The Federal Circuit has upheld the invalidation of two Ethernet patents (5,434,872; 5,732,094) asserted by NPE U.S. Ethernet Innovations, LLC (USEI) in a 2009 suit against nine computer manufacturers, including Acer, Apple, Fujitsu, Sony, and Toshiba (4:10-cv-03724). In a non-precedential opinion issued on April 25, the court held that District Judge Claudia Wilken did not err in granting summary judgment of invalidity for the ‘872 and ‘094 patents based on anticipation by a prior art device known as a systems-oriented network interface controller, or “SONIC” (2015-1640, 2015-1641). The Federal Circuit also ruled in a third opinion (2015-1510) that USEI could not collect damages from a June 2014 verdict against Texas Instruments (TI) in a related case (6:11-cv-00491), upholding the district court’s decision that the subsequent invalidation of the ‘872 and ‘094 patents prevented recovery due to issue preclusion.

Texas Instruments (TI) infringes a patent asserted in litigation by US Ethernet according to the court’s final judgment, which also included an award of $3 million in damages. US Ethernet asserted four patents when it sued TI, along with Brother International and Canon, in September 2011. By the time the case reached trial, the other two defendants had been dismissed and only three patents were still at issue (5,434,872, 5,530,874, 5,732,094). An initial jury verdict in April 2011 found that the three patents are valid and rejected TI’s arguments of invalidity on obviousness and anticipation. A separate hearing was held as to infringement and dealt only with the ‘872 patent. The jury found that TI’s accused products infringed, and the court awarded US Ethernet $3 million in damages in its ruling. TI’s laches defense was also rejected in the final judgment.

A jury has found that three patents owned by US Ethernet Innovations (USEI), the successor-in-interest to 3Com Corporation’s Ethernet business, are valid despite arguments to the contrary presented by Texas Instruments (TI). In 2011 USEI sued Brother, Canon, and TI for alleged infringement of four patents related to data transmission and a network interface controller (5,299,313, 5,307,459, 5,434,872, 5,732,094). After signing settlement agreements with Brother and Canon, USEI filed an amended complaint against TI in July 2012 that replaced ‘459 with a network adapter patent (5,530,874) and accused several of the company’s system-on-chip products. All five of the patents involved in this case have been previously asserted by USEI; between October 2009 and August 2013 the entity sued more than 40 companies for alleged infringement including Acer, Apple, Dell, Freescale, Lenovo, NETGEAR, Samsung, and Sony.