Judge Albright Invalidates Ikorongo Patent Claims as Supreme Court Rejects Appeal of Related Venue “Manipulation” Ruling
- April 17, 2022
Category: Patent Litigation Feature
Western District of Texas Judge Alan D. Albright has invalidated two of the patents being asserted by Concert Technology Corporation subsidiaries Ikorongo Technology, LLC and Ikorongo Texas, LLC, ending litigation targeting Bumble over its dating app. Ruling on April 12, just over a month after cancelling a scheduled trial, Judge Albright held that the asserted patent claims were invalid for violating the original patent requirement, which mandates that an invention described in a reissued patent claim be explicitly disclosed in the patent’s specification. The decision comes a week after the US Supreme Court declined to review a Federal Circuit ruling that reversed a related transfer denial from Judge Albright—a ruling in which the latter court chided the plaintiffs for their strategic “manipulation” of patent venue.
The Venue Ruling Just Upheld: Court Not “Bound” by Plaintiffs’ “Efforts to Manipulate Venue”
That prior venue ruling stemmed from the rather unusual patent ownership arrangement underpinning this campaign, which kicked in March 2020 with suits against smartphone makers (LG Electronics (LGE) and Samsung) as well as makers of dating apps (Bumble) and ridesharing apps (Lyft). (Uber was added to the campaign that September.) Those initial complaints named Ikorongo Texas as sole plaintiff, with coplaintiff Ikorongo Technology added as coplaintiff shortly thereafter. Both sets of complaints specified that Ikorongo Texas holds rights to the asserted patents—acquired the same month the cases were filed—that are geographically limited to certain counties in the Western District: “[P]ursuant to the principles of [the Supreme Court’s 1891 holding in] Waterman v. Mackenzie”, Ikorongo Texas alleged that it is “the owner of the exclusive right under the Asserted Patents within and throughout a specified part of the United States (‘the Specified Part’) that includes specific counties within the present judicial district, including the right to sue for past, present and future infringement and damages thereof”. The complaints further stated that Ikorongo Technology owns the corresponding rights outside of the “Specified Part”. (See here for further background on the plaintiffs and Concert Technology.)
In September 2020, LGE and Samsung moved to transfer the cases against them to the Northern District of California, where they stated the accused apps were all developed—whereas none had been developed in the Western District of Texas. Judge Albright denied those motions in March 2021, holding that the defendants had not established that the case “might have been brought” in the transferee venue. While holding that Ikorongo Tech’s allegations would subject them to venue there, he found that because Ikorongo Texas only had the right to assert the patents in the Western District, venue would not have been proper as to that plaintiff in Northern California. This, Judge Albright concluded, rendered venue improper as to the entire action.
However, the Federal Circuit firmly rejected this rationale in its June 2021 In re: Samsung ruling, its first precedential decision reversing Judge Albright on venue (2021-0139, 2021-0140)—though far from the only time that court has overturned his rulings on that issue via mandamus review. In Samsung, the Federal Circuit rejected Judge Albright’s holding that venue was improper in California—in particular, faulting his underlying conclusion that infringement could only occur in Texas within the geographically limited scope of the rights purportedly held by Ikorongo Texas. While acknowledging that on its face the complaint did establish that the Northern District of California could not be a proper venue based on the aforementioned distribution of rights, the court rejected this as the result of gamesmanship: “[I]n ascertaining proper venue, we are not bound by a plaintiff’s efforts to manipulate venue”.
The court flagged several examples of such manipulation: “Ikorongo Texas was created and assigned its targeted geographic rights” in West Texas the month before the cases were filed. Furthermore, Ikorongo Texas and Ikorongo Tech are fully owned by the same five individuals, share an office, and had the same person sign all “relevant agreements” on their behalf. Indeed, the court observed that “[n]othing would prevent the Ikorongo entities from undoing the assignment if they so desired”. For those reasons, and because Ikorongo Texas apparently had no other operations apart from those related to patent assertion, the Federal Circuit observed that the entity “seems to exist for the sole purpose of limiting venue to the Western District of Texas”. The Federal Circuit concluded that as a result, it had the discretion to give no separate consideration to “Ikorongo Texas’s “geographically bounded claims”, and thus ruled that venue would have been proper in the Northern District of California—as “the presence of Ikorongo Texas is plainly recent, ephemeral, and artificial” under applicable precedent.
The Federal Circuit applied the same reasoning in granting an overlapping mandamus petition filed by Uber the following month, and in September, Judge Albright also granted a motion for reconsideration of a transfer motion filed by Lyft in light of the Federal Circuit’s guidance. That same August, the appellate court rejected the plaintiffs’ motion for en banc and panel rehearing, and they filed a petition for writ of certiorari with the Supreme Court in December.
That petition alleged that the Federal Circuit made a variety of legal and factual errors in its mandamus decision, asserting in part that the statutes addressed in the court’s cited precedent include discretionary provisions that do not apply in the context of patent venue. As a result, the Ikorongo plaintiff-appellants argued, the Federal Circuit had improperly created an “extra-textual exception” to a statutory mandate by declining to consider Ikorongo Texas’s geographically limited rights in determining venue. By substituting its own policy judgments for those of Congress, the court was wrongly assuming a “classic legislative, not judicial, function”, they alleged. The petition further argued that the Supreme Court should revisit Gulf Oil v. Gilbert, its 1946 decision establishing factors for balancing the litigants’ interests for convenience transfer analyses, in light of purported modern gamesmanship of these factors. The defendant-appellants waived their right to file responses.
On April 4, 2022, the Supreme Court rejected the petition, providing no rationale for this denial per its usual practice.
The Bumble Case: Asserted Patents Invalid Under Original Patent Requirement
Meanwhile, as the aforementioned transfer battle unfolded in the other cases, the Ikorongo plaintiffs’ case against Bumble moved forward—with a scheduled trial moved from February to March 2022. In December 2021, Bumble filed a motion for summary judgment, arguing that two asserted reissue patents (RE45,543; RE47,704) are invalid under the original patent requirement established by 35 USC Section 251, which as noted above provides that reissued claims may not include inventions not explicitly disclosed in the specification. As interpreted by the Federal Circuit in Antares Pharma v. Medac Pharma (2014), it is not enough that the original specification “merely suggested or indicated” or “serially mentioned” the limitations within a reissued claim.
At issue here was the specification of the related 7,080,139 patent, of which the ‘543 and ‘704 patents were filed as broadening reissues. Bumble described the ‘139 patent as directed to “sharing . . . experiences”, stating that this “is the core concept animating the entirety of the specification, and it is part of every one of the original patent’s claims”. However, Bumble asserted that the ‘543 and ‘704 patents are instead “drawn to a different idea that is not ‘clearly and unequivocally disclose[d]’ as a ‘separate invention’ in the original patent, i.e., collecting and sharing ‘geographic location data’ recorded ‘using a satellite-based location-fixing protocol,’ combined with a host of additional limitations”. As a result, Bumble argues, the reissue claims are invalid under the original patent requirement.
Judge Albright agreed with the defendant in his April 12 order granting summary judgment. In particular, he focused his analysis on three “aspects common to the reissue claims”. First, Judge Albright noted that the collection of “visited geographic location data” is mentioned once as an optional type of data collection for the disclosed “visited location database (‘VLD’)”, holding that this satisfies the original patent requirement.
However, Judge Albright determined that neither of the other two aspects were described “clearly and ambiguously” in the specification. The second aspect was “sharing the visited geographic location data separate and apart from sharing experiences generally as the original invention” (emphasis in original). “The separation plays an important role because it changes the fundamental nature of the invention from a system for sharing experiences, such as reviews of activities, into a tracking device that allows your friends to track your location”. Here, Judge Albright found that the specification only mentions “geographic” location data “as something ‘also’ stored alongside other experience and location information”. As a result, the specification does not “unequivocally” support treating the storage of “geographic” location data as the original invention unless the storage of “the rest of the information in the VLD” is also claimed. This was not the case: “The Court instead [found] that the specification repeatedly and consistently describes sharing other experience-related information in combination with the location”, further finding that the claimed combination of sharing location data without other information is not found anywhere in the ‘139 patent.
The third common aspect at issue was whether the claimed “satellite-based” location tracking was “part of the original invention”, and Judge Albright concluded that it was not. Indeed, he noted that the “original specification does not use the word ‘satellite’ at all”, and at most mentions that location-tracking can be achieved via GPS—but even that cited language explicitly describes the precise manner of device location tracking as “unimportant”. As such, “[t]he mention of ‘GPS” and ‘DGPS’ as part of a serial list of suggestions does not amount to an explicit and unequivocal disclosure that the scope of the original invention is limited to all ‘satellite-based location-fixing protocol[s]’ as recited in reissue claim 33, at the exclusion of Bluetooth, triangulation, radio signal, Loran, and other location fixing protocols” (citing Antares).
After dispensing with the plaintiffs’ counterarguments, Judge Albright concluded by granting summary judgment that “asserted claims 57, 63, 64, 66, 68, and 70 of U.S. Patent No. RE45,543, and asserted claims 33, 34, 38, 45, and 46 of U.S. Patent No. RE47,704, are invalid” under the original patent requirement.
As noted above, the court cancelled a trial against Bumble that it had previously scheduled on March 21, doing so without explanation on March 3. The order came the same day as the court’s Markman order, which per Judge Albright’s usual practice lists the court’s claim construction rulings without explaining the court’s rationale.
The plaintiffs have indicated that they plan to appeal Judge Albright’s invalidity ruling to the Federal Circuit. Meanwhile, the four transferred California actions have been stayed since late last year pending the outcome of the plaintiffs’ Supreme Court petition. On April 8, after that petition’s denial, the parties in the Uber case filed a joint stipulation seeking to maintain that stay until the Federal Circuit resolves the remaining appeal, given that the two invalidated patents are also at issue in that case (and in the other California suits). However, District Judge Susan Y. Illston denied that stipulation without explanation on April 11, instead scheduling a status conference for April 22. The other parties have since filed status reports suggesting that a combined conference be held to address all four cases.