Texas Patent Litigation Monthly Wrap-Up: October 2023


The Texas Patent Litigation Monthly Wrap-Up for October 2023 covers three decisions addressing the scope of the work-product and attorney-client privileges, limits on the use of a defendant’s use of its own patents during trial, and indefiniteness determinations during claim construction.

Repairify, Inc. v. Keystone Automotive Industries, Inc. et al, No. 6:21-cv-00819 (WDTX, Oct. 17, 2023) (Gilliland, D.)

The parties sought the court’s intervention to resolve competing requests to compel the production of the other parties’ privileged documents. Two of those requests are discussed below, both of which involved email and, after reviewing the documents in camera, both of which were denied by the court. Id. at 1.

The plaintiff’s motion sought production of an email between the defendant’s third-party supplier Jifeline, the defendant’s outside counsel, and an employee of defendant’s corporate parent. The email contained information from outside counsel about how Jifeline’s products functioned, as well as a patent invalidity analysis. Id. The plaintiff contended that the email was not subject to the work product privilege because its primary purpose “was to aid the parties’ consideration of making the business decision to contract.” Id. at 2. The court disagreed. It determined that the email was protected by the work product privilege because it was “prepared in anticipation of litigation.” Id. Citing U.S. v. Davis, 636 F.2d 1028, 1040 (5th Cir. Unit A Feb. 1981), the court reasoned that, while the email was sent in a business context, its primary purpose was “to assess what patents Jifeline’s products might infringe.” Id. The fact that the email “explicitly mention[ed] the risk of infringement claims” was of particular importance to the court’s determination.

Similarly, the defendant’s motion sought production of an email that was indisputably attorney-client privileged — the defendant’s CEO forwarded an email between corporate counsel, outside counsel, and himself to another individual containing the corporate counsel’s “legal analysis of an asset purchase agreement and potential violations.” Id. at 3. The only question before the court was whether the act of forwarding waived privilege. The court determined it did not. Relying on the Fifth Circuit’s holding that “a voluntary disclosure of information which is inconsistent with the confidential nature of the attorney client relationship waives the privilege,” the role of the individual who received the email was dispositive. Alldread v. City of Grenada, 988 F.2d 1425, 1434 (5th Cir. 1993). Here, the court reasoned, the individual was effectively a member of “Repairify’s board of directors” and thus the forwarding was not “inconsistent” with the confidential nature of the email.

Koninklijke KPN NV v. Telefonaktiebolaget LM Ericsson et al, No. 2:22-cv-00282 (EDTX Oct. 13, 2023) (Payne, R.)

The court issued a lengthy claim construction opinion on more than a dozen terms across five patents. This summary focuses on two of those terms, both of which the court found not to be indefinite.

Claims 1 and 22 of U.S. Patent No. 7,092,705 recited a “technically sufficient parameter setting requirement,” which the defendant argued was an indefinite term of degree.

  1. A method for verifying a modified parameter obtained from changing an operational parameter of a component of a radio network, the method comprising the steps of:

before the modified parameter is implemented in the network, checking the modified parameter on the basis of a rule so as to yield a result, said rule comprising both a technically sufficient parameter setting requirement and a deviation from the setting requirement based on an operational requirement deduced from use of the radio network; and

if the result indicates that the rule has been obeyed, storing the modified parameter in the network such that subsequent network operation will respond to the modified parameter.

Id. at 11 (emphasis added). The defendant contended that “[n]othing in the specification or the prosecution history enables a POSITA to determine objectively whether a given setting. . . is ‘technically sufficient.’” Id. at 9-10. The plaintiff countered that the term was reasonably clear in the context of the intrinsic record. Id. The court agreed with the plaintiff. In the first instance, it found that the defendant had not established that “technically sufficient” was a term of degree like the “high” term that was at issue in U.S. Well Servs., Inc. v. Halliburton Co., No. 6:21-CV-00367-ADA, 2022 WL 819548, at *6 (W.D. Tex. Jan. 17, 2022) (finding that “high pressure” term “would require a POSITA to make a separate determination for every set of circumstances in which a pump may be used”). Id. at 13. Even if it had, however, the court still found that the specification provided “objective boundaries” for the term because it distinguished between requirements established in advance of a particular operator’s usage and requirements that are based on the operator’s usage. Id. citing Liberty Ammunition, Inc. v. U.S., 835 F.3d 1388, 1397 (Fed. Cir. 2016); Exmark Mfg. Co. Inc. v. Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d 1332, 1346 (Fed. Cir. 2018) (“[a]ll that is required is some standard for measuring the term of degree”).

The court reached a similar conclusion with respect to claims 1 and 10 of U.S. Patent No. 10,924,500, which referenced the “normal processing of signals”:

  1. A system comprising:

a telecommunications network configured to identify mobile telecommunications device and comprising a core network and a base station, wherein the base station is configured to receive radio signals from the mobile telecommunications device and further process the radio signals into processed signals and to transmit the processed signals to the core network,

wherein the telecommunications network is arranged to count in the core network a number of occurrences of a certain predetermined signal associated with the mobile telecommunications device, the certain predetermined signal representing an interaction between network devices in the core network for normal processing of signals,

and wherein the telecommunications network is further arranged to register when the number of occurrences of the certain predetermined signal exceeds a level indicating acceptable behaviour of the mobile telecommunications device in the telecommunications network,

wherein the certain predetermined signal indicates handover of the mobile telecommunications device.

Id. at 71 (emphasis added). The defendant contended that the term was “purely subjective,” “has no ordinary and customary meaning in the art,” and that “the ’500 Patent does not provide any objective standard for determining when a ‘certain predetermined signal represent[s] an interaction between network devices in the core network for normal processing of signals.’” Id. at 70. The plaintiff countered that the specification provides sufficient context and that the defendant’s expert had no trouble applying the term during an earlier inter partes review. Id. The court agreed with the plaintiff, finding that “[t]he specification is framed in the context of detecting malicious behavior … and the phrase ‘normal processing’ can be readily understood as referring to processing that is for something other than detecting malicious behavior.” Id. at 72 (internal citations omitted). It was therefore not “merely subjective” like the term “aesthetically pleasing” in Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005). Id.

SB IP Holdings LLC v. Vivint, Inc., No. 4:20-cv-00886 (EDTX Oct. 13, 2023) (Mazzant, A.)

The court considered to what extent a defendant’s own patents could be used during trial. Here, the plaintiff filed a motion in limine to exclude any evidence of the defendant’s patents and how they “relate to the accused products” as “wholly irrelevant to whether Vivint infringes the patents-in-suit.” Id. at 1. The plaintiff responded that it had a right to explain to the jury that it “independently developed its own products and intellectual property” and that its patents were relevant to “rebut[ting] allegations that [it] willfully infringed or that [it] copied [plaintiff’s] technology” Id. at 2.

The court declined to issue a “blanket” prohibition on the defendant’s patents and instead found a middle ground. Id. It determined that the defendant may not argue that “it does not infringe because the accused product is purportedly covered by patents that Defendant owns or licenses.” Id. However, the defendant could “rely on their own patents to rebut alleged willfulness and to present them in relation to damages.” Id. (internal citations omitted). Finally, the court concluded that it could “head off any jury confusion by employing appropriate jury instructions.” Id. at 3.