Earlier this year, RPX provided a detailed walk-through of a Special Master’s report and recommendation regarding attorney fees that defendants Apple and Cisco sought in litigation brought by Straight Path IP Group, Inc. The Special Master contended with a lack of caselaw regarding how alternative fee arrangements should be handled in the exceptional case context, ultimately recommending that $2.3M in fees should be awarded to Apple and that a reduced $1.9M should be awarded to Cisco: “This report concludes that such alternative fee arrangements, whether flat fee or otherwise, may be compensable under Section 285, but that prevailing parties must be required to satisfy appropriate reasonableness standards to ensure fairness and to protect against potential abuse”. District Judge William H. Alsup has now adopted those recommendations, bringing the “protracted fee dispute—‘one of the least socially productive types of litigation imaginable’”—to an end.

In early December 2019, District Judge William H. Alsup appointed a Special Master to resolve a dispute between plaintiff Straight Path IP Group, Inc. and defendants Apple and Cisco over the reasonableness of requested fees and costs. After granting each defendant summary judgment of noninfringement, Judge Alsup awarded fees in a late-November order that “finds that the shifting sands of the patent owner’s delineations of the claimed invention’s scope—instigated by its narrowing of scope to avoid invalidity before the Federal Circuit, followed by its broadening of scope to accuse others of infringement in the district court—render the above-captioned actions ‘exceptional’”. The appointed Special Master has returned his report and recommendation, indicating that Apple should be awarded $2.3M in fees; Cisco, a reduced $1.9M, the latter to compensate for work performed under an alternative fee arrangement with counsel: “This report concludes that such alternative fee arrangements, whether flat fee or otherwise, may be compensable under Section 285, but that prevailing parties must be required to satisfy appropriate reasonableness standards to ensure fairness and to protect against potential abuse”.

Codec Technologies LLC has filed ten new suits in its sole litigation campaign against Craig Electronics (2:16-cv-01426), Curtis (2:16-cv-01436), Datawind (2:16-cv-01437), Global Phoenix Computer Technologies Solutions (2:16-cv-01432), Naxa Electronics (2:16-cv-01428), Pivos Technology Group (2:16-cv-01427), PLR IP Holdings (2:16-cv-01435), RSPA (d/b/a Sungale) (2:16-cv-01429), Voxx Electronics (2:16-cv-01430), and Vulcan Electronics (2:16-cv-01431). The new complaints allege that tablets made and sold by each defendant infringe a single patent (6,825,780) generally related to data compression using multiple encoders on a single integrated circuit.

In the wake of several favorable Patent Trial and Appeal Board (PTAB) decisions, Straight Path IP Group, Inc. has refiled cases that it had earlier withdrawn, against Avaya (3:16-cv-03459) and Cisco (5:16-cv-03463) in the Northern District of California and against Verizon (Cellco) (1:16-cv-04236) in the Southern District of New York. All three complaints assert three VoIP patents (6,108,704; 6,131,121, 6,701,365), with a fourth patent (6,009,469) from the same 11-member family asserted against Avaya and Cisco. Those favorable PTAB decisions came in response to several of the over 25 petitions for inter partes review (IPR) filed, joining one re-examination certificate for each of five of the patents-in-suit, which have been asserted in two campaigns stretching back almost exactly a decade.

The Patent Trial and Appeal Board (PTAB) has upheld two Straight Path networking patents (6,108,704; 6,131,121) and partially invalidated a third (6,009,469) in a combined decision issued on March 4, 2016. The PTAB’s ruling addressed three petitions for inter partes review (IPR) filed by Samsung (IPR2014-01366, IPR2014-01367, IPR2014-01368), later joined by Cisco and Avaya (IPR2015-01011, IPR2015-01007, IPR2015-01006), each of which sought to challenge various claims in the patents as obvious over prior art. In the -1366 and -1368 IPRs, the PTAB declined to overturn claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of the ‘704 patent and claims 1-3, 5, 6, 9, 10, 14, 17 and 18 of the ‘121 patent, finding that the petitioners had not shown by a preponderance of the evidence that the challenged claims were invalid. However, in the -1367 IPR, the Board found that the petitioners had met their burden of proof for a subset of the asserted grounds, finding that claims 1, 2, 5 of the ‘469 patent were unpatentable. The patents all generally relate to point-to-point communication over a network.

In the first half of May 2015, RPX saw 15 patent transfers recorded with the USPTO.

Straight Path IP Group’s (SPIG) litigation campaign continues with suits against Apple, Avaya, Cisco, and Verizon. The four patents-in-suit relate to point-to-point communication over a network and have been used in many of SPIG’s previous suits (6,009,469, 6,108,704, 6,131,121, 6,701,365). SPIG has filed 24 suits over the last year, targeting almost 20 defendant companies that provide VoIP and media streaming services. VoIP services are the accused products in the suits against Avaya, Cisco, and Verizon; the suit against Apple accuses video call software of infringing the asserted patents.

Netflix was hit by Straight Path IP Group’s campaign that has previously targeted VoIP products, online chat systems, smartphones, tablets, computers, gaming devices, Blu-ray players, televisions, and set-top boxes. Straight Path’s complaint (6:14-cv-00405) accuses Netflix’s servers, software, and online video streaming service of infringing five patents related to point-to-point communication over a computer network or the Internet (6,009,469, 6,108,704, 6,131,121, 6,513,066, 6,701,365). The patents-in-suit were previously asserted by Net2Phone in 2006 against eBay and its then-subsidiary, Skype. During litigation, all five patents were re-examined; in 2010 the USPTO cancelled claim 8 of ‘469 and required amendments to certain claims of ‘469, ‘704, and ‘121. The case against eBay and Skype settled following nearly four years of litigation.

Straight Path IP added Vonage  as the latest target in its VoIP campaign. Amtran, Bandwidth.com, Blackberry, Huawei, LG, Panasonic, Samsung, Sharp, Sony, Telesphere Networks, Toshiba, VIZIO, and Vocalocity (recently acquired by Vonage) were sued in August of this year.  The complaint against Vonage asserts four patents (6,009,469; 6,131,121; 6,513,066; 6,701,365). The patents originated with Netspeak and were previously asserted in litigation by Internet Telephone Company. 11/4, Eastern District of Virginia, 1:13cv01366