With More Recent Patents in Family Battle-Tested Against Alice, Acacia’s Teleconference Systems Hits Oracle

September 14, 2019

Teleconference Systems LLC, a subsidiary of publicly traded NPE Acacia Research Corporation, has kept its long-running videoconferencing campaign alive with a new lawsuit against Oracle (2:19-cv-00308) in the Eastern District of Texas. The plaintiff accuses Oracle of infringement through the provision of certain session border controllers, including its Acme Packet 3820/4500/4600/6100/6300/6350 Service Provider Platforms, the Oracle Unified Session Manager, and the Oracle Mobile Security Gateway. Teleconference Systems—as their exclusive licensee—asserts five patents from a family of six, omitting only the earliest member, which the NPE asserted against a slew of Cisco’s TelePresence customers to kick off this campaign back in 2009.

That first wave of litigation—spanning from March 2009 into July 2012—centered around that patent (6,980,526), with cases filed against customers of Cisco’s TelePresence product by Teleconference Systems in the District of Delaware and the Eastern District of Texas. Cisco—not named in the original complaints elsewhere—quickly filed a Northern District of California action seeking, among other things, a declaratory judgment of noninfringement of the ‘526 patent. That complaint named as defendants Teleconference Systems, as the patent’s exclusive licensee, and Margalla Communications, Inc., as their owner. Teleconference Systems added Cisco as a defendant and resisted transfer, but to no avail. Ultimately, the bulk of the parties (i.e., those not quickly dismissed elsewhere) ended up in the Northern District of California, where litigation proceeded against Cisco and its named customers, as well as against Tandberg (a company, acquired by Cisco in April 2010, that offered its own line of videoconferencing products) and several of its customers.

There, District Judge Jeffrey S. White handed down a November 2011 order and a March 2012 order resolving disputes over the meaning of ten terms from the claims of the ‘526 patent. Most notably perhaps, the court denied a motion for reconsideration or clarification of its November 2011 order brought by Teleconference Systems and Margalla. The patentholders argued that the court should not have required that an “enterprise video gateway” (as recited in the claims) have a “globally routable IP address” because the specification of the patent merely indicates that the “gateway also typically has a globally routable IP address . . . ” (emphasis in the briefing). They pointed out that elsewhere the court did not require a claim element to include something mentioned in the specification as only “typically” present. Judge White was not having it: “Although the Court notes that the phrase in the specification in Column 5 at lines 31 through 34 does use the word ‘typically,’ upon review of the entire patent, the Court concluded that the inclusion of a globally routable IP address is not optional. Accordingly, the Court denies Plaintiff’s motion for clarification or, in the alternative, for leave to file a motion for reconsideration.”

In the wake of this claim construction activity, the patentholders sought to amend their infringement contentions. In June 2012, Magistrate Judge Nathanael M. Cousins recommended denying the motion to do so, finding that the patentholders had not met their burden to establish that they had been diligent in “discovering the basis for [the] proposed amendments” or that the defendants would not suffer undue prejudice if the motion were granted. Within a few weeks, in early July 2012, the parties submitted a stipulation of dismissal in light of a settlement between Teleconference Systems, Margalla, Cisco, and Tandberg (then a subsidiary of Cisco), which also ended litigation with Applied Materials, AT&T, Avago Technologies, Baxter Healthcare, Bayer, Enbridge, Frito-Lay, GE, HSBC, One Communications, SAP, Staples, and Wells Fargo (Wachovia). (Defendants dropping out before this stage included AIG, AMD, Astrazeneca, Cabela’s, Dow Chemical, DreamWorks, Ericsson, HP, Johnson & Johnson, Marriott, and SBM Atlantia.)

Nearly five years later, with four additional related patents now in hand (8,665,759; 9,154,734; 9,253,444; 9,419,939), Teleconference Systems filed a March 2017 complaint against Genband in the Eastern District of Texas. The case ended in a dismissal with prejudice, with earlier filed documents suggesting a settlement, within months of filing, in September 2017.

In May 2018, Teleconference Systems then hit Metaswitch, also in the Eastern District of Texas, this time with only the ‘734, ‘444, and ‘939 patents. The defendant filed a motion challenging the asserted claims of those patents under Alice as patent-ineligibly drawn to the abstract idea of videoconferencing. District Judge Jeremy D. Kernodle rejected the attack: “. . . the asserted claims focus on a specific device—an allegedly improved videoconferencing services switch—not merely the idea of videoconferencing itself”. (The order goes on to deny the Metaswitch motion on further grounds, that, even if the claims are directed to an abstract idea, they, taken as a whole, transform that idea into a “patent-eligible invention”.) The parties proceeded into claim construction, Metaswitch contending that multiple claim terms should be subjected to means-plus-function treatment, when, just before a June 2019 Markman hearing, the parties sought and received a stay to finalize a settlement. The case was dismissed with prejudice in early August 2019.

Teleconference Systems asserted the ‘759, ‘734, ‘444, and ‘939 patents in its new complaint against Oracle, together with the most recent member of the family (10,135,889), which issued in November 2018. The family has an estimated priority date in March 2000, based on the filing of a provisional application. Prosecution of at least one related application, filed in September 2018, continues before the USPTO.

Named inventor Saqib Jang, the sole shareholder of Margalla, and coinventor Mark Kent (of Los Altos, California), assigned their rights to the family to Margalla beginning in June 2001. Reportedly a veteran of Sun Microsystems and NEC, Jang identifies himself as the founder and “principal consultant” with Margalla, touted as a “marketing, analysis, and consulting firm focused on the needs of storage and server networking companies” with recent assignments with “Cisco Data Center BU (2018-2019) . . . Quantum Corp. (2017) . . . [and] . . . Chelsio Communications (2016-2017)”.

Acacia appears to be undergoing a rebirth—and a return to more frequent litigation—after a comprehensive leadership change triggered by activist investors Sidus Investment Management and BLR Partners LP last year. With the overhaul of Acacia’s executive leadership now apparently nearing completion, the NPE’s freshly reconstituted board is reportedly working to “advance” the company’s IP business. Get the full details at “A New Dawn at Acacia?” (September 2019). Also available on RPX Insight is a one-page, downloadable assessment of the Teleconference Systems campaign. 9/13, Eastern District of Texas.