PTAB Axes 2 Uniloc Patents, Trims Another In Tech Giant Row

Reported by Britain Eakin on Law360

The Patent Trial and Appeal Board determined on Tuesday that two Uniloc patents, which involve a method for tracking digital media presentations, were invalid. Specifically, the board ruled that the patents were an obvious combination of earlier patents and printed publications. In addition to eliminating two patents, the board also found twelve claims of another Uniloc patent to be obvious in light of prior art. Netflix, Microsoft, Sling TV, and Apple brought four separate challenges to the Uniloc patents after they were accused of infringement. Britain Eakin describes the lengthy and contentious legal battles between Uniloc and these tech giants.

Apple and Uniloc have been duking it out at the PTAB and in district court for several years, with some of those disputes sparking bitter venue challenges to move Uniloc’s suits against the iPhone maker out of the Western District of Texas. In November, the Federal Circuit sided with Apple, ordering one such case to be shipped to California.

U.S. Supreme Court rebuffs Merck appeal in hepatitis C patent fight with Gilead

Reported by Andrew Chung on Reuters

On Tuesday, the U.S. Supreme Court refused to take up Merck’s appeal concerning a patent dispute against Gilead over a hepatitis C treatment. In 2016, Merck won a $2.54 billion jury verdict against its rival Gilead Sciences in a patent infringement dispute regarding a hepatitis C treatment. However, the Federal Circuit in 2019 overturned the damages verdict when it determined that Merck’s patent was invalid. Specifically, the court concluded that Merck’s claims on the family of compounds were overly broad and therefore in violation of patent law. Merck appealed to the Supreme Court arguing that the Federal Circuit ruling undermines biotechnology breakthroughs.

A group of intellectual property scholars backed Merck in a written brief, telling the justices that the Federal Circuit ruling made it “unreasonably difficult for a pharmaceutical company that comes up with an innovative new class of drugs to protect that class against imitation. That result threatens innovation.”

Fed. Circ. Won’t Undo PTAB Rulings On Motorola Patents

Reported by Andrew Karpan on Law360  

The Federal Circuit issued three unanimous opinions, each written by the same three circuit judges, that upheld Motorola’s patents, which cover digital two-way radio technology. These three Motorola patents are currently at issue in an ongoing legal battle with Hytera Communications Corp. in Illinois federal court. One of the three Motorola patents involves a method of synchronizing radio time slots. Andrew Karpan explains the Federal Circuit’s decision after Hytera challenged the PTAB’s interpretation of a claim in favor of Motorola.

“While the term ‘alternate timeslot’ may be inelegant due to that term’s absence from the ‘991 patent, the plain language of the claim distinguishes between ‘a desired time slot’ versus ‘the other time slots,'” U.S. Circuit Judge Alan D. Lourie wrote for the panel in the ruling on that patent.

The language of the PTAB’s ruling in 2019 on Motorola’s patent could not be used to challenge the claims of the patent itself, the panel ruled.

According to Karpan, this is not the first time Motorola has received a favorable ruling against Hytera. Last February, in a case asserting trade secret claims, Motorola won a $764 million jury verdict, which U.S. District Judge Charles Norgle later reduced to $540 million.

Citing the COVID-19 pandemic, Judge Norgle in December rejected Motorola’s efforts to secure a global ban on Hytera’s products and ordered the companies to agree on a royalty rate.

“The potential scope, impact and difficulties a worldwide injunction could cause, particularly during an ongoing pandemic, pose a large potential problem,” Judge Norgle wrote.