Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
By Tony Dutra
April 8 — Adobe Systems Inc. was victorious over non-practicing entity Digital Reg of Texas LLC when the Federal Circuit affirmed April 8 that a Digital Reg patent was invalid even though it was previously licensed for $8.5 million to patent aggregator RPX Corp.
RPX Corp. sometimes licenses patents from non-practicing entities, paid to license 6,389,541 from Digital Reg of Marshall, Texas.
It sublicensed that patent, which is on regulating access to digital information or content, to its members.
Defendant Adobe Systems Inc., which was accused of infringing the patent, did not have a sublicense.
Digital Reg argued that RPX's license signaled its blessing of a valid patent, at least to the extent of overcoming Adobe's evidence of obviousness.
But Adobe succeeded in keeping the $8.5 million that RPX paid for the patent hidden from the jury on the grounds that it had limited relevance and because of RPX's unique business model.
Judge Claudia Wilken of the U.S. District Court for the Northern District of California agreed to withhold the fact of the license's cost— but not its existence. An Adobe expert testified that the value of Digital Reg's other licenses was “really, really low,” and the court allowed Digital Reg to counter that the RPX license was “much, much higher” in value than the others.
The jury, which was instructed to consider the “commercial success of a product due to the merits of the claimed invention” in its analysis, found the '541 patent invalid as obvious.
Digital Reg argued in its appeal brief that the jury was precluded from determining the claims were obvious because evidence of the RPX licence was excluded at trial. But Wilken rejected its post-trial motions.
The Federal Circuit affirmed without opinion.
Digital Reg asserted the same patent in the Eastern District of Texas against a number of other companies. Apple Inc. and Microsoft Corp. were dismissed from one case. Litigation against Texas Instruments Inc., No. 6:15-cv-00744, and Siemens Product Lifecycle Management Software Inc., No. 6:15-cv-00742, among others, was stayed pending the Federal Circuit's opinion.
DiNovo, Price, Ellwanger & Hardy LLP represented DR. Weil, Gotshal & Manges LLP represented Adobe.
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Mike Wilczek in Washington at firstname.lastname@example.org
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)