The backlash against Round Rock Research’s arsenal of patents appears to be gaining steam.
Last October we reported that Round Rock, the two-year-old patent licensing company founded by former Kirkland & Ellis IP powerhouse John Desmarais, was sued by SanDisk Corporation for declaratory judgment that 11 Round Rock patents were invalid and not infringed. ASUS Computer filed a second declaratory judgment suit over ten Round Rock patents in December. And now Motorola Solutions has joined the fray: On Wednesday the company’s lawyers at Hogan Lovells and Morris Nichols Arsht & Tunnell filed a 17-page Delaware federal district court complaint seeking declaratory judgment that five Round Rock patents are invalid and not infringed.
The five Round Rock patents targeted in Wednesday’s suit all relate to radio frequency identification technology, which retailers use to track their products. In December Round Rock sued a dozen major companies–including Dole, PepsiCola, and Amazon–over the patents. The complaint claims that one of those defendants is a Motorola Solutions customer, and that the defendant and other customers of Motorola’s RFID products have demanded that Motorola indemnify and defend them against Round Rock’s infringement claims. (Motorola doesn’t identify which of the Round Rock defendants is a customer.)
Meanwhile, Round Rock and its lawyers at Demarais’s law firm, Desmarais LLP, are busily fighting the other two pending declaratory judgment suits. Last month San Francisco federal district court judge Richard Seeborg refused to dismiss the SanDisk complaint, and on March 1 Round Rock asserted infringement counterclaims. (SanDisk is represented by Vinson & Elkins.) Oakland federal district court judge Claudia Wilken hasn’t yet ruled on a Jan. 1 motion to dismiss the suit brought by ASUS and its lawyers at Perkins Coie. The patents in the SanDisk suit purportedly cover flash memory products; the ASUS suit relates to computer memory and display technology.
We reached out to Motorola Solutions counsel Eric Lobenfeld of Hogan Lovells but didn’t hear back. Motorola Solutions isn’t included in Google’s Motorola acquisition but will reportedly continue to cross-license Motorola Mobility’s 24,000 patents under the Google deal.
Demarais, who declined to comment on the Motorola suit, isn’t the only former big firm IP litigator in the news this week. As The Recorder’s Amy Miller reports, former Weil, Gotshal & Manges litigation co-chair Matthew Powers targeted Amazon on Monday in his first infringement suit after founding Tensegrity Law Group last year. The complaint, filed on behalf of OIP Technologies, alleges that a decade ago Amazon ripped off plans for an automatic pricing system developed by an OIP predecessor company and is infringing OIP’s patent on the technology. As Miller notes, Powers represented Amazon while at Weil, raising the question of whether he could be vulnerable to a disqualification bid by his former client.
This article originally appeared in The Am Law Litigation Daily.
