The PTAB has released its September 2017 statistics.  These statistics mark the end of the USPTO's 2017 fiscal year (the USPTO’s fiscal year runs from October 1 to September 30 of each year).  A total of 1,901 IPR petitions were filed in FY2017, with the following break-down by technology area:

·         1,122 petitions (59%) were filed in the electrical/computer technology area,

·         417 petitions (22%) were filed in the mechanical and business method technology area,

·         221 petitions (11%) were filed in the bio/pharma technology area,

·         127 petitions (7%) were filed in the chemical technology area, and

·         14 petitions (1%) were filed for design patents.

The PTAB’s full statistical report can be found at (https://www.uspto.gov/sites/default/files/documents/Trial_Stats_2017-09-30.pdf).

Partner Eli A. Loots, Ph.D. quoted in, "Will Inter Partes Review Go Away? Supreme Court Weighs Fate," an article posted in Pink Sheet.

Excerpt: Biopharma and generic industries stand on opposing sides in case that could eliminate the patent challenge proceeding. Interactive timeline covers IPR's five-year history leading to oral arguments Nov. 27.

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Partner Eli A. Loots, Ph.D. quoted in, "How Comprehensive Do IPR Decisions Have To Be?" an article posted in Pink Sheet.

Excerpt: Supreme Court to consider whether Patent Trial and Appeal Board must address all patent claims challenged in an inter partes review petition. While it's not the headliner inter partes review case before the US Supreme Court, the outcome of SAS Institute v. Matal could impact the way patent challenge proceedings are handled by the patent office and what claims can be litigated in district court.

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Court Dismisses Complaint and Invalidates Widely Asserted Patents

Knobbe Martens, one of the leading intellectual property law firms in the United States, received an order from the U.S. District Court for the Central District of California in Strikeforce Technologies, Inc. v. SecureAuth Corporation granting SecureAuth’s motion to dismiss StrikeForce’s complaint and invalidating StrikeForce’s asserted patents under 35 U.S.C. § 101.

StrikeForce has asserted one or more of the patents against numerous defendants in Massachusetts, New Jersey, and Virginia, including Gemalto, Inc., Vasco Data Security International, Centrify Corp., Duo Security Inc., Trustwave Holdings, Inc., and Entrust, Inc.

StrikeForce initially asserted three patents against SecureAuth in the Eastern District of Virginia.  Knobbe Martens, on behalf of SecureAuth, convinced the Virginia court to transfer the action to the Central District of California, where SecureAuth’s headquarters is located. 

Knobbe Martens then filed an early motion to dismiss StrikeForce’s complaint on the grounds that the asserted patents were invalid under 35 U.S.C. § 101.  The court granted SecureAuth’s motion and invalidated all 43 asserted claims in StrikeForce’s three asserted patents. 

The court’s decision resolves the dispute at an early stage and is the first to invalidate StrikeForce’s patents, which have been asserted nationwide.  “We are pleased that Knobbe Martens and the SecureAuth team paved the path to invalidating these widely asserted patents,” said Jeff Kukowski, CEO of SecureAuth and Core Security.  “Resolution at an early stage enables us and our industry colleagues to focus on delivering value to our customers instead of on these types of claims.”

About SecureAuth:

SecureAuth and Core Security have merged to create a new category: Identity Security Automation. We bring together advanced network and endpoint threat discovery with a powerful identity and access security platform. Our industry-leading adaptive access control is a better approach to identity protection that minimizes attacker dwell time and organizational response. As one team, we protect over 1500 customers, 750 million devices and 50 million identities. It’s our mission to secure the enterprise across all principal threat vectors with an identity-based approach to the attack lifecycle. To learn more, contact SecureAuth at info@secureauth.com, visit www.secureauth.com, follow us on Twitter (@SecureAuth) and LinkedIn.

About Knobbe Martens:

Consistently ranked among the top intellectual property firms in the nation and worldwide, Knobbe Martens dedicates its practice to all aspects of intellectual property and technology law, including patents, trademarks, copyrights and trade secrets. Knobbe Martens handles intellectual property litigation nationwide, including litigation at the district courts, the appellate courts, the PTAB and the ITC. Knobbe Martens has over 275 attorneys and scientists, including over 125 attorneys dedicated to intellectual property litigation.  The firm has offices in Orange County, California, Los Angeles, New York, San Diego, San Francisco, Seattle, Silicon Valley and Washington, D.C., and enjoys an international reputation for excellence.  More information about the firm can be found at www.knobbe.com.

​Editor: Paul Stewart

Federal Circuit Summaries

Before Dyk, Moore, and Stoll.  Appeal from the Trademark Trial and Appeal Board.

Summary:  The bar in § 2(a) of the Lanham Act against registering immoral or scandalous trademarks is an unconstitutional restriction of free speech under the First Amendment.  This follows six months after the Supreme Court held in Matal v. Tam, 137 S. Ct. 1744 (2017), that the bar against registering disparaging trademarks also violates the First Amendment. 

Brunetti sought to register the mark “FUCT.”  The examiner refused the mark, finding it comprises immoral or scandalous matter under § 2(a) of the Lanham Act as the phonetic equivalent of “fucked.”  The Board affirmed.  Brunetti appealed to the Federal Circuit.    

The Federal Circuit held that § 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional content-based restriction of free speech.  The court rejected the government’s argument that § 2(a) is a reasonable exercise of government spending power as a government subsidy program.  Trademark registration does not implicate Congress’ power to spend funds because trademark registration fees are paid by trademark applicants (not taxpayers).  The court also rejected the government’s argument that trademark registration is a limited public forum.  The government did not articulate why listing registered marks in a database creates a limited public forum. If it did, then every government registration program (such as titles to land and registration of cars) could similarly implicate a limited public forum. 

The government also argued that trademarks are commercial speech subject to an intermediate level of scrutiny.  The court determined that the immoral or scandalous provision of § 2(a) regulates a mark’s expressive message, which is distinct from the commercial purpose of a mark as a source identifier, and is subject to strict scrutiny.  The government did not assert that the immoral or scandalous provision survives strict scrutiny.  In any event, the court held that the immoral or scandalous provision would not survive the intermediate scrutiny applied to commercial speech.   

In a separate opinion, Judge Dyk argued that § 2(a) could be construed to prohibit the registration only of obscene marks.  Because obscene material is not entitled to First Amendment protection, § 2(a), if narrowly construed in this manner, would survive First Amendment scrutiny.             

This case is: IN RE: ERIK BRUNETTI

Editor: John Sganga, Joe Cianfrani, and Boris Zelkind

Patent Judgments & Awards

On February 8, 2018, Judge Andrew Guilford of the District Court for Central District of California increased a jury award against Custom Blinds and Components Inc. (“CBC”) for patent infringement from just over $1 Million to $3 Million.  Judge Guilford also awarded $400,000 in attorneys’ fees and $166,299 in pre-judgment interest.  The jury trial concluded a three-year long litigation battle, which began when Genes Industry Inc. (“Genes”) sued CBC for patent infringement for CBC’s sales of a component of a window blind system called a cord tilter, which is used for opening and closing window blinds.  CBC’s gross revenue from its sales of the infringing cord tilter product was over $13 million and the net revenue was over $2.6 million.  In view of the jury’s finding that CBC’s infringement was willful and because CBC’s conduct during litigation evidenced disrespect for the patent system, the court granted Genes’ request to treble the $1 Million jury award to $3 Million. The court also found that an award of attorney’s fees was appropriate, but did not grant Genes’ full request of attorneys’ fees. The court limited its award of attorneys’ fees to $400,000 of the approximately $750,000 in fees requested.  CBC has appealed the decision to the Federal Circuit.   

Knobbe Martens, one of the leading intellectual property and technology law firms in the United States, achieved a victory at the U.S. Court of Appeals for the 11^th Circuit for Masimo Corp., a global medical technology company based in Irvine.

In 2013, the plaintiffs filed a class action lawsuit against Masimo, the University of Alabama Institutional Review Board, and several doctors who participated in a nationwide study on the possible effect of oxygen saturation levels on premature infants. The plaintiffs, who filed on behalf of their participant children, claimed that, even though all participants in the study were kept within the standard of care for oxygen saturation levels, the study “increased the risk” that participants might develop vision loss or reduced brain function. 

On March 30, 2018, the 11^th Circuit upheld the district court’s 2015 grant of summary judgment of no liability for all the defendants.

“Masimo’s technology has helped millions of people, and their willingness to support important clinical research is crucial to further improving the standard of care for patients,” said Managing Partner Steven Nataupsky. “We’re proud to have achieved this appellate victory for Masimo, so that they can continue to participate in clinical studies in the future. The Knobbe attorneys involved possess deep knowledge of Masimo’s products and technology and extensive litigation experience. Combining this knowledge and experience with seamless collaboration with Masimo for more than 20 years helped secure a total victory.”

The team of lawyers included Joe Re, Steve Jensen, Payson LeMeilleur, Joe Cianfrani and Cameron Jahansouz.

About Knobbe Martens

Consistently ranked among the top intellectual property firms in the nation and worldwide, Knobbe Martens has over 275 lawyers and scientists nationwide and dedicates its practice to all aspects of intellectual property and technology law, including litigation. Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages. The firm is headquartered in Orange County, California, with offices in Los Angeles, New York, San Diego, San Francisco, Seattle and Washington, D.C., and enjoys an international reputation for excellence. More information about the firm can be found at www.knobbe.com.

Knobbe Martens is pleased to announce that partners Salima Merani, Ph.D., Douglas Muehlhauser, Joseph Re, and John Sganga have been selected by the Daily Journal for inclusion in its annual ranking of the “Top IP Lawyers in California.” This year, only 75 IP attorneys statewide were selected for this prestigious honor.

Salima Merani, Ph.D. has over 18 years of experience building extensive global patent portfolios for medtech, biotech, and biopharma companies.  Salima’s in-depth experience, as well as her background in genetics and her doctorate in neuroscience, makes her highly sought after as a strategic advisor for both emerging-growth companies and investment firms in the healthcare field.  She has successfully conducted and defended patent due diligence for multiple US and international companies and venture capitalists, and has led IP deals valued at over $1 billion in just the last few years.

Douglas Muehlhauser’s practice focuses on patent litigation, including trials and appeals, particularly over subject matters involving computer hardware and software, computer networking, laboratory instrumentation and medical devices. Recently, he scored a comeback win in a precedential reversal at the U.S. Court of Appeals for the Federal Circuit in a case involving big players in the wireless audio industry for client One-E-Way.

Joseph Re is a nationally recognized trial attorney and appellate specialist, winning numerous high-stakes technology cases before juries and appellate courts throughout the United States. He serves as lead counsel for long-time client and patient monitoring leader, Masimo Corp., enforcing their extensive patient monitoring patent portfolio for the last 20 years, garnering verdicts and settlements worth billions of dollars.

John Sganga is a highly regarded and accomplished trial lawyer who has spent over three decades successfully and exclusively litigating IP and technology disputes. He represents clients from a wide variety of industries in all types of IP disputes, and has diverse experience litigating cases through bench and jury trials, appeals, arbitrations, ITC and PTAB proceedings. John has secured victories for both plaintiffs and defendants in high-stakes technology litigation cases of over $100 million.

The Daily Journal selects attorneys for the lists based on a number of criteria including hundreds of nominations and staff selections, along with consideration of each nominee’s major intellectual property successes over the last year.

About Knobbe Martens

Consistently ranked among the top intellectual property firms in the nation and worldwide, Knobbe Martens has over 275 lawyers and scientists nationwide and dedicates its practice to all aspects of intellectual property and technology law, including litigation. Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages. The firm is headquartered in Orange County, California, with offices in Los Angeles, New York, San Diego, San Francisco, Seattle and Washington, D.C., and enjoys an international reputation for excellence. More information about the firm can be found at www.knobbe.com.

Editors: John Sganga, Joe Cianfrani, Boris Zelkind

Patent Judgments & Awards

In April 2018, a jury in the Eastern District of Texas awarded VirnetX Inc. (“VirnetX”) a total of more than $500,000,000 in its patent infringement suit against Apple Inc. (“Apple”).  The four patents-in-suit were directed to secure communication links such as Virtual Private Networks (VPN) and Domain Name Services (DNS).  This decision is the result of eight years of litigation between VirnetX and Apple, which included multiple trials.  In the original case, Apple I, a jury found that the Virtual Private Network On Demand (“VOD”), which allows an Apple user to automatically connect to a VPN, and FaceTime, as used in various Apple products, infringed VirnetX’s patents.  

While the original jury verdict was on appeal, VirnetX filed a second case against Apple, alleging that the redesigned versions of VOD and FaceTime, used in Apple’s iPhone, iPod Touch, and iPad products, infringed VirnetX’s patents.  At the second trial, which consolidated the damages issue from the first case with the second case directed to the redesigned VOD and FaceTime, the jury awarded over $600 Million in damages, with approximately $290,000,000 attributed to the redesigned versions of VOD and FaceTime.  The royalty rate for the redesigned versions equaled approximately $1.20 per device.  At the conclusion of the second trial, Apple requested a new trial for just the products using the redesigned VOD and FaceTime; the court granted Apple’s request. 

At the new trial, which concluded in April, the jury again concluded that Apple’s redesigned VOD and FaceTime infringe VirnetX’s patents.  The parties fought over an appropriate royalty rate, pointing to VirnetX’s royalty bearing licenses with various companies including Aastra, Mitel, NEC, Siemens, Avaya, and Microsoft.  The jury awarded VirnetX $502,567,709.00, based on sales of over 400 million Apple devices.  However, the victory for VirnetX may be short lived, as the asserted claims were determined to be unpatentable in recent post-grant Patent Office proceedings.  The appeal of the Patent Office’s decision to invalidate the asserted patent claims is pending.

The 2018 edition of the IAM Patent 1000 guide recognized Knobbe Martens for its leading transactional, prosecution, and litigation practices.  The IAM Patent 1000 – the World’s Leading Patent Professional recognizes the top patent professionals around the globe.  The firm once again received a “highly recommended” rating for patent prosecution work in California and a “silver tier” ranking for litigation.

The publishers of Intellectual Asset Management (IAM) magazine noted that the “depth of the trial bench at Knobbe [Martens] is more impressive than people give firm credit for,” highlighting that Jon Gurka and John Sganga “can litigate any IP case and emerge victorious.” The publishers also noted that nationally recognized litigator, Joseph Re, is a top trial lawyer and a leading appellate advocate.  Interviewees commented that Knobbe Martens is a firm that “not only does fantastic work but can always find a natural fit for whatever technology [needs to be] patented.”  Other interviewees indicated that Knobbe Martens is a “big player on the block in California” and “an extraordinary firm [that] shines for its technical prowess and legal acumen, all while being very service-minded.”  The firm was particularly recognized in the guide for being “formidable in the medical device industry” and running “the largest specialized team in the country.”

In addition to the firm recognition, 23 partners were honored as “The World’s Leading Patent Practitioners 2018”:

Transactions

Adeel Akhtar, Maria Anderson, Michael Fuller, Salima Merani, Ph.D., Kimberly Miller, Ph.D., Mauricio Uribe, and Gerard von Hoffmann

Prosecution

Adeel Akhtar, Maria Anderson, Mark Benedict, Ph.D., John Carson, John King, Eli Loots, Ph.D., Joseph Mallon, Ph.D., Salima Merani, Ph.D., Kimberly Miller, Ph.D., Joseph Reisman, Ph.D., Ron Schoenbaum, Melanie Seelig, Mauricio Uribe, and Gerard von Hoffmann

Litigation

Brent Babcock, Jon Gurka, Irfan Lateef, Carol Pitzel Cruz, Joseph Re, John Sganga, Karen Vogel Weil, and Bill Zimmerman

The IAM Patent 1000 rankings are based on five months of research and more than 1,500 telephone interviews with attorneys and in-house counsel to gather market intelligence on the leading players in the field. The IAM Patent 1000 identifies the leading law firms in the market based on the depth of expertise, market presence and the level of work on which they are typically engaged. To view the full guide, visit IAM magazine at www.iam-media.com.

About Knobbe Martens

Consistently ranked among the top intellectual property firms in the nation and worldwide, Knobbe Martens has over 275 lawyers and scientists nationwide and dedicates its practice to all aspects of intellectual property and technology law, including litigation. Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages. The firm is headquartered in Orange County, California, with offices in Los Angeles, New York, San Diego, San Francisco, Seattle and Washington, D.C., and enjoys an international reputation for excellence. More information about the firm can be found at www.knobbe.com.