Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about:
After IPR victory, Intel wins appeal on $2.2 billion patent award
Bloomberg Law reports on the U.S. Court of Appeals for the Federal Circuit wiping out “one of the largest patent verdicts in U.S. history”: $2.2 billion awarded against Intel Corp. in an infringement suit regarding two patents related to semiconductor chip technology owned by VLSI Technology LLC.
The court found that Intel infringed on VLSI’s Patent No. 7,523,373 but vacated the $1.5 billion damage award and remanded a new trial in the Western District of Texas for damages calculation. The court also reversed the finding of infringement on Patent No. 7,725,759, wiping out $700 million in damages.
What makes this case more interesting is that the ’373 patent was canceled in June by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, which ruled all 16 claims were obvious. VLSI has appealed the cancellation, so the damages retrial still holds merit if the PTAB decision is reversed and the patent remains enforceable. As of now, it will be a race to final judgment to see what decision stands—the PTAB’s invalidation or the damages retrial. Given the time associated with scheduling a trial and then the time it will take to appeal that damages retrial, the IPR appeal will have a significant head start that will be difficult to overcome.
Intel initially challenged the patents at the PTAB after the lawsuit was filed, but according to the Bloomberg article, the PTAB initially declined to hear Intel’s arguments, deferring to the District Court judge.
The PTAB eventually did institute IPR, but, as Bloomberg reporter Michael Shapiro writes: “Those cases were launched in response to copycat versions of Intel’s initial IPR petitions, filed by little-known limited liability corporations, OpenSky and Patent Quality Assurance. Their patent cases, though taken over by Intel, have drawn criticisms from patent owner groups and VLSI, relating to the murky origins of the two companies. Both LLCs have been threatened with sanctions by PTO Director Kathi Vidal.”
The Federal Circuit decision was also interesting because it focused on the doctrine of equivalents, according to University of Missouri law professor Dennis Crouch. The doctrine of equivalents is rarely used, especially when presenting your case to the jury, so this opens up many strategic considerations for patent litigators. You can read Dennis Crouch’s complete analysis on PatentlyO.
Meta earns PTAB victory on virtual reality patents
In a PTAB victory, Meta secured institution of five IPRs of patents held by Immersion Corp. that were asserted in a second infringement lawsuit filed in the U.S. District Court for the Western District of Texas. The lawsuit claims Meta infringed on Immersion’s technology with its Quest 3 virtual reality headset that uses similar haptic feedback technology.
Pushback on proposed IPR changes
Two editorials were recently published calling for the current IPR rules under the 2011 America Invents Act to remain, despite lobbying efforts by non-practicing entities and large patent holders (also known as “patent trolls”) for changes proposed by the USPTO that would limit “serial challenges,” among other changes that would make IPR institution more challenging.
As Peter Hoekstra, a former Congressman from Michigan and a distinguished senior fellow at Gatestone Institute, wrote in the Detroit Free Press: “One-and-done style patent review would create a harmful imbalance in which patent trolls would be able to file serial lawsuits, but their targets would only get one chance to defend themselves through patent office review.”
Joe Mullin of the Electronic Frontier Foundation argues that “IPR does no harm to legitimate patent holders,” pointing out that in fiscal year 2023, 392 patents were partially invalidated, and 133 fully invalidated out of more than 3.8 million “live” patents, according to USPTO data. “Patent examiners have less than 20 hours, on average, to go through the entire review process for a particular patent application. … It only makes sense to have some type of post-grant review system to challenge the worst patents at the patent office. … Despite this, patent trolls and other large, aggressive patent holders are determined to roll back the IPR process.”
Other recent IPR headlines:
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