Ramot at Tel Aviv University Ltd. v. Cisco Systems, Inc. DC

On September 28, 2021, the USPTO granted to Ramot at Tel Aviv University Ltd., the “Business Engagement Center” of Tel Aviv University, another patent in a family of nine already, all generally related to converting digital electric data into modulated optical streams. Three of those patents are in litigation against Cisco and Acacia Communications (acquired by Cisco this past March) that has been stayed—one case in the Eastern District of Texas (against Cisco) and the other in the District of Delaware (against Acacia) to await the outcome of a set of ex parte reexams. Both companies have now filed a complaint in Delaware seeking a declaratory judgment of noninfringement of the newly issued patent.

Just after a January 2021 stay halted its Eastern District of Texas litigation against Cisco, Ramot at Tel Aviv University Ltd., the “Business Engagement Center” of Tel Aviv University, has filed a Delaware suit over two of the same three patents, this time against Acacia Communications (1:21-cv-00295). The patents generally relate to converting digital electric data into modulated optical streams, with Acacia accused of infringement through the provision of certain optical transceiver modules and DSP chips. District Judge Rodney Gilstrap imposed the stay, at the relative eleventh hour ahead of a March 1 trial date, in light of ex parte reexaminations of the patents-in-suit—the first of three recent cases to see action stopped via the same mechanism.

The Federal Circuit has declined to step into an ongoing battle over the NHK-Fintiv rule, a set of Patent Trial and Appeal Board (PTAB) decisions allowing the Board to deny institution for an America Invents Act (AIA) review trial based on the status of parallel district court litigation. On October 30, the appeals court denied a mandamus petition and related set of appeals filed by Cisco that raised a series of procedural and substantive challenges against the rule, holding that it lacked jurisdiction under the Supreme Court’s Cuozzo opinion. That same day, it also dismissed a Google appeal on that same basis. Despite the Federal Circuit’s decision, a parallel district court lawsuit contesting the NHK-Fintiv rule remains active in the Northern District of California. As recently reported by RPX, that action—filed by Cisco and Google along with Apple and Intel—escalated in late September after a group of prospective intervenors, including US Inventor, moved to block the institution of all AIA review trials while the litigation plays out.

Tel Aviv University (Ramot at Tel Aviv University Ltd.) has filed suit against Cisco (2:19-cv-00225) for the second time in the Eastern District of Texas, now asserting two later-issuing family members of patents briefly in suit there in 2014. The patents generally relate to converting digital electric data into modulated optical streams. Cisco is accused of infringement through the provision of fiber-optic networking equipment that allegedly utilizes electro-optical modulation techniques, including various Cisco 100G, 200G, and 400G optical modules.