Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Here's what's happening on my beat this week:

• Intellectual Ventures defeats Capital One's antitrust claims at the Federal Circuit.

• Indian university escapes entrepreneur's trade secret suit.

• Bryan Cave fires latest salvo in single-cell genomics wars.

As always you can email me your thoughts and follow me on Twitter.

Freitas & Weinberg partner Bob Freitas.

Capital One Missed Its Chance for Antitrust Ruling

Capital One has litigated its novel antitrust theory against behemoth IP holding company Intellectual Ventures for more than five years.

It ended Tuesday without even a ruling on the merits from the U.S. Court of Appeals for the Federal Circuit.

The bank was challenging a ruling from U.S. District Judge Paul Grimm of Maryland, but the Washington, D.C.-based appellate court ruled that Capital One was bound by a previous decision from U.S. District Judge Anthony Trenga of Virginia. Capital One had started to appeal Trenga's decision several years ago but chose to abandon it.

"Given that the description of the alleged market on which Judge Trenga predicated his ruling is identical in all material respects to the market alleged in the Maryland case, it was appropriate for Judge Grimm to give preclusive effect to Judge Trenga's ruling on that issue," Judge William Bryson wrote for a unanimous Federal Circuit panel.

The appellate court did not say whether it agreed with Trenga's framing of a relevant market for patents. Nor did it address Grimm's alternate holding: that the Noerr-Pennington doctrine guarantees Intellectual Ventures' right to wield its massive portfolio.

It's a tough blow for Latham & Watkins partner Matt Moore, who argued the appeal for Capital One. He's been contending for years that IV is violating competition laws by allegedly aggregating thousands of poor-quality patents that tread on financial services and then threatening "endless litigation" if its supra-competitive license demands aren't met. The nearly two-hour long argument in June focused largely on the merits of the antitrust issues.

His opponent Bob Freitas of Freitas & Weinberg said the ruling validates what IV's been saying all along. "We argued from the beginning that Capital One should not get a second chance to litigate the claims rejected by Judge Trenga in the Eastern District of Virginia," Freitas said. "Judge Grimm agreed, and the Federal Circuit has now affirmed. It's disappointing that we had to defeat the same claims twice, but we are very pleased with the Federal Circuit's unanimous precedential opinion."

Capital One has successfully defended all 10 of the patents IV asserted, but its antitrust counterclaims have now fizzled. Trenga dismissed them on the pleadings, saying Capital One had failed to identify a relevant market or to show how IV exercised monopoly power.

Capital One began an appeal, but dismissed it and instead tried again with counterclaims in a patent suit IV had filed in Maryland. Grimm was more hospitable.

"It is hard to deny that there is something concerning from an antitrust perspective about the way in which IV engages in its licensing business," he wrote at one point.

Grimm ultimately said he would find triable issues as to the relevant market, but held that a jury trial was precluded by Trenga's previous ruling and by the Noerr-Pennington doctrine, which immunizes legitimate litigation activity from antitrust laws.

On Tuesday, Bryson wrote that Intellectual Ventures v. Capital One is a "particularly strong candidate for applying collateral estoppel," because the Maryland case was pending at the same time as the Virginia appeal. Plus, Capital One submitted an appellate brief describing the relevant market as limited to IV's patent portfolio, then withdrew it and took a different position before Grimm, Bryson wrote.

"In that pleading, where Capital One was not facing a claim of collateral estoppel, Capital One did not disclaim Judge Trenga's characterization of the relevant market, but embraced it," Bryson wrote.

Moore had argued that preclusion should not apply because Trenga had based his decision on two alternative and independent grounds.

Bryson disagreed. "The requirement of a relevant antitrust market is a necessary component of both determinations; therefore, Judge Trenga's finding that a relevant antitrust market was not plausibly pleaded is fatal to Capital One's position on both issues."

Chief Judge Sharon Prost and Judge Jimmie Reyna concurred in Bryson's opinion.

Goodwin Procter partner Neel Chatterjee. (Photo by Christine Jegan/The Recorder.)

Chatterjee Wins Globe-Spanning IP Marathon

Intellectual Ventures v. Capital One is like a short sprint compared to the long-distance litigation of M.A. Mobile v. Indian Institute of Technology Kharagpur. After 11 years of hard-fought litigation, Goodwin Procter partner Neel Chatterjee has finally sprung the Indian public university and several of its employees from a $30 million trade secrets suit over a mobile train ticketing system.

U.S. District Judge William Orrick III on Thursday ruled against a Silicon Valley entrepreneur who thought she had struck a deal with IITK to develop a handheld app for one of the world's largest train systems. Instead the project was delayed, IITK backed out of the deal, and IBM won a $30 million contract on similar technology, M.A. Mobile and Mandana Farhang had alleged.

Orrick acknowledged that the parties had shared a mutual goal of developing Farhang's IP. But he granted summary judgment to IITK, ruling that that evidence "cannot transform negotiations and joint efforts into a legally binding joint venture agreement.

The decision ends—at least for now—a case that's already been up to the Ninth Circuit twice and that involved two unsuccessful attempts to disqualify Chatterjee from the case. The litigation at times has gotten personal. M.A. Mobile once accused Chatterjee of using his father, Bijoy, as an intermediary to convey information about Farhang's suit to IITK while she was being represented by another member of Orrick, Herrington & Sutcliffe, Chatterjee's law firm at the time.

U.S. District Judge Ronald Whyte, who presided over the case until 2016, denied both motions, saying that Orrick had billed only 20 hours to Farhang on an unrelated employment matter.

Chatterjee said he was pleased by the ruling. "You don't always have the honor to represent a foreign government on a significant issue," he said. Plus it was cool representing "visionary academics" associated with the institute, he said.

M.A. Mobile's suit alleged that Farhang had reached out to Partha Chakrabarti, then the head of IITK, to help develop a software platform she'd acquired. A team of professors and students developed a prototype called "Cool e-mobile" that could handle on-board ticketing, passenger tracking, and even monitor the locations of doctors in case of emergency.

But while accepting an equity stake in the company in exchange for the institute's work, Chakrabarti balked at striking a formal joint venture, saying the Indian government wouldn't allow such a deal. Instead the project was delegated to an incubator affiliated with the school, but even then the parties struggled to work out a written contract, Eventually Chakrabarti and IIT walked away and sent the code that had been developed to Farhang. Some months later, IBM struck a deal with Indian Railways for similar technology.

Chatterjee said it took nearly a year to serve the parties, then several more to unpack which foreign defendants could be sued in a United States court. Once that was resolved, the case turned partly on Indian law to determine whether an oral contract had been formed. "IIT lacked the legal capacity to enter into an oral joint venture agreement" under the laws of India, he said. "When joint ventures are formed, they only have as much authority as the government gives them to act."

"You can't have an oral agreement when you're actually negotiating and intend to have a written agreement. There's some pretty straightforward California law on that question," Chatterjee said.

Orrick agreed on both counts. He further found there was no hard evidence that anyone with IIT disclosed source code to Indian Railways or IBM. Orrick also said he had serious doubts that M.A. Mobile could recover damages, because "in California, an unestablished business generally cannot recover damages for anticipated future profits because 'their occurrence is uncertain, contingent and speculative.'"

M.A. Mobile was represented by solo practitioner Sanjiv Singh and the Jacobs Law Group SF.

Who Got the Work?

We have a new entry in the single-cell genomics wars, and it features some Stanford-on-Stanford crime.

South San Francisco-based Fluidigm Corp. is suing Menlo Park-based IONpath, accusing it of infringing its patents on mass cytometry and interfering with its customer relationships. Fluidigm was co-founded by Stanford bioengineering professor Stephen Quake, who sits on the company's scientific advisory board.

According to Fluidigm's Sept. 6 complaint, Fluidigm markets the CyTOF mass cytometer and other products that enable the analysis of 40 markers simultaneously on thousands of individual cells. That helps identify new cell types, functions, and biomarkers indicative of different disease states and/or responsiveness to therapeutic treatments, the company says.

Fluidigm alleges that it entered into consulting agreements with Stanford scientists Garry Nolan and Sean Bendall. Notwithstanding those agreements, "On information and belief, and while Dr. Bendall consulted with Fluidigm, IONpath and Dr. Bendall began commercializing products for pathology applications, including, eventually, IONpath's 'MIBIscope' technology."

The MIBIscope was developed in Nolan's lab, according to the complaint.

Bryan Cave Leighton Paisner—a name I haven't previously associated with this space— represents Fluidigm. Partner Lee Marshall signed the complaint and is joined by partner David Roodman and associate Abigail Cotton.

WilmerHale partner Sonal Mehta

Mehta Joins WilmerHale

It seems like yesterday Sonal Mehta was leaving Weil, Gotshal & Manges to join Durie Tangri. Turns out four years can fly by pretty fast. Now Mehta is on the move to Wilmer Cutler Pickering Hale and Dorr.

Mehta told my ALM colleague Xiumei Dong that Wilmer's international platform was part of the draw. It's a reason a lot of high-profile IP lawyers are giving for switching firms these days. "Patent litigation matters are taking on more of an international or global scale," she said.

"Sonal is a highly-respected and accomplished IP bar leader and litigator with whom a number of WilmerHale IP litigators have worked closely over the years," Susan Murley, co-managing partner of Wilmer, said in a statement.

Dorsey Partner Joins White & Case

Jeremy Elman is joining White & Case as counsel in the firm's Silicon Valley office. Elmen was previously the head of Dorsey & Whitney's Silicon Valley trial and IP groups. His clients have included Apple, Samsung, Sony, The Coca-Cola Company, Nike, Hard Rock, HP, BlackBerry, Citrix, Seagate, Fairchild Semiconductor, and Aristocrat Technologies.

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