Litigation

Untitled case

Litigation

6:21-cv-00531

Filed
2021

Patents at issue (1)

Defender signal. Patent 11017020 has had claims invalidated at PTAB. Those final written decisions are public record and a ready-made § 102 / § 103 ground in district court. See IPR estoppel for what carries over.

11017020PTAB: claims invalidated

Summary

A US district court case concerning US patent 11017020 filed in the Texas Western District Court.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

MemoryWeb, LLC initiated a patent infringement lawsuit against [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) in the U.S. District Court for the Western District of Texas. The plaintiff, MemoryWeb, LLC, appears to be a patent assertion entity (PAE) or non-practicing entity (NPE), given its litigation pattern against major technology companies like Apple and Samsung. Apple Inc. is the defendant, an operating company that offers a wide range of consumer electronics and software services. The core of the dispute revolves around U.S. Patent No. 11,017,020, which generally describes a platform designed for managing and utilizing digital files, such as photographs. This platform enables users to tag and select files to generate customized views, including a "people view" where selecting a thumbnail can display a "profile view" or a slideshow of images associated with that individual. The accused products or services are likely Apple's offerings that incorporate such digital photo management and viewing functionalities, such as Apple Photos.

The case was filed in the Waco Division of the Western District of Texas and assigned to District Judge Alan D. Albright. This venue has historically been a significant choice for patent plaintiffs, particularly NPEs, due to its reputation for a fast-paced docket and a patentee-friendly environment. However, the landscape of patent litigation in the Western District of Texas has evolved, with the district instituting a random assignment system for cases filed in Waco in 2022, altering the previous certainty of assignment to Judge Albright. Judge Albright's subsequent relocation to Austin further diversified the docketing dynamics, although a probabilistic path to his cases still exists.

This litigation is notable due to the plaintiff's assertion strategy, characteristic of NPEs, targeting prominent tech firms. The case also demonstrates the frequent interplay between district court litigation and Patent Trial and Appeal Board (PTAB) proceedings. Apple Inc. has actively challenged MemoryWeb's patents through Inter Partes Reviews (IPRs), including an IPR (IPR2022-00111) against the '020 patent, which was ultimately denied institution by the PTAB. Several other related IPRs against MemoryWeb's patent portfolio have been filed by Apple and Samsung, underscoring a common defense tactic by accused infringers to challenge patent validity concurrently with district court proceedings. The asserted patent's focus on digital media management makes this case relevant to the broader consumer technology and software industries.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Key Legal Developments and Outcome

The patent infringement litigation, MemoryWeb, LLC v. Apple Inc. (6:21-cv-00531), has seen several significant legal developments since its filing in May 2021. The case primarily concerns U.S. Patent No. 11,017,020, but the initial complaint also asserted U.S. Patent Nos. 9,552,376, 10,423,658, and 10,621,228.

Filing & Initial Pleadings

Pre-trial Motions

  • Motion to Transfer/Venue: While specific details of a motion to transfer in this case are not immediately available, such motions are common in the Western District of Texas, especially given the historical context of patent litigation in the Waco Division and Judge Albright's assignment.
  • Motions to Stay Pending IPR: Apple has actively engaged in challenging MemoryWeb's patents at the Patent Trial and Appeal Board (PTAB), which often leads to motions to stay district court proceedings.

Claim Construction (Markman)

  • An Agreed Scheduling Order from November 23, 2021, indicates that a Markman hearing was expected to be held on or after June 3, 2022, with the trial date expected to be set at its conclusion. The outcome of this Markman hearing is not publicly detailed in the search results.

Parallel PTAB IPR/PGR Proceedings

Apple Inc. has filed multiple inter partes review (IPR) and post-grant review (PGR) petitions against MemoryWeb's patents, including the '020 patent.

  • IPR2022-00111 (targeting U.S. Patent No. 11,017,020): Apple filed a petition for IPR of claims 1-59 of the '020 patent. On June 10, 2022, the PTAB issued a decision denying institution of this IPR. Apple's petition was conditional, stating that if the Board determined the '020 patent was not an AIA patent and thus ineligible for PGR, Apple requested IPR institution. However, both parties agreed the '020 patent was PGR eligible.
  • PGR2022-00006 (targeting U.S. Patent No. 11,017,020): This PGR proceeding was also initiated by Apple against the '020 patent. The disposition of this specific PGR is not detailed in the provided search results, beyond its existence and relationship to IPR2022-00111.
  • Other Related IPRs: Apple filed several other IPRs against MemoryWeb's patent portfolio, including IPR2022-00031 (challenging U.S. Patent No. 10,621,228), IPR2022-00032 (challenging U.S. Patent No. 9,552,376), and IPR2022-00033 (challenging U.S. Patent No. 10,423,658).
  • Real Party in Interest (RPI) Issues: In IPR2021-01413, filed by Unified Patents LLC against MemoryWeb's U.S. Patent No. 10,621,228, the PTAB determined on March 8, 2023, that Apple and Samsung should have been named as real parties in interest. This highlights the strategic importance of RPI identification in PTAB proceedings, particularly for operating companies collaborating with entities like Unified Patents.

Current Posture

As of November 17, 2022, the district court case 6:21-cv-00531 was still pending. A trial date of August 7, 2023, was noted in a November 23, 2021, scheduling order, but it was contingent on the conclusion of the Markman hearing. No information about a trial or final judgment has been found in the current search.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Based on the available information, the counsel of record representing MemoryWeb, LLC (the plaintiff) in 6:21-cv-00531 and related PTAB proceedings includes:

Jennifer Hayes

  • Role: Lead Counsel for Patent Owner (MemoryWeb, LLC) in PTAB proceedings.
  • Firm: Nixon Peabody LLP.
  • Note: Represented MemoryWeb, LLC in appeals before the Federal Circuit concerning its digital file management patents.

While a comprehensive list of all attorneys for MemoryWeb in the district court case 6:21-cv-00531 is not explicitly detailed in the provided search results, Jennifer Hayes of Nixon Peabody LLP is clearly identified as lead counsel for MemoryWeb in related PTAB IPRs and Federal Circuit appeals involving the same patent portfolio. Given the close relationship between the district court and PTAB proceedings, it is highly probable that Nixon Peabody LLP, and Jennifer Hayes specifically, play a significant role in the district court litigation as well.

It is worth noting that some search results discuss Apple's counsel in IPRs against MemoryWeb, such as Jeffrey P. Kushan, Samuel A. Dillon, and Kyle S. Smith of Sidley Austin LLP, and Hector G. Gallegos of Morrison & Foerster LLP, but these individuals represent Apple, not MemoryWeb.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Apple Inc. is represented by a team of attorneys from several prominent law firms, as well as likely in-house counsel, in MemoryWeb, LLC v. Apple Inc., case number 6:21-cv-00531.

Firms and Key Attorneys representing Apple:

  • Morrison & Foerster LLP

    • Hector G. Gallegos - Role unknown (likely lead or significant counsel). He is listed as representing Apple in this specific case (6:21-cv-00531) and several other cases where Apple is a "Challenger" in the Western District of Texas and Northern District of California. His experience includes chemical, computer architecture and software, software/security, communications, and semiconductor/optic cases.

  • Sidley Austin LLP

    • Counsel from Sidley Austin LLP, including J. Kushan, Samuel Dillon, and Kyle Smith, are identified as counsel for Petitioner, Apple Inc., in related Inter Partes Review (IPR) proceedings concerning patents also asserted in the district court case. While their specific roles in the district court case (lead, of counsel, etc.) are not explicitly stated in the public records found, it is highly probable they are involved given the direct relation between the IPRs and the district court litigation.

  • Gibson, Dunn & Crutcher LLP

    • While not directly cited for this specific case (6:21-cv-00531), Gibson Dunn has a strong and recurring relationship with Apple in high-stakes intellectual property and antitrust litigation. Attorneys like Richard J. Doren and Veronica S. Moyé (Los Angeles office) and Josh Krevitt (New York office, co-chair of Gibson Dunn's IP practice) have notably represented Apple in significant cases, including securing a major antitrust victory against Epic Games. Their involvement often suggests a lead counsel role in major litigation for Apple. The firm has a strong technology litigation practice and is recognized for its major trial and appellate victories.

  • Kirkland & Ellis LLP

    • Kirkland & Ellis also has a history of representing Apple in intellectual property disputes. They have been recognized for their work on behalf of tech industry giants like Apple in patent infringement cases, including protecting iPhone patents. While specific attorneys for this case were not identified, their IP group has nearly 300 attorneys and extensive experience in patent infringement litigation across various venues, including district courts, the Federal Circuit, ITC, and PTAB.

  • Vinson & Elkins LLP

    • Vinson & Elkins focuses on patent litigation in federal trial courts, the International Trade Commission, and the Court of Appeals for the Federal Circuit. They have an active caseload in the Western District of Texas and represent some significant names in various industries. While not explicitly listed for this specific case, their presence in the Western District of Texas and their patent litigation expertise make them a potential firm for local or specialized counsel for Apple in this venue.

  • In-house Counsel (Apple Inc.)

    • Apple maintains a robust in-house IP litigation team, with senior members directly responsible for driving litigation strategy and managing complex, high-stakes patent disputes globally. These in-house counsel play a critical role in managing outside counsel and providing strategic advice.

It is important to note that while these firms and attorneys have a strong track record of representing Apple in patent litigation, specific roles (e.g., lead counsel, local counsel) and the complete list of all attorneys for this particular case would be definitively found on the official PACER docket. However, the provided search results indicate active representation by Morrison & Foerster and, in related PTAB matters, by Sidley Austin. The other firms listed are highly likely to be involved in various capacities due to their established relationships and expertise in representing Apple in similar intellectual property disputes.