Microsoft Battles Daedalus Blue; Intel Gears Up for First-to-File Fight; Electric Blanket Boogaloo

After almost 200 district court patent filings last week, things settled back into their recent rhythm, with an average 66 district court complaints (including some “Schedule A” brand anti-counterfeiting complaints) and 28 Patent Trial and Appeal Board (PTAB) petitions filed (all inter partes reviews [IPRs]) this week. There were no IP Edge or Rothschild complaints this week, after last week’s busy filings. There were no Fintiv denials again this week; the PTAB petitions included three IPRs filed by Microsoft against Daedalus Blue LLC against patents originally assigned to IBM (more below), as well as various patents related to ongoing challenges (like the rolling Lasik J&J/Alcon fight), more fracking IPRs, more Peloton-related challenges (those bikes make big bucks!), and a curious rechargeable-battery suit between a Taiwanese U.S. patent holder and a U.S. rechargeable battery company based in Michigan, A123 Systems, LLC (a name that conjures this classic clip). Those batteries are supplied to NEC and other device manufacturers, so what looks at first blush like a small suit probably is set to have broader implications. Nokia had a Google challenge denied, and two Ideahub [Synkloud] challenges by Microsoft were denied as well, on the merits; and more Uniloc/Fortress IP claims were cancelled on final written decision.

Microsoft Feeling Blue: Just before its major shift in focus from licensing to cloud computing, IBM offloaded a bunch of litigation-grade assets to Ed Gomez and various entities he controls, including Daedalus Blue LLC and Daedalus Group LLC. I love the symbolism—Daedalus was the father of Icarus and the master engineer of Greek myth, who built the labyrinth and the wax wings that helped Icarus fly too close to the sun (I’m a sucker for a good literary reference.) Reports suggest the entities control over 500 U.S. assets, and have been asserting them against major companies, including Oracle, Microstrategy, and Microsoft; this week, Microsoft fought back, challenging three of the eight patents (one would assume they’ll likely file against others in the coming weeks). The challenges are interesting amid the repositioning of IBM in the market, but the proxy war continues; it will be interesting to follow the litigation and challenges as they develop. For those playing at home, that’s IPR2021-00832 (U.S. 8,381,209), IPR2021-00831 (U.S. 8,671,132), and IPR2021-00830 (U.S. 8,572,612).

The First-to-File Two-Step: The recently beleaguered-Intel has been battered by non-practicing entities (NPEs) asserting semiconductor patents, both before the Fortress IP/VLSI trials, and now again, in their wake. In at least one of those assertions, it has chosen to go on the offense a bit, and this week served a declaratory judgment action (DJ) on NPE Longhorn IP in the Northern District of California over five semiconductor patents the NPE was seeking to license through its subsidiary Trenchant Blade Technologies, LLC, which immediately triggered a complaint filed by the Trenchant entities in the Western District of Texas. The Northern District of California complaint outlines Longhorn’s licensing practices in detail, which, for any interested, is worth the read. The five patents in suit are (perhaps unsurprisingly) former TSMC patents. In the complaint, Intel highlights that Longhorn had previously used the Lone Star subsidiary (also controlled by Longhorn President and CEO Khaled Fekih-Romdhane) to assert against others. Intel’s first-filed complaint should control under the widely accepted first-filed rule, see, e.g., In re: VOIP-PAL.com, Inc., No. 2021-12 (Feb. 19, 2021) (Moore, J.) (non-precedential) (declining to find mandamus-worthy error in District Court’s use of the first-to-file rule, where the complaint was similarly filed first in the Northern District of California, then later in the Western District of Texas; noting application of the rule is ultimately an issue of judicial discretion); but see Communications Test Design, Inc. v. Contec, LLC, No. 19-1672 (Fed. Cir. Mar. 13, 2020) (finding no abuse of discretion in accepting the later-filed suit and dismissing the first-filed DJ). But like the customer-suit exception, the Federal Circuit and district courts have been waffling on uniform application of longstanding comity rules. See In re Sprouts Farmers Market, Inc., No. 2020-116 (Fed. Cir. 2020) (Newman, J.) (non-precedential) (declining to find mandamus-worthy error in the district court’s decision not to apply the customer suit exception).

Electric Blanket Boogaloo: A competitor-competitor fight in the hotly-contested electric blanket market is heating up, with defendant London Luxury LLC headed to the PTAB to challenge U.S. Patent 10,920,376. London Luxury sells in the US under the “Brookstone” label, which to be fair was the first and only retailer that came to mind when I saw electric blanket. It’s not the first suit by E&E Company—they themselves have been the subject of a couple of patent suits from Sheex and AAVN, apparent competitors in the space. The E&E brand sells in Bed Bath & Beyond, Overstock.com, and various other retailers; E&E, for its part, is a California company that has been making electric blankets since 1998.

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Jonathan Stroud

is Chief IP Counsel at Unified Patents, LLC, where he manages a growing team of talented, diverse attorneys and oversees a docket of administrative challenges, appeals, licensing, and district court work in addition to IP, administrative, amicus, policy, marketing, and corporate matters.

Prior to Unified he was a patent litigator for Finnegan, Henderson, Farabow, Garrett & Dunner LLP, and a former medical devices patent examiner at the USPTO. He earned his J.D. with honors from the American University Washington College of Law; his B.S. in Biomedical Engineering from Tulane University; and his M.A. in Print Journalism from the University of Southern California. He enjoys teaching, writing, and speaking on patent and administrative law.