Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Here's a quick breakdown of today's briefing:

• Facebook and Twitter are trying to squash the last remnants of a seven-year-old patent case.

• Sony and Fujifilm have settled their magnetic tape wars.

• Could patents declared ineligible years ago rise from the dead?

As always feel free to email me your own thoughts and follow me on Twitter.

Judge Haywood Gilliam Jr. (Photo by Diego Radzinschi/ALM)

 

Wake Up and Smell the Section 101 Rulings

U.S. District Judge Haywood Gilliam Jr. is presiding over the Rip Van Winkle of patent cases.

Non-practicing entity Software Rights Archive (SRA) sued Facebook and Twitter over search technology in the Northern District of California in 2012. But the cases have been in a deep slumber for six years while the social media companies persuaded the Patent Trial and Appeal Board and the Federal Circuit to invalidate 27 of the 30 challenged claims.

Now Judge Gilliam, who inherited the cases from Judge Ronald Whyte, has lifted the stay. And he made clear at a Thursday hearing that he's eager for resolution. “I don't have a lot of cases that preceded me coming onto the bench,” noted Gilliam, who joined the court in 2014.

Facebook and Twitter are trying to help by bringing an Alice motion challenging SRA's three remaining claims. But SRA points out that the patent eligibility landscape has turned upside-down since 2013. Alice wasn't even on the books—let alone the cases interpreting it and re-interpreting it—when Whyte forced SRA to choose its 30 claims and then stayed the cases.

William Parrish of Hardy Parrish Yang argued Thursday that SRA should now be allowed to file an amended complaint with more specific allegations about patent eligibility—and should be given a couple more months to figure out which additional claims it might wish to assert.

“Any problem that happened is a problem of their making,” said Parrish, arguing that Facebook and Twitter waited until after the stay was lifted in May to provide four terabytes of discovery.

The three patents at issue in Software Rights Archive v. Facebook outline improvements on text-based searching through the use of indirect relationships between documents. SRA's suit contends that “99% of the search industry”—notably including Google—has licensed the patents to the tune of “multiple tens of millions of dollars.”

Facebook and Twitter point out in their briefs that when the Federal Circuit heard argument in the PTAB appeal, Judge Bob Mayer observed that any surviving claims are “clearly a 101.” (Of course, Judge Mayer has made clear that, in his view, all software patents should be ineligible.)

“Our Alice motion is ready. It's ready for the three claims that are remaining.” Keker, Van Nest & Peters partner Sharif Jacob argued for the tech companies Thursday. “It's clear today that the plaintiffs are not ready.”

Gilliam observed that the PTAB has “decimated” SRA's claims, and that adding new ones might mean “the stay and the IPR didn't help much, which would be a major problem.” But given the unusual circumstances, he agreed that SRA is entitled to amend its complaint. And if it can decide within one month which other claims it wants to add, he'll consider whether there's good cause for doing so.

Cooley partner Heidi Keefe argued for Facebook that SRA has had plenty of time to choose its claims, both before and after the stay. Gilliam said he'll take that into account when deciding good cause.

“I understand the defendants' frustration. I can hear it,” he said. “I'm not concerned about who's to blame. I'm more concerned about this case needs to end.”

He also warned the parties against “continuing to hold stuff in your pocket, so that we're back here in 10 more years.”

 

Sony and Fujifilm Call Off the Tape Wars

The magnetic tape wars are over. Sony Corp. and Fujifilm Corp. have settled a long-running battle across the International Trade Commission, the PTAB and the Federal Circuit that was threatening to disrupt the cloud computing industry.

If you're thinking, “Didn't magnetic tape go out of style 30 years ago?” you're almost right. Fujifilm argued in court papers that the industry was on the “brink of extinction” in the 1990s until its engineers came up with inventions for expanding capacity and improving signal to noise. Magnetic tape has since remained a preferred medium for backing up cloud data.

Fujifilm and Sony sued each other in the ITC, with each arguing that the other was infringing its patented improvements. Both managed to exclude some of the others' products—most saliently, Sony's cutting edge LTO-8 tape media. The companies also brought approximately 20 IPRs challenging the validity of each others' patents in the PTAB.

With many of those actions now on appeal, the two Japanese companies have called a truce. They informed the Federal Circuit on Thursday that they've entered into a worldwide resolution and cross-license.

A Baker Botts team headed by partners Robert Scheinfeld, Robert Maier, Jennifer Tempesta and Lisa Kattan represented Fujifilm in the ITC actions. Partners Eliot Williams, Neil Sirota and Paul Ragusa led the PTAB side of the litigation.

Sony was represented by Wolf, Greenfield & Sacks; Quinn Emanuel Urquhart & Sullivan; Smith Baluch and Foster, Murphy, Altman & Nickel. 

Photo courtesy of AMC Studios

 

Zombie Patents: The 101 Sequel?

On Tuesday I wrote about how patents declared unenforceable more than a decade ago for inequitable conduct had been brought back to life thanks to an intervening change in the law. Ropes & Gray partner Matt Rizzolo points out in a blog post that the same thing could happen with patents that district courts have declared ineligible under Alice, if Congress were to amend Section 101 and not make it prospective only.

“Remember folks, a district court doesn't 'invalidate' or 'cancel' a patent,” Rizzolo notes. “Only the Patent Office does that.”

That's all from Skilled in the Art this week. I'll see you all again on Tuesday.