Retail Patent Litigation

Illinois Patent Trial Attorney | R. David Donoghue

January 2013 Patent Report

By R. David Donoghue on Posted in Retail Litigation Report

The trolls started January with a bang.  Several trolls started their first cases or filed significant additional cases, including:  Express Card, EMG Technology, Diet Goal Innovations, and c4cast.  A few frequent fliers also remained busy:  Eclipse IP, GeoTag, and Lodsys.

As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in a particular case, how your Judge has historically handled a particular type of motion, or a particular plaintiff’s litigation history.

Finally, please let me know if you have thoughts about the report or changes you would like to see.  I am preparing it as a service for retailers and their supply chain who may want an overview of the patent litigation landscape.  So, I am very open to ways to improve the report for you.

Express Card Systems LLC v. Costco Wholesale Corporation, (E.D. Tex.) (multiple cases).

Judge:             District Judge Leonard Davis

Claim:             Infringement 

Defendants:

  • Costco Wholesale Corporation
  • CVS Caremark Corporation
  • Supervalu Inc.
  • Meijer Inc.
  • Rite Aid Corporation
  • Shutterfly, Inc.
  • Hewlett-Packard Company
  • Target Corporation
  • Vistaprint NV
  • Walgreen Co.
  • Wal-Mart Stores, Inc.

Plaintiff:         Express Card Systems LLC

Pls. Cnsl:        Innovalaw; and Tadlock Law Firm

Patents:           5,552,994 (System for printing social expression cards in response to electronically transmitted orders); and 5,748,484 (System for printing social expression cards in response to electronically transmitted orders).

EMG Technology, LLC v. Foot Locker, Inc. et al, (E.D. Tex.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • CCS Direct, LLC
  • Eastbay, Inc
  • Foot Locker, Inc.
  • Pottery Barn, Inc.
  • West Elm, Inc.
  • Williams-Sonoma, Inc.
  • Coach, Inc.

Plaintiff:         EMG Technology, LLC

Pls. Cnsl:        Jeffer Mangels Butler & Mitchell; and Parker Bunt & Ainsworth

Patent:            7,441,196 (Apparatus and method of manipulating a region on a wireless device screen for viewing, zooming and scrolling internet content).

Patent Group, LLC v. SkyMall, Inc., (E.D. Tex. (multiple cases). 

Judge:             District Judge Rodney Gilstrap

Claim:             Infringement 

Defendants:

  • Skymall, Inc.
  • Abercrombie & Fitch Co.
  • Under Armour, Inc.

Plaintiff:         Patent Group, LLC

Pls. Cnsl:        Martin Walker; and The Stafford Davis Firm

Patent:            6,603,490 (Web site screen rotation).

Orientview Technologies LLC v. Shoedazzle.Com, Inc., (D. Del.) 

Claim:             Infringement 

Defendant:     Orientview Technologies LLC

Plaintiff:         ShoeDazzle.com, Inc.

Pls. Cnsl:        Stamoulis & Weinblatt

Patent:            7,000,183 (Method and apparatus for viewer-specific presentation of information).

Steelhead Licensing LLC v. Dell, Inc., (D. Del.). 

Claim:             Infringement 

Defendant:     Dell Inc.

Plaintiff:         Steelhead Licensing LLC

Pls. Cnsl:        Bayard; and Ferraiuoli

Patent:            5,491,834 (Mobile radio handover initiation determination).

ArrivalStar SA et al v. Tracker Systems, Inc., (N.D. Ill.) (multiple cases). 

Judge:             District Judge Gary Feinerman

Claim:             Infringement 

Defendants:

  • Tracker Systems, Inc.
  • Birds Eye Global Tracking, LLC
  • Exact Point Global Tracking, LLC

Plaintiffs:

  • ArrivalStar SA
  • Melvino Technologies Limited

Pls. Cnsl:        Dowell IP

Patents:           6,714,859 (System and method for an advance notification system for monitoring and reporting proximity of a vehicle); 6,952,645 (System and method for activation of an advance notification system for monitoring and reporting status of vehicle travel); and 7,191,058 (Notification systems and methods enabling user entry of notification trigger information based upon monitored mobile vehicle location).

e.Digital Corporation v. Fujifilm Corporation et al, (S.D. Cal.) 

Judges:           Magistrate Judge Barbara Lynn Major, District Judge Barry Ted Moskowitz

Claim:             Infringement 

Defendants:

  • Best Buy
  • Brookstone Company, Inc.
  • Crutchfield Corporation
  • Fujifilm
  • Kmart Corporation
  • Sears, Roebuck and Co.
  • Target Corporation
  • Wal-Mart Stores, Inc.

Plaintiff:         e.Digital Corporation

Pls. Cnsl:        Handal & Associates

Patents:           5,491,774 (Handheld record and playback device with flash memory); 5,742,737 (Method for recording voice messages on flash memory in a hand held recorder); and 5,842,170 (Method for editing in hand held recorder).

Walker Digital, LLC v. Wal-Mart Stores, Inc., (D. Del.) (multiple cases).

Claim:             Infringement 

Defendants:

  • Wal-Mart Stores, Inc.
  • Toys“R”Us, Inc.
  • 7-Eleven, Inc.
  • Amazon.com, Inc.
  • PayNearMe, Inc.

Plaintiff:         Walker Digital, LLC

Pls. Cnsl:        Stamoulis & Weinblatt

Patent:            6,381,582 (Method and system for processing payments for remotely purchased goods).

c4cast.com, Inc. v. Kohl’s Corporation et al, (E.D. Tex.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • Kohl’s
  • LL Bean, Inc.
  • Recreational Equipment, Inc.
  • Sears
  • A H Belo Corporation
  • Denton Publishing Company
  • The Dallas Morning News, Inc.
  • The Providence Journal Co.
  • Huron Publishing Company, Inc.
  • The Hearst Corporation

Plaintiff:         c4cast.com, Inc.

Pls. Cnsl:        Ni Wang & Associates

Patents:           6,658,467 (Provision of informational resources over an electronic network); and 7,958,204 (Community-selected content).  

DietGoal Innovations LLC v. Mrs. Fields Famous Brands, LLC, (E.D. Tex.) 

Claim:             Infringement 

Defendant:     Mrs. Fields Famous Brands, LLC

Plaintiff:         DietGoal Innovations LLC

Pls. Cnsl:        Buether Joe & Carpenter; and Law Offices of Damon Young

Patent:            6,585,516 (Method and system for computerized visual behavior analysis, training, and planning).

FedEx Corporate Services, Inc. v. Eclipse IP LLC, (N.D. Ga.). 

Claim:             Declaratory Judgment 

Defendant:     Eclipse IP LLC

Plaintiff:         FedEx Corporate Services, Inc.

Pls. Cnsl:        Finnegan Henderson Farabow Garrett & Dunner

Patents:           7,119,716 (Response systems and methods for notification systems for modifying future notifications); 7,319,414 (Secure notification messaging systems and methods using authentication indicia); 7,479,899 (Notification systems and methods enabling a response to cause connection between a notified PCD and a delivery or pickup representative); 7,482,952 (Response systems and methods for notification systems for modifying future notifications); and 7,876,239 (Secure notification messaging systems and methods using authentication indicia).

Patent Harbor, LLC v. Dell, Inc., (E.D. Tex.) (multiple cases). 

Judge:             District Judge Leonard Davis

Claim:             Infringement

Defendants:

  • Dell Inc.
  • Hewlett-Packard Company

Plaintiff:         Patent Harbor, LLC

Pls. Cnsl:        Albritton Law Firm; Ward & Smith Law Firm; and Wong Cabello Lutsch Rutherford & Brucculeri

Patent:            5,684,514 (Apparatus and method for assembling content addressable video).

Lodsys Group, LLC v. Crocs, Inc. et al, (E.D. Tex.) (multiple cases).

Judge:             District Judge Rodney Gilstrap

Claim:             Infringement 

Defendant:

  • Crocs, Inc.
  • Oriental Trading Company, Inc.
  • Saks Incorporated
  • Somerset Investments, Inc.
  • Dr. Pepper Snapple Group, Inc.
  • Edmac Industries, Inc.
  • Implix USA, Inc.
  • Orchid Cellmark, Inc.
  • General Motors, Inc.
  • The Jones Group Inc.

Plaintiff:         Lodsys Group, LLC

Pls. Cnsl:        Kelley Goldfarb Gill Huck & Roth; and The Davis Firm

Patents:           7,222,078 (Methods and systems for gathering information from units of a commodity across a network); and 7,620,565 (Customer-based product design module).

MyMedicalRecords, Inc. v. Walgreen Co., (C.D. Cal.). 

Judges:           Magistrate Judge Stephen J. Hillman, District Judge George H. King

Claim:             Infringement 

Defendant:     Walgreen Co.

Plaintiff:         MyMedicalRecords, Inc.

Pls. Cnsl:        Liner Grode Stein Yankelevitz Sunshine Regenstreif & Taylor

Patent:            8,301,466 (Method and system for providing online records).

GeoTag, Inc. v. OnTargetJobs, Inc., (E.D. Tex.)  (multiple cases).

Judge:            District Judge Rodney Gilstrap

Claim:            Infringement 

Defendants:

  • OnTargetJobs, Inc.
  • Oracle Corporation
  • People Answers, Inc.
  • International Business Machines Corporation
  • netMedia, LLC
  • Kronos, Inc.

Plaintiff:         GeoTag, Inc.

Pls. Cnsl:        Direction IP Law; Mount Spelman & Fingerman; and Tadlock Law Firm

Patent:            5,930,474 (Internet organizer for accessing geographically and topically based information).

Eclipse IP LLC v. JC Penney Company, Inc., (E.D. Tex.) (multiple cases).

Claim:             Infringement 

Defendants:

  • JC Penney Company, Inc.
  • Pier 1 Imports, Inc.
  • Radioshack Corporation
  • The Men’s Wearhouse, Inc.
  • GameStop Corp.

Plaintiff:         Eclipse IP LLC

Pls. Cnsl:        Smith   Gillam & Smith

Patents:           7,119,716 (Response systems and methods for notification systems for modifying future notifications); 7,319,414 (Secure notification messaging systems and methods using authentication indicia); 7,876,239 (Secure notification messaging systems and methods using authentication indicia); 7,479,899 (Notification systems and methods enabling a response to cause connection between a notified PCD and a delivery or pickup representative); and 7,482,952 (Response systems and methods for notification systems for modifying future notifications).

 

Patent Troll Reform: Existing Laws Do Not Protect Retailers

By R. David Donoghue on Posted in Patent Trolls

Between the National Retail Foundation coverage and the national news coverage of President Obama’s statements on patent trolls, every retailer is aware of a growing swell of support for patent reform targeted at stopping the patent troll problem.  And the problem is as big for retailers, as for any business sector.  The NRF’s Senior Vice President and General Counsel Mallory Duncan explained it well recently:

Retailers have become one of the largest groups of non-tech companies targeted by patent trolls. . . .  Retailers are using precious capital resources to fight or settle infringement claims that they should be using to invest in their businesses and create jobs.  This is an abuse of our nation’s laws that needs to be stopped.

Patent trolls don’t target just national brands.  Small and medium-sized retailers are also being threatened and sued, and they are seen as easy prey because they don’t have the legal expertise or money to easily fight back. . . .

I will dig into the various reform proposals in the next several weeks, as it becomes clearer which have legs.  But the biggest concern is making sure that Congress stays on track to address the problem.

Unfortunately, some powerful voices are arguing that the federal courts already have the tools they need to deal with abusive patent litigation, despite acknowledging the problem of trolls.  The Federal Circuit’s Chief Judge Randall Rader, Santa Clara University Professor Colleen Chien and Mercer University Professor David Hricik published a New York Times opinion piece last week.  First, they acknowledge the problem:

The onslaught of litigation brought by “patent trolls” — who typically buy up a slew of patents, then sue anyone and everyone who might be using or selling the claimed inventions — has slowed the development of new products, increased costs for businesses and consumers, and clogged our judicial system.

The opinion piece then argues that Rule 11 sanctions and the 35 U.S.C. § 285 exceptional case standard can solve the problem.  While it is true that Rule 11 and the exceptional case standard allow for a successful party to get its reasonable fees and costs where the litigation should never have been brought or was otherwise abusive, that answers one small part of the problem.  The ability to get fees is positive, but it requires a significant upfront cost  (and risk) for a defendant that is typically faced with a settlement proposal far less than its potential fees.

Additionally, as every retailer has likely seen, the potential of an exceptional case finding or adverse Rule 11 result has very little impact upon patent trolls.  Trolls know that most cases settle and that even when cases go to a final judgment, exceptional case findings and adverse Rule 11 decisions are rare.  In order to level the fees playing field where trolls use the fees to force settlements, but retailers have no counterbalancing leverage, at a minimum there needs to be more certainty that fees are awarded to the prevailing party.

And fees are not even the most critical reform issue for retailers.  The biggest issue for retailers is likely creating some form of strong immunity for end-users of an allegedly infringing technology.  The existing customer suit exception allows a court to stay suits against a customer/end-user when the manufacturer/vendor of the accused product/software has also been sued, usually in another district.  Unfortunately, the customer suit exception is both discretionary and very limited.  Retailers need to be freed of suits where they are the end-user of a product, software package or other product that they have not modified or personalized in any way.  Of course, as I will discuss in a later post, creating a bright-line immunity from suit that trolls cannot work around will be a complex task.

The opinion piece also fails to take into account vague, Fed. R. Civ. P. Form 18-compliant patent complaints that routinely give retailers no insight into which of their products or systems are being accused of infringement.  This problem is magnified by the fact that retailers often have little knowledge of how the internet widgets and software packages based upon which they are accused of infringement.  So, a retailer with little or no independent knowledge of the accused instrumentality is further hindered by vague or non-existent accusations.  Forcing trolls to provide more detailed complaints is critical to allow retailers to understand the claims against them and in helping them seek and get indemnification.

And the opinion piece does not consider the massive cost, in terms of both attorneys fees and corporate time, wasted on discovery, much of which is meaningless.  Constraining and staging discovery, in particular email discovery, is also important.  While reduced discovery costs will not stop patent trolls, it will reduce their leverage while significantly reducing the pain of patent litigation for retailers, without interfering with the pursuit of justice.

There are other elements that should be considered, like transparency of patent assignements and licenses.  But the above examples make clear that the idea that existing law is sufficient to address abusive patent litigation fails when you look at the breadth of the problem.

E.D. Texas Federal Court Practice Judicial Roundtable

By R. David Donoghue on Posted in Patent Litigation Tips

Friend and colleague Michael Smith, who writes the excellent and authoritative E.D. Texas Practice Blog, tipped me off to a Texas Lawyer roundtable on Texas patent litigation procedure.  In addition to several Northern District of Texas judges (which are not nearly as relevant to retailers), Eastern District of Texas Judge Rodney Gilstrap and Magistrate Judge Roy Payne took part in the roundtable discussion.  What follows are key comments from Judges Gilstrap and Payne.

  • Time to trial for patent cases in the E.D. Texas is approximately 16 to 18 months.  As all of us who are there regularly know, the judges are keeping the cases moving quickly.
  • Both Judges Gilstrap and Payne are using evidentiary hearings more frequently (where appropriate) in motions to transfer.  They are also attempting to decide those motions earlier in the case, which is great news to retailers looking to move to their home jurisdictions.
  • On the use of technology at trial, Judge Payne has heard numerous jurors complain that lawyers put documents on the Elmo, but do not leave it up long enough for them to see it or only show the part of the document the lawyer is interested in, leaving the jury without context.
    • Judge Payne also noted that impeachment with the witness’s video testimony can be very powerful, when done well.
  • Judge Gilstrap warned against a trial (or lead) lawyer being tied to a PowerPoint presentation prepared by their young associate because the lead lawyer never took the time to learn the case.  When that happens, Judge Gilstrap is inclined to go ahead a couple of pages and ask questions which will show if the lawyer really understands its arguments.  There is no substitute for knowing the material you are presenting about.
  • Both Judges Gilstrap and Payne believe that local counsel, used effectively, is important in the Eastern District of Texas.  Judge Gilstrap pointed out that as a local trial lawyer for about three decades, he knows most of the local counsel well and they help him understand how the case will be handled.  He also pointed out that local counsel can be both very valuable and very effective when given thoughtful roles at trial.

Rocky Mountain IP & Technology Institute

By R. David Donoghue on Posted in Legal Seminars

At the end of this week, I will be heading to the Colorado Rockies at for the Annual Rocky Mountain IP & Technology Institute where I will be moderating a panel called “Damages Models: What Are We Seeing After the Federal Circuit’s Changes.”   William Sloan Coats, with Greenberg Traurig and Matthew Sarboraria, with Oracle Corp., are coming in from California to speak with me including a discussion on: What damages models work and how; Fair market; and Apportionment. It promises to be one of many great discussions.

The institute is May 30-31 and features an outstanding faculty and  agenda. Check out the complete agenda and details on the Institute.  I am spoken at it for several years and i find it to be one of the top conferences every year. I look forward to seeing you there.  Full details on the Institute are at http://ip.annualcle.com.

Vermont Takes on Patent Trolls

By R. David Donoghue on Posted in Patent Trolls

Vermont has passed a bill, which the Governor is expected to sign into law (H.299) called “Bad Faith Assertions of Patent Infringements”  – hat tip to Eric Goldman for identifying the law. Instead of defining bad faith assertions, it provides factors that may identify bad faith assertions, including:

  1. Failing to identifying the patent(s)-at-issue;
  2. Failing to identify the patent owner;
  3. Failing to explain the alleged infringement;
  4. Making deceptive/meritless assertions; or
  5. Demanding too much money or too fast a response.

It also offers factors suggesting good faith assertions:

  1. The patentholder commercializes the patent;
  2. The patentholder is the original inventor; or
  3. The patent has been successfully asserted in court.

Where a court finds a bad faith assertion, there are several remedies:

  • Damages. The statute provides for equitable relief which could include an injunction against further assertions, actual damages as well as increased damages of trebling the actual damages or $50,000, whichever is greater, and attorneys’ fees.
  • State Enforcement.  Vermont’s attorney general can initiate civil enforcement proceedings under the law.
  • Bond.  The court can require the accused patentholder to post a bond of up to $250,000 in case the accused infringer is awarded its attorney’s fees.  In my experience bonds rarely have the significant deterrent effect that they are expected to have.
This is an interesting attempt to handle the patent troll problem.  In particular, it allows for a pre-suit remedy.  The law could be used against a patentholder that has not yet filed suit, making it a faster and potentially cheaper alternative to things like the SHIELD Act that only provide relief after a successful final judgment.  But it still suffers from several problems:
  1. Preemption.  The federal patent law preempts related state laws.  Vermont’s statute extends beyond patent law to a degree, but there is still a strong chance it is preempted.
  2. Limited Jurisdiction.  The law only offers protection in Vermont.  Any retailer with locations in Vermont could attempt to avail itself of the statute, but that may or may not be enough of a connection.
  3. More lawsuits.  Solving lawsuits with more lawsuits just multiplies lawsuits, and in many (maybe most) cases will require suits in multiple states.  If the patent holder has not sued for infringement before being hit with a suit in Vermont, one has to assume they will shortly after.  So, you will have a Vermont state case and a federal case, likely outside of Vermont.  This is another example of how legal solutions to the troll problem are necessarily imperfect.  What we really need are market based solutions.
Vermont’s effort is well-intended and a positive step forward, but it has problems and even if it survives a preemption challenge it will have limited benefit.  At a minimum, however, it is another of many patent troll reform efforts and continues a recent trend of governments actively seeking solutions to the troll problem.  Several new bills are being introduced in Congress, which I will discuss in future posts.
Interestingly, yesterday Vermont’s Attorney General sued patent troll MPHJ Technology Investments under consumer protection laws, presumably not willing to wait for this bill to be signed into law.  The complaint is a good read, carefully laying out the history of an assertion campaign.  This is an interesting test case and suggests that Vermont’s law may be somewhat redundant.

November 2012 Retail Patent Litigation Report

By R. David Donoghue on Posted in Retail Litigation Report

The trolls eased into the holidays.  A few frequent fliers stayed busy: Eclipse IP, Pragmatus and Clear With Computers. 

As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in a particular case, how your Judge has historically handled a particular type of motion, or a particular plaintiff’s litigation history.

Finally, please let me know if you have thoughts about the report or changes you would like to see.  I am preparing it as a service for retailers and their supply chain who may want an overview of the patent litigation landscape.  So, I am very open to ways to improve the report for you.

ArrivalStar SA et al v. Advance Auto Parts, Inc., (S.D. Fla.) (multiple cases). 

Judge:             District Judge James Lawrence King

Claim:             Infringement 

Defendants:

  • Advance Auto Parts, Inc.
  • Dewalt Industries, Inc.
  • Edwin Watts Golf Shops, LLC.
  • The Pep Boys-Manny
  • Moe & Jack, Inc.
  • Crocs, Inc.
  • Golfsmith USA, LLC
  • Billabong USA Holdings Party, Limited
  • Killer Dana, Inc.
  • Pacific Sunwear of California Inc.
  • MIQ Global, LLC
  • Ortec International USA, Inc.
  • Aramex International
  • McKesson Corporation
  • Epes Transport System, Incorporated

Plaintiffs:

  • ArrivalStar SA
  • Melvino Technologies Limited

Pls. Cnsl:        McMahon Law Firm

Patents:          6,904,359 (Notification systems and methods with user-definable notifications based upon occurance of events); 6,952,645 (System and method for activation of an advance notification system for monitoring and reporting status of vehicle travel); and 7,400,970 (System and method for an advance notification system for monitoring and reporting proximity of a vehicle).

Eclipse IP, LLC v. Wayfair, Inc., (N.D. Ill.). 

Judge:             District Judge Ronald A. Guzman

Claim:             Infringement 

Defendant:     Wayfair, Inc.

Plaintiff:         Eclipse IP, LLC

Pls. Cnsl:        Wawrzyn

Patents:          7,119,716 (Response systems and methods for notification systems for modifying future notifications); 7,319,414 (Secure notification messaging systems and methods using authentication indicia); 7,482,952 (Response systems and methods for notification systems for modifying future notifications); and 7,876,239 (Secure notification messaging systems and methods using authentication indicia).

Select Retrieval, LLC v. Backcountry.com, Inc., (D. Del.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • Backcountry.com, Inc.
  • BodyBuilding.com, LLC
  • LMC Right Start, Inc.
  • MotoSport, Inc.
  • Provide Commerce, Inc.
  • QVC, Inc.

Plaintiff:         Select Retrieval, LLC

Pls. Cnsl:        Stamoulis & Weinblatt

Patent:            6,128,617 (Data display software with actions and links integrated with information).

Clear With Computers, LLC v. Hugo Boss Fashions, Inc., (E.D. Tex.) (multiple cases). 

Judge:             District Judge Leonard Davis

Claim:             Infringement 

Defendants:

  • Hugo Boss Fashions, Inc.
  • Tory Burch LLC

Plaintiff:         Clear With Computers, LLC

Pls. Cnsl:        Spangler & Fussell; and Stamoulis & Weinblatt

Patent:            8,266,015 (Inventory sales system and method).

PrivaCash, Inc. v. American Express Travel Related Services Company, Inc. et al, (E.D. Tex.). 

Judge:             District Judge Leonard Davis

Claim:             Infringement 

Defendants:

  • American Express Prepaid Card Management Corporation
  • American Express Travel Related Services Company, Inc.

Plaintiff:         PrivaCash, Inc.

Pls. Cnsl:        Brooks Kushman; and Ward & Smith Law Firm

Patent:            8,219,474 (Method and system for distributing and activating a non-personalized purchase card).

Princeton Digital Image Corporation v. Harmonix Music Systems, Inc. et al, (D. Del.). 

Claim:             Infringement 

Defendant:

  • Electronic Arts, Inc.
  • Harmonix Music Systems, Inc.

Plaintiff:         Princeton Digital Image Corporation=

Pls. Cnsl:        O’Kelly Ernst & Bielli

Patent:            5,513,129 (Method and system for controlling computer-generated virtual environment in response to audio signals).

Cascades Branding Innovation LLC v. OfficeMax Incorporated, (N.D. Ill.). 

Judge:             District Judge Charles P. Kocoras

Claim:             Infringement 

Defendant:     OfficeMax Incorporated

Plaintiff:         Cascades Branding Innovation LLC

Pls. Cnsl:        Flachsbart & Greenspoon

Patents:          7,768,395 (Brand mapping); and 8,106,766 (Brand mapping).

Aeritas, LLC v. Virgin America Inc., (D. Del.; N.D. Tex.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • Virgin America Inc.
  • Cinemark USA, Inc.

Plaintiff:         Aeritas, LLC

Pls. Cnsl:        Bayard; Russ August & Kabat; and Law Office of David H Judson

Patents:          7,209,903 (Method and system for facilitation of wireless e-commerce transactions); 7,933,589 (Method and system for facilitation of wireless e-commerce transactions); 7,706,819 (Mixed-mode interaction); and 8,055,285 (Mixed-mode interaction).

Interface IP Holdings LLC v. AOL Inc., (D. Del.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • AOL Inc.
  • Avis Budget Group, Inc.
  • CNN Interactive Group, Inc.
  • Delta Airlines, Inc.
  • E*Trade Financial Corporation
  • Kayak Software Corporation
  • Priceline.com Incorporated
  • TripAdvisor LLC
  • The Vanguard Group, Inc.

Plaintiff:         Interface IP Holdings LLC

Pls. Cnsl:        Black Chang & Hamill; and Farnan

Patents:          7,406,663 (Graphical input device with dynamic field width adjustment for input of variable data via a browser-based display); and 7,500,201 (Data input method and system with multi-sub-field matching of user entries into a graphical input device).

Lodsys Group, LLC v. Bed, Bath & Beyond, Inc. et al, (E.D. Tex.) (multiple cases). 

Judge:             District Judge Rodney Gilstrap

Claim:             Infringement 

Defendants:

  • Bed, Bath & Beyond, Inc.
  • Brooks Sports, Inc.
  • John Wiley & Sons, Inc.
  • J&P Cycles, LLC
  • B&H Foto & Electronics Corp.
  • Charter Communications, Inc.
  • Corbis Corporation
  • Lamps Plus, Inc.
  • Nordstrom, Inc.

Plaintiff:         Lodsys Group, LLC

Pls. Cnsl:        Kelley Goldfarb Gill Huck & Roth; and The Davis Firm

Patents:          7,222,078 (Methods and systems for gathering information from units of a commodity across a network); and 7,620,565 (Customer-based product design module).

Pragmatus Telecom, LLC v. 3M Company, (D. Del.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • 3M Company
  • Alcatel-Lucent USA, Inc.
  • Aramark Corporation
  • AT&T, Inc.
  • Bright House Networks, LLC
  • Brother International Corporation
  • CDW Corporation
  • Comcast Corporation
  • Comdata Corporation
  • Crocs, Inc.
  • Enterprise Rent-A-Car Company
  • Frontier Communications Corporation
  • General Motors Company
  • HSN, Inc.
  • Lands’ End Inc.
  • Lenovo (United States) Inc.
  • Lexmark International, Inc.
  • NIKE, Inc.
  • OCE-America, Inc.
  • Office Depot, Inc.
  • Oriental Trading Company, Inc.
  • Redbox, Inc.
  • Rite Aid Corporation
  • Sprint Spectrum, LP
  • Thomson Reuters US, Inc.
  • U-Haul International, Inc.
  • Volkswagen Group of America, Inc.
  • Wal-Mart Stores, Inc.

Plaintiff:         Pragmatus Telecom, LLC

Pls. Cnsl:        Farnan; and Feinberg Day Alberti & Thompson

Patents:          6,311,231 (Method and system for coordinating data and voice communications via customer contract channel changing system using voice over IP); 6,668,286 (Method and system for coordinating data and voice communications via customer contact channel changing system over IP); and 7,159,043 (Method and system for coordinating data and voice communications via contact channel changing system).

LogMeIn, Inc. v. Pragmatus Telecom, LLC, (D. Del.). 

Claim:             Declaratory Judgment 

Defendant:     Pragmatus Telecom, LLC

Plaintiff:         LogMeIn, Inc.

Pls. Cnsl:        Choate Hall & Stewart; and Potter Anderson & Corroon

Patents:          5,884,032 (System for coordinating communications via customer contact channel changing system using call centre for setting up the call between customer and an available help agent); 6,311,231 (Method and system for coordinating data and voice communications via customer contract channel changing system using voice over IP); 6,668,286 (Method and system for coordinating data and voice communications via customer contact channel changing system over IP); and 7,159,043 (Method and system for coordinating data and voice communications via contact channel changing system).

LBS Innovations, LLC v. Alfred Angelo, Inc. et al, (E.D. Tex.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • Alfred Angelo, Inc.
  • Ben & Jerry’s Homemade Holdings, Inc.
  • Denny’s, Inc. (d/b/a Denny’s Restaurants, Inc.)
  • Jo-Ann Stores, Inc.
  • Pilot Travel Centers, LLC
  • Randall’s Food & Drugs, LP
  • Safeway, Inc.
  • The Cheesecake Factory Restaurants, Inc.

Plaintiff:         LBS Innovations, LLC

Pls. Cnsl:        Buether Joe & Carpenter

Patent:            6,091,956 (Situation information system).

CreateAds LLC v. 1&1 Internet Inc., (D. Del.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • 1&1 Internet Inc.
  • Endurance International Group Holdings, LLC
  • Hostgator.com, LLC
  • Just Host, Inc.
  • Hewlett-Packard Company
  • Google Inc.
  • Federal Express Corporation
  • Intuit Inc.
  • Squarespace, Inc.
  • Staples, Inc.
  • Vistaprint USA Inc.
  • Network Solutions, LLC
  • Register.com, Inc.
  • Web.com Group, Inc.
  • Yahoo! Inc.

Plaintiff:         CreateAds LLC

Pls. Cnsl:        Bayard; and Russ August & Kabat

Patent:            5,535,320 (Method of generating a visual design).

Customer Suit Exception as a Patent Troll Solution

By R. David Donoghue on Posted in Patent Litigation Tips

Santa Clara Law Professor Brian Love and Wilson Sonsini partner James Yoon have written a thought-provoking article (slated for publication in the Boston University Law Review) arguing for the expansion of the customer suit exception as a mechanism to limit the disparate impact of patent litigation.  First, they identify the myriad problems with suing customers/end users instead of the manufacturers.  Most of these will be familiar to retailers:

  • Suing increases costs for manufacturers and customer (retailers) defendants alike.
  • The cost of defense incentivizes and, in some cases, forces customer defendants to settle.  That is even true when the customer believes the suit is meritless.

As a solution, the authors propose strengthening the customer suit exception, as follows:

  • Apply the exception where the claims are primarily directed at the manufacturer.  This will encompass more suits and avoid gamesmanship.
  • There are no more than nominal fact questions the customers are needed to answer.
  • In weighing the judicial economy, the Court should look at the exception’s narrowing impact not just on existing cases, but on preventing future cases as well.
  • Courts should weigh the relative ability of customers and manufacturers to defend themselves.  As retailers know from experience with internet widgets, software and computer hardware, that balance will almost always favor staying customer suits.

This is an interesting, valuable strategy for retailers.  And it could be enacted by the Courts without legislative intervention.

Retail is Troll’s Hardest Hit Non-Tech Sector

By R. David Donoghue on Posted in Industry Issues, Patent Trolls

Santa Clara Law Professor Colleen Chien recently wrote an interesting article on Patently-O discussing some key patent troll statistics in light of President Obama’s troll comments and the new SHIELD Act.  Here are some of the key takeaways for retailers:

  • In 2012, trolls filed 62% of patent litigations - 2,921 of 4,701 suits.
  • Retailers are “hit hardest” by troll suits filed against non-tech companies.  Unfortunately, that is no surprise for retailers.
  • Individual inventors brought 5% of 2012 troll suits.  What is not clear is whether the 5% includes corporations that were the original assignees or just individual plaintiffs.
  • The joinder law may be resulting in fewer filings against small companies that may not be able to be joined in a large group.  Of course, this is no help for smaller retailers with outsized name recognition that may still be getting sued.
  • Trolls - purposefully or not - are picking on small companies.  55% of troll defendants have $10M or less in revenues per year.  And $100M or less captures 66% of troll defendants.
  • Half of ITC respondents were in troll cases.  The impact of the ITC is growing for trolls.
  • Based upon limited data, many more letters are sent by trolls than suits are filed.  Again, no surprise to retailers based upon their own anecdotal evidence.

December 2012 Retail Patent Litigation Report

By R. David Donoghue on Posted in Retail Litigation Report

The trolls took it easy for the holidays.  A few frequent fliers stayed busy:  Eclipse IP, Landmark, Lodsys, MacroSolve, Pragmatus, Clear With Computers, and Cronos. 

As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in a particular case, how your Judge has historically handled a particular type of motion, or a particular plaintiff’s litigation history.

Finally, please let me know if you have thoughts about the report or changes you would like to see.  I am preparing it as a service for retailers and their supply chain who may want an overview of the patent litigation landscape.  So, I am very open to ways to improve the report for you.

Eclipse IP, LLC v. Aston Martin Lagonda of North America, Inc, (C.D. Cal.) (multiple cases). 

Judge:             Magistrate Judge Arthur Nakazato

Claim:             Infringement 

Defendants:

  • Aston Martin Lagonda of North America, Inc.
  • Toyota Motor Sales USA, Inc.
  • Volkswagen Group of America, Inc.
  • Volvo Cars of North America LLC

Plaintiff:         Eclipse IP, LLC

Pls. Cnsl:        Newport Trial Group

Patents:          7,479,900 (Notification systems and methods that consider traffic flow predicament data); and 7,482,952 (Response systems and methods for notification systems for modifying future notifications).

The Tawnsaura Group, LLC v. Woodbolt Distribution, LLC, (C.D. Cal.) (multiple cases). 

Judges:           District Judge David O. Carter, Magistrate Judge Arthur Nakazato

Claim:             Infringement 

Defendants:

  • Woodbolt Distribution, LLC
  • Vital Pharmaceuticals, Inc.

Plaintiff:         The Tawnsaura Group, LLC

Pls. Cnsl:        Newport Trial Group

Patents:          5,874,471 (Orthomolecular medical use of L-citrulline for vasoprotection, relaxative smooth muscle tone and cell protection); and 6028107 (Orthomolecular medical use of L-citrulline for vasoprotection, relaxative smooth muscle tone and cell protection).

Infinite Data, LLC v. MySpace, LLC, (D. Del.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • MySpace, LLC
  • Amazon.com, Inc.
  • AOL Inc.
  • eBay, Inc.
  • LexisNexis Document Solutions Inc.
  • MySpace, Inc.
  • Overstock.com, Inc.
  • PayPal, Inc.
  • Yahoo! Inc.

Plaintiff:         Infinite Data, LLC

Pls. Cnsl:        Farnan; Russ August & Kabat

Patent:           5,790,530 (Message-passing multiprocessor system).

Landmark Technology, LLC v. Applied Industrial Technologies, Inc., (E.D. Tex.) (multiple cases). 

Judge:             District Judge Leonard Davis

Claim:             Infringement 

Defendants:

  • Applied Industrial Technologies, Inc.
  • Polaris Industries, Inc.
  • Henry Schein, Inc.
  • Airgas, Inc.
  • Belk, Inc.
  • Burberry Limited
  • Jos A Bank Clothiers, Inc.
  • Fifth & Pacific Companies, Inc.
  • Juicy Couture, Inc.
  • Kate Spade, LLC
  • Lucky Brand Dungarees, Inc.

Plaintiff:         Landmark Technology, LLC

Pls. Cnsl:        Jeffer Mangels Butler & Mitchell; and Parker Bunt & Ainsworth

Patents:          5,576,951 (Automated sales and services system); and 7,010,508 (Automated multimedia data processing network).

Lodsys Group, LLC v. MakeMyTrip.com, Inc. et al, (E.D. Tex.). 

Judge:             District Judge Rodney Gilstrap

Claim:             Infringement 

Defendants:

  • MakeMyTrip.com, Inc.
  • Meijer, Inc.
  • Musician’s Friend, Inc.
  • Nuance Communications, Inc.
  • SanDisk Corporation
  • Burberry Limited
  • Coldwater Creek, Inc.
  • Dover Saddlery, Inc.
  • Godiva Chocolatier, Inc.
  • Hanna Andersson Corporation

Plaintiff:         Lodsys Group, LLC

Pls. Cnsl:        Kelley Goldfarb Gill Huck & Roth; and The Davis Firm

Patents:          7,222,078 (Methods and systems for gathering information from units of a commodity across a network); and 7,620,565 (Customer-based product design module).

MacroSolve, Inc. v. Bed Bath & Beyond, Inc., (E.D. Tex.) (multiple cases). 

Claim:             Infringement 

Defendants:

  • Bed, Bath & Beyond, Inc.
  • Kmart Corporation
  • Kmart Holding Corporation
  • Sears, Roebuck and Co.
  • Starwood Hotels & Resorts Worldwide, Inc.

Plaintiff:         MacroSolve, Inc.

Pls. Cnsl:        Antonelli Harrington & Thompson

Patent:           7,822,816 (System and method for data management).

DietGoal Innovations LLC v. Kellan Restaurant Management Corp. d/b/a 54th Street Grill & Bar, (E.D. Tex.) (multiple cases). 

Judges:           Magistrate Judge Caroline Craven, District Judge Michael H. Schneider

Claim:             Infringement 

Defendants:  

  • Kellan Restaurant Management Corp. d/b/a 54th Street Grill & Bar
  • Chipotle Mexican Grill, Inc.
  • Einstein Noah Restaurant Group, Inc.
  • Freshii
  • Marco’s Franchising, LLC
  • Potbelly Sandwich Works, LLC
  • CBC Restaurant Corp. d/b/a Corner Bakery Cafe
  • Deli Management, Inc. d/b/a Jason’s Deli
  • Pita Pit USA, Inc.
  • Taco John’s International, Inc.
  • Ufood Restaurant Group, Inc.
  • Genghis Grill Franchise Concepts, LP
  • Biglari Holdings, Inc.
  • Steak ‘n Shake Enterprises, Inc.
  • Steak ‘n Shake Operations, Inc.
  • Tropical Smoothie Cafe, LLC

Plaintiff:         DietGoal Innovations LLC

Pls. Cnsl:        Buether Joe & Carpenter; and Law Offices of Damon Young

Patent:           6,585,516 (Method and system for computerized visual behavior analysis, training, and planning).

Marshall Feature Recognition, LLC v. Diageo North America, Inc., (E.D. Tex.) (multiple cases). 

Judge:             District Judge Leonard Davis

Claim:             Infringement

Defendants:

  • Diageo North America, Inc.
  • Frito-Lay, Inc.
  • Pepsi-Cola Company
  • JC Penney Company, Inc.

Plaintiff:         Marshall Feature Recognition, LLC

Pls. Cnsl:        Gillam & Smith; and Maiorino Law Group

Patent:           6,886,750 (Method and apparatus for accessing electronic data via a familiar printed medium).

Pragmatus Telecom, LLC v. Trend Micro Incorporated, (C.D. Cal.) (N.D. Cal.) (D. Del.) (multiple cases). 

Judge:             Magistrate Judge Laurel Beeler

Claim:             Infringement 

Defendants:

  • Trend Micro Incorporated
  • Netgear, Inc.
  • AOL Inc.
  • Bosch Security Systems, Inc.
  • Dish Network Corporation
  • Elavon, Inc.
  • EMC Corporation
  • goEmerchant, LLC
  • L.L.Bean, Inc.
  • Mediacom Communications Corporation
  • Nordstrom, Inc.
  • PerkinElmer, Inc.
  • Philips Electronics North America Corporation
  • Staples, Inc.
  • Starwood Hotels & Resorts Worldwide, Inc.
  • Acer America Corporation
  • Build.com, Inc.
  • First Data Corporation
  • Foot Locker, Inc.
  • Georgia-Pacific LLC
  • Reed Elsevier US Holdings Inc.
  • Saks Incorporated
  • Seagate Technology (US) Holdings, Inc.
  • Genuine Parts Company
  • Leaders Merchant Services, LLC
  • Newegg, Inc.
  • Epson America, Inc.
  • US Auto Parts Network, Inc.

Plaintiff:         Pragmatus Telecom, LLC

Pls. Cnsl:        Feinberg Day Alberti & Thompson; and Farnan

Patents:          6,311,231 (Method and system for coordinating data and voice communications via customer contract channel changing system using voice over IP); 6,668,286 (Method and system for coordinating data and voice communications via customer contact channel changing system over IP); and 7,159,043 (Method and system for coordinating data and voice communications via contact channel changing system).

ArrivalStar SA et al v. The Gap Stores, Inc., (S.D. Fla.) 

Judge:             District Judge Kathleen M. Williams

Claim:             Infringement

Defendant:     The Gap Stores, Inc.

Plaintiffs:

  • ArrivalStar SA
  • Melvino Technologies Limited

Pls. Cnsl:        McMahon Law Firm

Patents:          6,904,359 (Notification systems and methods with user-definable notifications based upon occurance of events); 6,952,645 (System and method for activation of an advance notification system for monitoring and reporting status of vehicle travel); and 7,400,970 (System and method for an advance notification system for monitoring and reporting proximity of a vehicle).

Clear With Computers, LLC v. Forty Niners Football Company LLC, (E.D. Tex.) (multiple cases). 

Judge:             District Judge Leonard Davis

Claim:             Infringement 

Defendants:

  • Forty Niners Football Company LLC
  • American Eagle Outfitters, Inc.
  • Helly Hanson (U.S.) Inc
  • Levi Strauss & Company
  • NFL Enterprises LLC
  • Spanx, Inc.
  • MLB Advanced Media, LP

Plaintiff:         Clear With Computers, LLC

Pls. Cnsl:        Spangler & Fussell; and Stamoulis & Weinblatt

Patent:           8,266,015 (Inventory sales system and method).

Lone Star WiFi LLC v. Legacy Stonebriar Hotel, Ltd. et al, (E.D. Tex.). 

Judge:             District Judge Leonard Davis

Claim:             Infringement 

Defendants:

  • Aimbridge Hospitality LP
  • HAC Frisco Partners LP
  • HAC Plano Partners LP
  • Legacy Stonebriar Hotel II, Ltd.
  • Legacy Stonebriar Hotel, Ltd.
  • Starwood Hotels & Resorts Worldwide, Inc.

Plaintiff:         Lone Star WiFi LLC

Pls. Cnsl:        Gartman Law Group; and Ward & Smith Law Firm

Patents:          7,490,348 (Wireless network having multiple communication allowances); and 8,312,286 (Wireless network having multiple communication allowances).

Cronos Technologies, LLC v. West Marine, Inc., (N.D. Cal.). 

Judge:             Magistrate Judge Elizabeth D. Laporte

Claim:             Infringement 

Defendant:     West Marine, Inc.

Plaintiff:         Cronos Technologies, LLC

Pls. Cnsl:        Heninger Garrison Davis

Patent:           5,664,110 (Remote ordering system).

Will the SHIELD Act Have the Impact Retailers Expect?

By R. David Donoghue on Posted in Industry Issues, Patent Trolls

Retailers have been generally excited about the loser pays system the proposed SHIELD Act would create for trolls.  But a recent iam blog discussing comments from Patent Freedom suggests the SHIELD Act may not have the impact many retailers expect.  According to Patent Freedom:

75% of trolls are asserting only patents originally assigned to them (6%) or a mix (15%).  So as many as 75% of trolls could avoid the reach of the SHIELD Act.  That leaves a few or 1 of 4 trolls covered by the SHIELD Act.

That is a powerful statistic.  If it is correct, the SHIELD Act will not have nearly the impact many expected.  And Patent Freedom is a well-respected source of troll – related data that makes it its business to know trolls well.