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Alexa, Rule These Patents Ineligible

Tom McParland had the news Monday: Amazon.com persuaded U.S. District Judge Richard Andrews to invalidate three voice recognition patents from the company that developed the Siri technology used by Apple.

The new owner of the patents is suing Amazon.com (and Google, Microsoftand more than a dozen other tech heavyweights), accusing them of using the patented technology in products like Alexa and Cortana. But Judge Andrews held that the patents don't claim eligible subject matter. “They are drafted so broadly as to cover any method that can achieve navigating electronic databases by spoken natural language input,” and are implemented using generic technology, Andrews wrote in a March 31 order.

It's another hands-down, decisive Section 101 win for Amazon and its frequent patent counsel, J. David Hadden of Fenwick & West, plus Paul Hastingscounsel who represented co-defendant Sony Electronics.

That is, it would have been, if it had been issued two months ago. Instead the ruling comes with a big, Barry Bonds-sized asterisk in the form of Berkheimer v. HP.

Berkheimer and its follow-up Aatrix Software are the two Federal Circuit decisions from Judge Kimberly Moore that are giving accused infringers fits. IPA Technologies v. Amazon.com is a good example of why. A case that otherwise might have ended with 31 docket entries and a Rule 12 dismissal could—possibly—be headed for a much more expensive and drawn out fight over patent validity.

Bear with me a minute for some background: IPA Technologies is a subsidiary of Quarterhill Inc., the publicly traded non-practicing entity formerly known as Wi-LAN. Quarterhill obtained the patents at issue from SRI Corp., the company that developed Siri and licensed the technology to Apple. A year and half ago IPA began suing tech companies for patent infringement. Several have petitioned for inter partes review in response.

After the hearing on the 101 motion, but before Andrews issued his decision, IPA's original counsel withdrew and were replaced by Paul Skiermont and a team from Skiermont Derby, who are co-counsel for inventor Steven Berkheimer in the Federal Circuit Section 101 case against HP. They asked Andrews for permission to file a 109-page amended complaint, asserting three additional patents and far more detailed factual allegations than contained in IPA's original complaint.

Toward the end of his ruling for Amazon, Andrews noted IPA's motion to amend, and added that “I expect to grant [it] once briefing on it is complete.” And why wouldn't he, given that the Federal Circuit in Aatrix ruled it was an abuse of discretion not to in similar circumstances?

So score one for Amazon and the tech colossus. But they probably are going to have fight this Section 101 battle all over again before Judge Andrews, under the Berkheimer rules.

The Blob That Ate Extraterritorial Patent Damages

We're two weeks from Supreme Court arguments in WesternGeco v. ION Geophysical, the extraterritorial patent damages case, and most of the merits briefing is in. A big, gaping question remains: whether the court's ruling will be confined to damages for induced infringement under Section 271(f)—which targets the supply of components that are combined overseas—or whether it might expand to cover any damages arising from overseas sales of products that infringe U.S. patents.

WesternGeco is represented by a Kirkland & Ellis team that's headlined by former SG Paul Clement. The company said in its cert petition that, “The issue in this case is whether infringers under Section 271(f) should be liable for the full scope of damages available under Section 284.”

The merits brief frames the question the same way. But, Clement continues, “the entire enterprise of applying the presumption against extraterritoriality to damages is misguided.” Any damages flowing from extraterritorial sales or uses of products that infringe U.S. patents should be compensated, just as in copyright cases, he argues.

The solicitor general's brief likewise is taking aim at patent damages generally. The Federal Circuit's rule against extraterritorial damages “systematically undercompensates U.S. patent owners for infringement when the patent owner derives profits from cross-border commerce,” the SG's amicus brief says.

This worries the Electronic Frontier Foundation and the R Street Institute, two amici curiae often aligned with the tech industry. “The court's ruling in this case could vastly expand the reach of U.S. patent law,” the groups warn in a brief signed by EFF's Daniel Nazer, R Street's Charles Duan and law professors Bernard Chao and Brian Love. “Expanding patent damages in this way would effectively transform every U.S. patent into a worldwide patent.”

The stakes are obvious. ION Geophysical was forced to pay $22 million in reasonable royalties for the supply of steering mechanisms for underwater cables used to survey the ocean floor. It's contesting an additional $93 million for surveys that used the patented technology in international waters.

ION argues that the Supreme Court itself has said that the presumption against extraterritorial application of U.S. laws is at its peak in patent cases. “Congress must speak clearly if it wishes to make extraterritorial damages available under the patent laws, and it has not done so to date,” writes Williams & Connolly partner Kannon Shanmugam, who's leading a team from W&C and Fish & Richardson.

Also backing ION is a group of law professors led by Emory's Timothy Holbrook. They ask the high court to clarify that the presumption against extraterroriality applies to all remedial statutes, not just the patent laws. “This court has never squarely addressed whether the presumption applies to remedial provisions,” their brief states.

Supporting WesternGeco are AIPLA; the New York, Houston and Chicago intellectual property lawyers associations; and the Intellectual Property Owners Association. All argue that excluding damages for overseas activity runs counter to Section 284's requirement that damages be “adequate to compensate for the infringement.”

Who's On the Move?

➤ King & Spalding has raided Cooley for a second veteran IP litigator. James Brogan will be following Thomas Friel to K&S, the firm announced earlier this week.

Brogan had been practicing from Cooley's Broomfield, Colo., office, but will be working from San Francisco and Palo Alto for King & Spalding, which isn't in Colorado. Brogan was the head of Cooley's IP practice from 2012 to 2016.

“Jim is not only a first-rate trial lawyer, he also helps clients find solutions to patent issues before anyone sets foot in a courtroom, which clients appreciate,” said Tim Scott, managing partner of King & Spalding's Silicon Valley office. “We look forward to Jim being a driving force in our IP practice, just as he was at his previous firm.”

➤ Meanwhile, Philadelphia IP lawyer Roberta Jacobs-Meadway has come out of a brief retirement to resume her career at Baker & Hostetler. The 67-year-old IP litigator stepped down from Eckert, Seamans Cherin & Mellott in December after a decade with the firm, including launching its Philadelphia IP practice in 2008. A few weeks ago she accepted an offer to continue her career with Baker, my ALM colleague Lizzy McLellan reports.

While she holds Eckert, Seamans in high regard, Baker & Hostetler presented “an excellent fit for me for the last move of my career,” she said.

Joseph Lucci, managing partner of Baker & Hostetler's Philadelphia office, said in a statement that Jacobs-Meadway “not only has been a trailblazer in the legal profession, but also brings decades of experience to our firm and will be able to serve as a mentor to some of the younger attorneys in our office.”

Jacobs-Meadway previously practiced at Ballard Spahr and Akin Gump Strauss Hauer & Feld. Early in her career she was the first woman lawyer and first woman partner at Seidel Gonda and Goldhammer, and then a founding partner of Philadelphia IP firm Panitch Schwarze Jacobs & Nadel.

Three Generations of Owens

In other personnel news, San Francisco IP boutique Owen, Wickersham & Erickson now counts three generations of Owens under the same roof—grandfather Mel, son Greg and grandson Spencer, who joined the firm earlier this year. Spencer Owen graduated last year from University of Oregon, where he earned a certificate of specialization in IP.

Greg Owen jokes that his son has “a genetic predisposition toward IP law,” while the firm quotes partner Noel Cook's reaction: “Wait a minute—ANOTHER Owen?!?” But, Cook says in all seriousness, “it's a real honor to now work with three generations of the Owen family.”

Quinn Takes Aim at Nintendo

Nintendo's Switch gaming console is back in the sites of Quinn Emanuel Urquhart & Sullivan. Quinn client Gamevice, a maker of gaming consoles that attach to mobile phones and tablets, sued Nintendo and Nintendo of America for patent infringement in the Northern District of California last week. Gamevice says Nintendo's Switch, which debuted in 2016 as the “home console that you can take anywhere,” infringes its patented technology.

Quinn co-founder John Quinn and partner Chris Mathews headline Gamevice's team. The pair filed a similar complaint against Nintendo last August in the Central District of California, then dismissed it voluntarily in November. The new complaint is more specific about venue—it notes that Nintendo of America has a regular and established place of business at a specific address in Redwood City—and asserts two new patents obtained in September and November.

Gamevice v. Nintendo alleges that when the Switch's Joy-Con controllers are attached to the Switch console, which they must be to recharge, that Gamevice's patents are infringed.

That's all for today from Skilled in the Art, the IP briefing that you can take anywhere. See you all again on Friday.