Feat-Litigation-Cases-5-June-2019

Featured Litigation Cases of the Week: June 5, 2019

MaxVal
Posted by MaxVal

In this post, we take a look at Uniloc, a non-practicing entity failing against Automatic Data Processing, Inc., (ADP), and BOE reaching settlement with Vista in the TFT panel war.

Uniloc, a Non-Practicing Entity Fails Against Automatic Data Processing, Inc., (ADP)

Uniloc Corporation, a prolifically litigious company is the legal patent holder of US 6,510,466, 6,324,578, 7,069,293 and 6,728,766 (Patents-in-Suit). As of 2019, Uniloc has filed more than 500 patent litigation cases against 70+ US companies in the technology of transmission of digital information. Over twenty (20) companies in the space, including Microsoft, IBM etc. agreed to settle their cases with them.

Uniloc purchased the Patents-in-Suit in 2016, and that same year, filed more than 80 patent infringement cases against almost 20 digital information companies. One of those companies was ADP, LLC (2:16-cv-00741). Uniloc asserted that ADP violated a subset of the claims of their licensed patents; further alleging that ADP were infringing the method of software distribution and management system.

On March 10, 2017, other defendants from five other cases (Salesforce.com, Box, Big Fish Games, Zendesk, and Blackboard ) filed a joint stipulation to consolidate their cases with Uniloc for the purpose of pretrial. The stipulation was granted and 2:16-cv-00741 (Uniloc USA, Inc. vs. ADP, LLC) was considered lead case, under which all further proceedings were filed.

Generally, patents are granted only for “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” under 35 U.S.C. § 101, whereas asserted claims in the patent in suit, claims a known, abstract and conventional technique for information management, merely redrafted for the computer arts. ADP filed a motion to dismiss Uniloc's complaint for failure to state a claim. ADP argued that under the Supreme Court's decision in (Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)), Uniloc's asserted claims (refer table below) were not patentable as a matter of law. On September 28, 2017 Judge Robert W. Schroeder agreed, and declared the asserted claims invalid and granted the motion to dismiss the case.

Patent number

Asserted claims

US 6,510,466

3–5, 8, 9, 13, 15–20, 22-24, 28–33, 35-37, 41 and 42

US 6,324,578

1–8, 10–39 and 41– 46

US 7,069,293

1, 12 and 17

US 6,728,766

5, 7, 9, 11, 13, 15 and 17

Unhappy with the decision, Uniloc filed an appeal (2018-1132) on November 01, 2017 in the Court of Appeals against the order entered by the District Court Judge. After a thorough examination, Chief Judge Linn and Circuit Judge Moore entered a judgment that the lower court’s ruling patents ’293 and ’578 should be reversed and remanded the case; but affirm the district court’s dismissal ruling with respect to the ’466 and ’766 patents. 

BOE Reaches a Settlement with Vista in the TFT Panel War

The introduction of Liquid Crystal Display (LCD) technology has made the flat panel, the market ruler for televisions, monitors and smartphones. In 2017, the sales of television all over the world exceeded 105 Billion US Dollars, with more than 95% of those sales tied to LCD-type TVs/Panels. In the first half of 2019, more than 150 patent litigation cases were filed in the United States District Courts upon this technology.

Vista Peak Ventures, LLC, a subsidiary of Dominion Harbor Enterprises, LLC, acquired more than 1,200 patents, formerly owned by NEC, in the domain of LCD technology. Vista’s patent collection covers all major LCD manufacturing classes. Early in 2018, the firm acquired four patents from NEC (US 7,593,070, 6,513,943, 7,006,065 and 6,657,619) and by the end of 2018 filed four lawsuits (2:18cv431, 2:18cv432, 2:18cv433 and 2:18cv434) against BOE Technology Group Co., Ltd (BOE) in Texas Eastern District Court.

BOE, founded in April 1993, is a professional manufacturer of LCD display and sensor devices. Vista’s complaint alleged that BOE’s method to manufacture TFT-LCD panel model no. HV320WHB-N86 and BOEI320WX1-01 used in Haier TV model no. 32G2000 and 32H3E were infringing their patents which claims integrating fundamental technologies of manufacturing thin-film transistor – liquid crystal display (TFT-LCD) panels. Vista also asserted that BOE was selling those panels outside of the United States, while knowing that were designed for sale in the United States.

On May 6, 2019, BOE reached a settlement with Vista and requested the Court to stay all four cases so that they can submit a joint stipulation of dismissal. On May 31, 2019, the District Judge Rodney Gilstrap ordered that the case had been voluntarily dismissed with prejudice under the Federal Rule of Civil Procedure 41(a)(1)(A)(ii).

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