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Skilled in the Art: Snapping Back at BlackBerry, plus New Rules at ITC

Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. I've got a lot of news to relay today so let's get right to it. As always feel free to email me tips and feedback, and follow me on Twitter.


Double-Barreled BlackBerry Attack

First, a bit of housekeeping. Yesterday I wrote about Facebook's motion to dismiss much of BlackBerry's patent infringement suit on the basis of Section 101. I overlooked that Snap, which is facing a similar suit from BlackBerry in the same Los Angeles courtroom, has brought its own 101 motion. Paul Hastings partner Yar Chaikovsky takes aim at three patents BlackBerry is asserting against both Facebook and Snap, plus three more BlackBerry is asserting against Snap only. The latter cover time-stamping communications such as text messages, and identifying "action spots" on a map, i.e., nearby areas where other smartphone users are taking photos or videos or messaging. As with Facebook's motion (and virtually any other Section 101 motion), Chaikovsky says the ideas at the heart of the inventions are as old as the hills. Time stamping is "an utterly unremarkable idea that has been practiced manually for centuries" by letter writers, post offices and even courts themselves. BlackBerry's innovation is specifying that the time stamp won't appear unless a specified interval has passed. But "this is nothing more than applying a simple rule to incoming correspondence, which the Federal Circuit has found to be an abstract idea," Chaikovsky writes. The "action spot" mapping, meanwhile, is not unlike a seismic map that displays the magnitude of earthquake activity within a defined area, or a police map indicating neighborhood crime patterns, Chaikovsky argues. Further, each patent relies on generic or conventional technology, such as "a display," "a memory" and a "processor," which fails to provide an inventive concept. "Because this was so conventional, the specification does not even explain how to go about programming this functionality," Chaikovsky writes in reference to one of the patents asserted against both companies. Joining Chaikovsky on Snap's team are Paul Hastings partners Chad Peterman and Thomas O'Brien, of counsel Philip Ou, and associates David Okano and Anthony Tartaglio. Facebook is represented by Cooley partners Heidi KeefeMark Weinstein and Michael Rhodes. As mentioned in Monday's article, the Federal Circuit has recently redrawn the rulesfor determining whether technology was, in fact, routine, conventional and well-understood to a skilled artisan at the time of the patent. BlackBerry, which is represented by Quinn Emanuel Urquhart & Sullivan, will no doubt argue to U.S. District Judge George Wu that those determinations can't be made on the pleadings, but will have to await summary judgment or trial.

New Rules for Managing ITC Cases

The International Trade Commission adopted new rules of practice last week for cases filed after June 7. Veteran ITC litigator Paul Brinkman of Kirkland & Ellis says a lot of the new regulations simply codify the way things had developed in previous practice. But a couple of changes could have significant impact at the increasingly popular forum. One is a rule empowering commission ALJs to split unwieldy investigations into smaller pieces. Brinkman says some complainants were asserting numerous patents or patent claims, often waiting till the eve of trial to pick a manageable set. Commission judges "didn't have authority to do anything but litigate it—until now," Brinkman says. Complainants who take this approach now run the risk of having to invest additional time and money in a second proceeding. "This gives the judges a bigger hammer," he says. The commission has also made it simpler for parties to present testimony by deposition, when the parties and the ALJ agree that live testimony isn't necessary. And the ITC has formally adopted the "100-day rule" pilot program, in which ALJs can issue early rulings on case-dispositive issues such as domestic industry and standing.

Greenberg Traurig's ITC Chief Heading to ... ?

Speaking of the ITC, has anyone noticed that the head of Greenberg Traurig's ITC practiceMark Davis, apparently is no longer with the firm? Neither are IP partners Ronald Pabis and Steven Shahida. Word on the street is they may be headed to a Boston-based AmLaw 100 firm that's been building up its IP litigation capability in the electronics space. No immediate response from that firm.


Commemorating a Hall of Famer

ChIPs Network, the nonprofit that advances women in technology, law and policy, has launched a scholarship honoring the memory of Morrison & Foerster partner Rachel Krevans. A pioneer for women in IP law and a member of the ChIPs Hall of Fame, Krevans died last year from cancer at age 60. “Rachel was a brilliant litigator and a champion of women,” ChIPs co-founder and board chair Noreen Krall said in a news release announcing the scholarship. As Apple’s VP and chief of litigation, Krall worked closely with Krevans on cases such as Apple v. Samsung. “We hope future generations of women will be inspired by her legacy as they embark upon their careers.” MoFo has funded the scholarship, which will award $5,000 to one student entering her third year of law school each year. The application can be found here. “Rachel was an inspiration to us all," said Morrison & Foerster chairman Larren Nashelsky, a long-time friend of Krevans’. "We are delighted to partner with ChIPs to continue her legacy of passionate client service and the advancement of women in IP.”

Who Got the Work

Last week I wrote about Federal Circuit oral arguments in the Native American tribal immunity case. Well, there's an even bigger case percolating up on state sovereign immunity in PTAB proceedings, and it's generating a huge amount of work.  The Dispute: The University of Minnesota invests some $700 million in research each year, and recoups about $40 million licensing its inventions. The university sued AT&T, Verizon, Sprint and T-Mobile in Minnesota federal court, accusing them of infringing five patents related to 4G LTE technology. In a separate suit around the same time, it sued LSI Logic in the Northern District of California, accusing it of infringing a semiconductor patent. Finally, it became the latest in a long line to sue Gilead Sciences for allegedly infringing a Hepatitis C patent, seeking $2.5 billion in damages in ND-Cal. Ericsson, acting on behalf of the telcos, LSI and Gilead have all responded with IPRs challenging the various patents. The university invoked its sovereign immunity and moved to dismiss each IPR. PTAB Chief Judge David Ruschke then added himself and three other members of PTAB leadership to the panels, notwithstanding that members of the Supreme Court and Federal Circuit have criticized the practice. Ruschke wrote for the expanded panels that the PTAB will recognize state sovereign immunity, but that the university waived it by asserting the patents in federal court. That holding could face some rough sledding at the Federal Circuit, which has held that waiver of immunity in one suit "does not extend to an entirely separate lawsuit, even one involving the same subject matter and the same parties," such as a declaratory judgment action. Arguments appear likely around the first of the year.  The attorneys: A Wolf Greenfield team led by partners Michael AlbertRich GiuntaCharles Steenburg, and Jerry Hrycyszyn, and associate Stuart Dunan Smith is representing the university. Ericsson has enlisted Orrick Herrington & Sutcliffe and Haynes and Boone. Orrick partners Mark Davies and associates Easha Anand and Ned Hirschfeld join Haynes partners J. Andrew Lowes and Debbie McComas. A Kilpatrick Townsend & Stockton team led by partners Kris Reed and John Sipiora and associate Ted Mayle represent LSI and its parent, Avago TechnologiesBartlit Beck Herman Palenchar & Scott partners Adam Mortara and Nevin Gewertz and associate Meg Fasulo are representing Gilead. Oh by the way, Texas Attorney General Ken Paxton and Indiana AG Curtis Hill have weighed in as amici curiae on behalf of their states plus Hawaii, Illinois, Massachussets, Michigan, Minnesota, Mississippi, New Jersey, Ohio, Rhode Island, South Carolina, Utah and Virginia. Shore Chan DePumpo, the firm that masterminded the tribal sovereign immunity defense to IPRs, has filed a separate amicus brief for Indiana University, Purdue and the University of New Mexico. And Vinson & Elkins is representing amicus Association of Public and Land-Grant Universities. We haven't even heard from the inevitable parade of tech industry amici yet.

That's all from Skilled in the Art today. I'll see you all again on Friday.