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

• Patent infringement jury trials remain on hold for at least a couple more weeks as COVID-19 cases continue to mount.

• If/when it gets to trial in the Western District of Texas, MV3 Partners won't have the PTAB to worry about.

• The PTAB is going to leave it to the parties to figure out if amended claims are patentable.

• For the second time in a year, Sidley Austin has helped add $10 billion in market cap to Amgen.

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

Chief Judge Leonard Stark of the U.S. District Court for the District of Delaware. (Photo: Jason Doiy/ALM)

Patent Jury Trials Still on Hold, for Now

This was the month that live, in-person patent infringement jury trials were set to resume in Texas. It was cause for celebration in some parts of the patent bar and alarm in others. But it appears that settlements, international travel restrictions and, of course, the ongoing pandemic are pushing things back at least a few more weeks.

Two trials had been set for this week before Eastern District of Texas Chief Judge Rodney Gilstrap. One was continued last month until September because all the witnesses for one party live in the UK and are banned from traveling to the U.S. right now. The other settled, as I wrote last week.

Earlier this week, jury consultant Tara Trask told my ALM colleague Ross Todd about the extra precautions Judge Gilstrap is taking with jurors and voir dire. "The problem that he has, I think, is that Marshall and all of East Texas has largely been spared from [the pandemic], but when he starts flying in lawyers from all over the country and then you've got defendants and plaintiffs from all over the world really who come into East Texas … He's got to be thinking about that," Trask said. "He's a smart guy. So, we'll see."

Across the district in Tyler, U.S. District Judge Robert Schroeder III is gearing up for the umpteenth trial between Virnetx and Apple over secure communication patents. This is a damages retrial from a $503 million judgment in which the Federal Circuit found that only one of two accused Apple products infringes the VirnetX patents. Caldwell Cassady & Curry (VirnetX) is set to face off against Kirkland & Ellis (Apple), with jury selection to begin Aug. 17.

And in the Western District of Texas, U.S. District Judge Alan Albright has pushed back MV3 Partners v. Roku from its scheduled Aug. 3 trial date to Sept. 8 due to pandemic-related concerns.

"The postponement of the MV3 v. Roku matter to September was another sign that things are backing up a bit in Texas despite the strong effort to resume jury trials," said Cadwalader, Wickersham & Taft partner John Moehringer, whose firm is tracking the impact of COVID-19 on patent cases. "It seems likely that August will be the earliest something might proceed in Texas."

In Delaware, meanwhile, Chief Judge Leonard Stark is planning to split the baby by resuming trials with limited numbers of lawyers and jurors in court but all witnesses testifying by video feed. The trial will be simulcast to another courtroom for the public and for non-essential members of the trial teams. With those restrictions, trial is scheduled to kick off Aug. 3 between Sunoco Partners Marketing and Terminals (Winston & Strawn) versus Powder Springs Logistics (Meunier Carlin & Curfman) and Magellan Midstream Partners (Fish & Richardson).

Stark issued his detailed order last week, and it's worth recapping some of the highlights here:

➤ "It is clear that not all of the witnesses can safely travel to Delaware and testify in person," the judge wrote. "The Court is concerned that unless all witnesses can do so, there is a risk of unfair prejudice to the side which has more witnesses who end up being unable to come to the courtroom." While only a few witnesses know they can't attend today, "on any given day that number could increase, and the increase could disproportionately affect one side or the other."

➤ "By excluding all witnesses from testifying in court, the Court will not confront the issue of whether to permit or require witnesses to testify with face coverings (or alternatively to prohibit witnesses from doing so). Not having witnesses in the courtroom will also make it much easier to maintain social distancing in the courtroom and protect the health of those in the courtroom."

➤ Plaintiffs will be limited to four representatives in the courtroom and the two defendants to three each. That's over the course of the trial, with no substitutions. One slot each is reserved for Delaware counsel. The rest can be out-of-state counsel, jury consultants and/or corporate representatives.

➤ Still to be determined: How voir dire will be conducted, where jurors will be seated, where they'll go during breaks and deliberations, where counsel tables will be placed, whether counsel can be in the same room with witnesses when they're being examined remotely, and "face covering and any other PPE requirements for those of us in the courtroom."

➤ "This is something of an experiment," Stark concluded. "I expect I will follow different procedures in other cases and at different times and I strongly suspect my colleagues (in the District of Delaware and elsewhere) will do things differently than I plan to do at this trial. I am entering this order as the presiding judge in this specific case, not as Chief Judge of the District."

"Judge Stark has really been taking a lead in trying to fashion a way to proceed with trials in Delaware," says Cadwalader's Moehringer. "The Sunoco order was quite a statement about his current thoughts."

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Kasowitz Benson Torres partner Jonathan Waldrop

The Race Isn't Always to the Swift

I mentioned the MV3 Partners case. For awhile it looked like a race to see if Judge Albright could hold a trial before the PTAB could invalidate MV3′s patent on a mobile set top box for large-screen display.

The PTAB won the race, but lo and behold: Its final written decision issued Monday found no challenged claims unpatentable. Unified Patents v. MV3 Partners also endorses MV3′s and Judge Albright's claim construction.

"This is a tremendous vindication for our client and its unique and path-breaking technology," Kasowitz Benson Torres partner Jonathan Waldrop said in a written statement. "We have vanquished all claims of invalidity by Unified Patents, and we look forward to proving at trial the tens of millions of dollars in damages MV3 has suffered as a result of Roku's infringement of the same patent."

If and when there is a trial.

MV3 was represented by Waldrop and Kasowitz partners Darcy Jones and Marcus Barber, special counsel ThucMinh Nguyen and associates John Downing, Heather Kim, Jack Shaw and Paul Williams. Unified was represented by in-house staff and by Erise IP.

 

The PTAB Isn't Going to Find Your Arguments for You

Speaking of the PTAB, we had a Precedential Opinion Panel decision this week. PTO Director Andrei Iancu, Commissioner for Patents Drew Hirshfeld and Chief APJ Scott Boalick held that the board may raise its own ground of unpatentability against substitute claims in motions to amend. But they made clear that the board will do so only in rare circumstances, such as when a petitioner has stopped participating in a proceeding. The POP turned back amicus arguments from Google, the High-Tech Inventors Alliance and Askeladden that the board shouldn't blind itself to any ground of unpatentability supported by the evidence.

Petitioner Hunting Titan "vigorously prosecuted its case but made a tactical decision not to raise anticipation arguments," Boalick wrote for the POP in Hunting Titan v. DynaEnergetics Europe. "The public interest is not well-served by the Office filling in gaps intentionally left void by IPR petitioners."

Womble Bond & Dickinson and Moyles IP piloted DynaEnergetics to the win. The team included Womble partners Barry Herman, Christy Dupriest, Preston Heard and Brent Babcock, senior counsel Will Hubbard, and associates Ana Friedman and Julie Giardina, plus Lisa Moyles and Jason Rockman of Moyles IP.

Quick Hits

➤ Sidley Austin has made Amgen and its shareholders $10 billion richer—again. I wrote last summer how Amgen's market cap popped $10 billion after U.S. District Judge Claire Cecchi enjoined Sandoz from marketing a competitor to Amgen's $5 billion a year rheumatoid arthritis biologic Enbrel. It happened again July 1 after the Federal Circuit affirmed Cecchi by a 2-1 vote and Amgen's stock rose 8.5% on the news. (Just wondering: How much might en banc and cert votes be worth?)

The Federal Circuit rejected Sandoz's validity challenges based on obviousness-type double patenting, written description and obviousness. Constantine Trela Jr. had the winning argument for Amgen, with help from Sidley partners Steven Horowitz, Vern Winters, Joshua Fougere, Jeffrey Kushan, and from Amgen in-house attorneys James High, Drew Diamond, Joseph Lasher, Dennis Smith and Wendy Whiteford. Goodwin Procter and Winston & Strawn represented Sandoz.

➤ Four months ago the Federal Circuit heard arguments in Pacific Coast Building Products v. CertainTeed Gypsum, an appeal from an indefiniteness ruling by U.S. District Judge Lucy Koh. I was surprised for an indefiniteness case how much the questioning focused on expert testimony, and thought that might be a bad sign for Latham & Watkins partner Matt Moore, who was defending the judgment on behalf of drywall competitor Saint Gobain. It turns out I was wrong—the court affirmed Koh's ruling last week, along the way lauding the "detailed testing and analysis" from expert D. Paul Miller. Latham partners Rick Frenkel, Adam Greenfield and Gabriel Bell assisted Moore, along with associates Reba Rabenstein, Gabrielle LaHatte, Diane Ghrist and Ashley Finger.

➤ Earlier this year CardioNet and Sidley Austin scored a patent eligibility win by persuading the Federal Circuit that an automated process for identifying atrial fibrillation and flutter is eligible for protection. Now opponent InfoBionic and Latham & Watkins have returned the favor, persuading a different panel that another CardioNet patent—this one combining machine and physician monitoring—is ineligible. "Spot-checking systems for quality control is the sort of longstanding practice that courts have consistently held to be an abstract idea and is performed here using generic hardware," Judge Alan Lourie wrote for the court July 1 in CardioNet v. InfoBionic.

During the June 4 telephonic arguments, Latham partner Max Grant emphasized a Federal Circuit decision that had issued just a few weeks earlier, Electric Communications Technology v. ShoppersChoice. Judge Raymond Chen asked Grant to repeat the case name, adding, "you may know Federal Circuit case law better than I do." Asked about it this week, Grant said, "It is a really nice compliment. It is absolutely false." He credited his partners Gabriel Bell and Charles Sanders with spotting the case and preparing a supplementary filing so it would be part of the record.

➤ Haynes and Boone has added patent prosecutor Philip Albert to its Palo Alto office. "Philip is an exceptional lawyer who fits in perfectly with our culture, our historical strength representing technology clients, and our ongoing plans to expand our presence in California," Haynes and Boone Managing Partner Tim Powers said in a written statement. Albert joins the firm from Davis Wright Tremaine. Haynes and Boone has hired ten other lawyers in the Bay Area in recent months and has plans to open an office in San Francisco.

➤ Procopio, Cory, Hargreaves & Savitch has added a seven-attorney team of patent attorneys from Arent Fox led by partners Jonas Hodges and Sheree Rowe. My ALM colleague Samantha Stokes reports that the discussions began after mid-March, making the recruiting and hiring process a 100 percent virtual experience.

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