IP Law Daily, WORTH NOTING—Other IP law developments, (Mar 7, 2025)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community.

PATENT—Fed. Cir.: The Patent Trial and Appeal Bard did not err in finding that certain of U.S. Patent No. 7,933,431 (the ’431 patent) were unpatentable, the U.S. Court of appeal for the Federal Circuit has held. In an opinion issued concurrently, a different Federal Circuit panel affirmed a district court’s ruling that the claims challenged in this appeal were invalid. See Apple Inc. v. Gesture Tech. Partners, LLC, No. 23-1475 (March 4, 2025). And in a different appeal of an inter partes review proceeding, the Federal Circuit recently affirmed that the Board has jurisdiction over IPRs concerning expired patents. See Apple Inc. v. Gesture Technology Partners,127 F.4th 364, 368–69 (Fed. Cir. March 4, 2025). Therefore, the only issue that remained in this appeal was whether the Board erred by denying Gesture’s request for additional discovery. The Federal Circuit held that it did not. Gesture waited more than a year to request the additional discovery regarding whether Samsung was real party in interest or in privity with the patent holder. The Board acted within its discretion in denying the discover request (Gesture Technology Partners, LLC v. Unified Patents, LLC, No. 23-1444 (Fed. Cir. March 4, 2025)).

PATENT—Fed. Cir.: Databricks, Inc. was not entitled to a writ of mandamus directing the Eastern District of Texas (EDTX) to transfer a patent infringement action filed by R2 Solutions LLC to the Northern District of California (NDCA). Databricks had not shown NDCA was clearly more convenient, according to the U.S. Court of Appeals for the Federal Circuit. The district court did nor err in finding that judicial economy weighed in favor of keeping the case based on its familiarity with the asserted patent and technology from other suits. Databricks also failed to identify any witness in NDCA unwilling to come to trial or any source of proof that was not also readily accessible from EDTX (In re Databricks, Inc., No. 25-113 (Fed. Cir. March 4, 2025)).

PATENT—Fed. Cir.: The U.S Court of Appeals for the Federal Circuit has denied two petitions for mandamus filed by Hong Kong-based Lenovo Group for an order directing the Eastern District of Texas (EDTX) to dismiss two patent infringement actions for lack of personal jurisdiction Lenovo stated that it is a holding company that does operate in Texas and does not manufacture, offer, or sell the accused products, but the district court declined to grant Lenovo’s motions in light of a factual dispute over its control of its subsidiaries. In general, absent exigent circumstances, mandamus is unavailable to review rulings on motions to dismiss for want of personal jurisdiction, because a post-judgment appeal is an adequate remedy. “And there are good reasons not to intervene at this time to review what amounts to a preliminary assessment of the facts and allegations presented,” the Federal Circuit said (In re Lenovo Group Ltd., No. 25-111 (Fed. Cir. March 4, 2025)).

TRADE SECRET NEWS—New bills introduced in the Florida legislature in late February would establish regulations for employment agreements in order to encourage investment and protect confidential business information. The bills would provide that certain garden leave and noncompete employment agreements are not a restraint of trade or an attempt to monopolize trade or commerce. The provisions would establish rules for garden leave and noncompete agreements that limit their duration to a maximum of four years and would apply only to "covered employees," defined as those earning more than twice the annual mean wage or with access to confidential information. The bills would impose notice requirements on employers, would allow require a court to enter a preliminary injunction: (1) to stop covered employees, businesses, entities, or individuals if a breach of a covered garden leave agreement is alleged; or (2) to prevent covered employee from providing services during noncompete period; would allow prevailing employers to recover attorney fees. The identical bills, titled “The Florida Trade Secret Protection Act” (S.B. 922 and. H.B. 1219) would add two new sections to Florida law: part I of ch. 542, F.S., entitled “The Florida Antitrust Act of 1980”; and part II of ch. 542, F.S., entitled “The Florida Trade Secret Protection Act.”

Attorneys: John Wittenzellner (Williams, Simons, and Landis PLLC) for Gesture Technology Partners, LLC. Debra Janece McComas (Haynes and Boone, LLP) for Unified Patents, LLC. Michael John Sacksteder (Fenwick & West LLP) for Databricks, Inc. Edward R. Nelson (Nelson Bumgardner Conroy PC) for R2 Solutions LLC. Jacob Adam Schroeder (Garrett & Dunner, LLP) for Lenovo Group Ltd. Brett E. Cooper (BC Law Group, PC) for Universal Connectivity Technologies Inc.

Companies: Gesture Technology Partners, LLC; Unified Patents, LLC; Databricks, Inc.; R2 Solutions LLC; Lenovo Group Ltd.; Universal Connectivity Technologies Inc.

News: Patent TechnologyInternet TradeSecrets FedCirNews FloridaNews TexasNews USPTO