Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Here's what's cooking today:

• Huawei turns to Fish & Richardson and Caldwell Cassady for patent showdown with Verizon.

• University of Texas says sovereign immunity protects it from being hauled into court as a plaintiff.

• Illumina did not "deceive" PTAB panels and the Federal Circuit into ruling in its favor.

• Uffizi Galleries and Ballard Spahr win cybersquatting action.

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

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J. Lekavicius/Shutterstock

 

Huawei Calls on Old Friends and a Former Enemy

Huawei Technologies has turned to two familiar faces—including one who was previously adverse—in its patent throw-down with Verizon Communications.

Fish & Richardson and Caldwell, Cassady & Curry are separately representing the Chinese telecom giant in two suits alleging that its New York-based competitor is infringing Huawei router and fiber-optic communication technologies. Verizon has called the suits "a PR stunt" driven by Chinese-American tensions.

The suits were filed Wednesday in the Eastern and Western Districts of Texas. Fish & Richardson is handling the Western District case. The firm has appeared frequently for Huawei in the past, including in patent litigation against Nokia and T-Mobile that settled in 2017.

The Caldwell firm actually sued Huawei for patent infringement as recently as 2017, with the case settling the following year. Caldwell Cassady has had some notable successes in the Eastern District, including judgments of $368 million and $503 million against Apple over secure communications technology. (The Federal Circuit sent the $503 million back to ED-Tex last fall for a possible retrial on damages.)

Huawei is asserting five patents in the Eastern District suit that are essential for practicing the International Telecommunications Union's G.709 standard interface for optical transport networks.

"Verizon uses this technology to transmit massive amounts of data in a stable and safe way from numerous base stations or access points to remote destinations," alleges the complaint, which is signed by Brad Caldwell and by Gregory Love of the Love Law Firm. "Thus, the technology is important to the core of Verizon's business—enabling individuals and businesses to place calls, access the Internet, and transport data safely, reliably, and quickly."

Also on the complaint are Caldwell partners Jason Cassady, John Austin Curry and Justin Nemunaitis.

The Western District suit asserts seven patents that Huawei contends are infringed by Cisco Systems and Juniper Networks routers deployed in Verizon's networks.

Huawei alleges that it reached out to Verizon on Feb. 7, 2019, to start license negotiations. That would have been about a week after the Justice Department unsealed an indictment charging Huawei and CFO Meng Wanzhou with stealing trade secrets and violating Iran sanctions.

The negotiations continued until as recently as January 21 of this year. "Because Verizon has not accepted Huawei's numerous flexible approaches during the year-long negotiations, Huawei is compelled to now enforce its patent rights through this lawsuit," the Western District complaint states.

Fish & Richardson partner Thomas Reger II signed the complaint. Also appearing are partners Ruffin Cordell, David Barkan and associate Brian Strand, along with John Palmer of Naman, Howell, Smith & Lee.

Verizon, which during the early 2000s employed AG William Barr as general counsel, called the suit "a sneak attack on our company and the entire tech ecosystem." It asserts that "Huawei's real target is not Verizon; it is any country or company that defies it."

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Is a State Immune From Bringing a Lawsuit?

It was an all-Texas affair at the U.S Court of Appeals for the Federal Circuit on Tuesday as lawyers from Vinson & Elkins, Baker Botts and Skiermont Derby hashed out a patent dispute that poses novel issues of sovereign immunity.

Professor William Decker developed a method of cancer treatment while employed at the University of Texas. UT licensed the patents to a company called Gensetix, which later sued Decker and his new employer, the Baylor College of Medicine. UT decided it didn't want to join the lawsuit and invoked its sovereign immunity.

The Supreme Court has said that a patent holder can be involuntarily joined if there's no other way of securing justice for a licensee. But U.S. District Judge Andrew Hanen ruled that UT's sovereign immunity trumped that principle and dismissed the case.

Skiermont Derby's Paul Skiermont argued Tuesday in Gensetix v. Baylor College of Medicine that the Eleventh Amendment shields states from being sued as defendants. "There is no case that prevents a sovereign from being named as an involuntary plaintiff," Skiermont said. In fact, UT's license agreement with Gensetix requires it to bring suit when it learns of infringement, he emphasized.

Tuesday marked the return of Judge Kathleen O'Malley to live arguments after an absence of several months. She sounded as locked and loaded as ever.

"Why doesn't UT want to abide by its contractual obligations to Gensetix?" she asked Vinson & Elkins partner Peter Mims, representing the university.

"UT reads this contract differently than Gensetix does," Mims answered.

"UT's actions in this case are nullifying the license agreement," she told him.

"They're nullifying the bringing of a lawsuit at this time," Mims said, reminding O'Malley that when Texas "entered the union, they maintained their sovereignty."

"I don't have any problems with sovereign immunity generally," O'Malley clarified. "What I'm saying is as a commercial actor they entered into a license agreement." UT could have spelled out that Genetix could sue only with the university's approval, she said.

Judge Richard Taranto suggested that sovereign immunity would likely apply regardless of whether the sovereign is a plaintiff or a defendant. Judge Pauline Newman suggested that UT has waived its immunity. "Once you choose as a university … to participate in the patent system, to participate in licensing, income generation, royalties and all the rest of it, you're on the same playing field as anyone else," Newman said.

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U.S. District Judge William Orrick III. (Photo: S. Todd Rogers/ALM)

 

It's Not Inequity, It's Advocacy

Inequitable conduct defenses are a dime a dozen. No, make that a nickel, if BGI Genomics and Arnold & Porter Kaye Scholer had had their way.

Last summer, BGI accused Illumina and 10 of its lawyers, primarily from Knobbe Martens and Weil Gotshal & Manges, of deceiving the Patent Office—not during prosecution, but while defending a patent in America Invents Act litigation before the Patent Trial and Appeal Board and later at the Federal Circuit.

Over the course of four IPRs involving a single DNA sequencing patent, the lawyers deliberately conflated reaction efficiency with reaction yield; falsely described a molecule as "linear and rigid" when in fact it has the ability to bend to different shapes; and mischaracterized prior art, BGI contended in 28 pages of counterclaim allegations.

"But for these intentional misrepresentations by Illumina's counsel, the PTAB or Federal Circuit would have held differently, and the '537 Patent would have been invalidated," BGI argued in a filing signed by Arnold & Porter counsel Katie J.L. Scott.

All the more galling, because Knobbe partners Kerry Taylor, Michael Fuller and Nathanael Luman hold advanced degrees in chemistry or biology. Allegedly false statements in a Patent Owner Preliminary Response "would have been known to all three attorneys given their high academic achievement in chemistry and related sciences," BGI contended.

Illumina argued that there was "no substance" to the allegations. "These attorneys supposedly defrauded six sophisticated and technically-savvy Patent Trial and Appeal Board ("PTAB") judges and a three-member Federal Circuit panel about the interpretation of the prior art that was before them," Weil Gotshal partner Ed Reines wrote in a motion to strike.

BGI subsidiary CGI had the opportunity to expose any alleged fraud at the PTAB and didn't. "Nor did Defendants attempt to move for sanctions before the judges that were supposedly misled—even though Defendants insist that the misrepresentations are patently false and obvious on their face," Reines wrote.

U.S. District Judge William Orrick III granted Illumina's motion on Wednesday. "The purported misrepresentations at most constitute attorney argument regarding how prior art should be interpreted, not demonstrably false statements," Orrick wrote. "The PTAB and Federal Circuit independently evaluated the prior art, at times with the benefit of CGI's arguments attacking Illumina's position. Accordingly, CGI's allegations regarding knowledge and intent are implausible."

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Art Museum Makes Its Win Uffizial

Ballard Spahr is helping Florence's Uffizi Galleries reclaim its online name.

Lichtenstein web agency BoxNic Anstalt owns uffizi.com and has been re-selling tickets to the famous art museum on that website since 2007. The museum, whose official web presence resides on the .it domain, won a UDRP arbitration in 2018 provisionally awarding the domain name to the museum.

BoxNic sued in Arizona to block the decision. It argued that uffizi is a common Italian word, meaning offices, and that BoxNic had been using it in good faith for 11 years without hearing from the museum.

The Uffizi Galleries and Ballard Spahr counterclaimed for cybersquatting, trademark infringement and unfair competition. The Uffizi name derives from the museum complex, which was built in the 16th century to house the official offices of Florentine magistrates and other government personnel.

"Consumers throughout the world … have come to recognize and associate the famous UFFIZI designation as a trademark of the Uffizi Gallery," Ballard Spahr attorneys Brian LaCorte, Jonathan Talcott and Mitchell Turbenson argued for the museum. "Uffizi Gallery therefore has established common law and international registration-based trademark rights in the standard word character mark, UFFIZI."

BoxNic ultimately defaulted and U.S. District Judge David Campbell entered judgment for the museum on Wednesday.

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