" as patent owners adjust to life after TC Heartland.

Also eye-opening was the list of most frequently sued defendants in 2017. That crown usually goes to Apple or Samsung, but this year Teva Pharmaceuticals USA topped the list. In fact, pharmas took eight of the top 15 positions as courts saw an uptick in ANDA litigation. "That's a pretty big departure" from years past, Howard said.

Here's the list:
1. Teva Pharmaceuticals (49 cases)
2. Apple (42)
3. Samsung Electronics (37)
4. LG Electronics (30)
5. Mylan Pharmaceuticals (28)
6. / ZTE Corp. (25)
8. Aurobindo Pharma (24)
9. Huawei (23)
10. Sandoz (22)
11. Microsoft (21)
12. Apotex / HTC (19)
14. Amneal Pharmaceuticals / Lupin / Par Pharmaceutical / Zydus Pharmaceuticals (18)


Who Got the Work

I'm trying out a new feature today that offers intel on who's getting hired in IP matters. Let me know what you think and email me with your new engagements.

Lawyers in the D.C. and L.A. offices of Holland & Knight are facing off against a Duane Morris team in a trademark fight between BD Hotels and Podshare Inc.

➤ The dispute: BD Hotels, a New York-based hotel company, registered ‘The Pod Hotel’ mark as part of its push into micro-hotels. The company sued Podshare Inc., the operator of four Los Angeles accommodations, in December claiming it’s deliberately copying aspects of BD’s intellectual property to freeload on its reputation. The case is pending before Judge Percy Anderson of the Central District of California.

➤ The lawyers: BD is represented by Holland & Knight partner Thomas Brooke and associate David Haller in Washington D.C. and associate John Canale in Los Angeles. Podshare is represented by Duane Morris partners Mark Steiner and Paul Rosenlund, both in San Francisco.


Ropes, Skadden Boast New Hires

A couple of big lateral moves to report this week in the IP world.

Pharmaceutical litigator Filko Prugo has joined Ropes & Gray from O'Melveny & Myers.

“Filko’s significant ANDA litigation experience, winning litigation record and deep understanding of both chemistry and biotechnology will benefit our life sciences clients immediately,” said Andrew Thomases, head of Ropes & Gray’s IP litigation practice, in a written statement. “We are excited to welcome him to the firm.”

And my ALM colleague Xiumei Dong reports that Skadden, Arps, Slate, Meagher & Flom has brought aboard John "Jay" Neukom, the chair of Quinn Emanuel Urquhart & Sullivan's trade secrets group. Skadden had briefly been without an IP litigator in its 75-lawyer Silicon Valley office since Jim Elaqua retired in December.

“This is an exciting opportunity to join a world-class firm with a dynamic litigation practice, and to help grow Skadden’s IP litigation team in Palo Alto,” Neukom said.


Driving Off Into the Sunset

Hard to believe it's less than a year since Waymo filed its patent and trade secrets complaint against Uber Technologies. Now, after what seemed like five years of litigation crammed into one, the case is over. The parties shocked the IP world by announcing a settlement on the fifth day of trial.

Haynes and Boone partner Russ Emerson is one of many disappointed IP lawyers who'd been following the case from afar. "I wanted to see who was going to win," he jokes.

Emerson's take from reading reports on the trial is that while Waymo had a juicy story to tell about the interactions between Uber CEO Travis Kalanick and former Waymo manager Anthony Levandowski, Waymo was having trouble "connecting the dots" to its trade secrets and how they were used. Plus, Waymo's damages case was going to be challenging after its expert got Dauberted. "It's hard to put on a damages case without a damages expert," he said.

Waymo is receiving $245 million of Uber equity based on a valuation of $72 billion. More recent valuations have been substantially lower, so the actual value could be south of $200 million. In any event, it's a lot of money, but far less than the $1 billion Waymo was said to be demanding in settlement talks or the $1.26 billion figure floated at trial.

In closing, I'll observe that it's disappointment for us, but it's vacation for the Quinn Emanuel, MoFo, Boies Schiller and Susman Godfrey attorneys who've been grinding away on this litigation. They deserve one!

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