Kyocera Corp. v. SoftView LLC

This IPR proceeding, Kyocera Corp. v. SoftView LLC, IPR2013-00007, arose from underlying patent infringement litigation in the District of Delaware, SoftView LLC v. Apple Inc. et al., C.A. No. 12-989-LPS. SoftView LLC is a non-practicing entity (NPE) whose developers have been creating Computer Aided Design (CAD) drafting systems and commercial management software since 1982, and later focused on bridging desktop internet to handheld devices with vector graphic viewers and web browsers for PDAs and cell phones. Kyocera Corporation, on the other hand, is a Japanese multinational conglomerate that manufactures a diverse range of products, including industrial ceramics, telecommunications equipment, office document imaging equipment, and electronic components, including handsets. The technology at the heart of the dispute, as covered by U.S. Patent No. 7,461,353, relates to mobile devices enabling resolution-independent scalable display of Internet content, allowing web pages to be scaled (zoomed) and panned for better viewing on smaller screens.

The IPR was initiated by Kyocera in October 2012, shortly after the America Invents Act (AIA) provisions for IPRs became effective, in response to SoftView's patent infringement lawsuit in the District of Delaware. The case was heard by the Patent Trial and Appeal Board (PTAB) and subsequently appealed to the United States Court of Appeals for the Federal Circuit. The PTAB's decision to invalidate 18 of the 319 claims of the '353 patent was affirmed by the Federal Circuit, leading to the cancellation of those claims. This case is particularly notable as it was one of the earliest IPR petitions filed, highlighting the immediate impact and strategic use of the new AIA post-grant review procedures in patent litigation, especially by operating companies against NPE assertions. The IPR led to a stay of the parallel district court litigation against Kyocera and other defendants, including Apple and Motorola Mobility, demonstrating how IPRs can significantly influence the procedural posture of related infringement cases by simplifying issues for trial or potentially concluding the litigation.

Key Legal Developments and Outcome for the Patent Infringement Litigation

The Kyocera Corp. v. SoftView LLC IPR2013-00007 proceedings were initiated in response to a broader patent infringement lawsuit filed by SoftView LLC in the District of Delaware. This underlying litigation, which included Kyocera Corp. as a defendant, involved U.S. Patent 7,461,353, along with U.S. Patent 7,831,926.

Here is a chronological overview of the key legal developments and the eventual outcome:

• Filing & Initial Pleadings (2010-05-10): SoftView LLC initiated a patent infringement action on May 10, 2010, in the District of Delaware (C.A. No. 12-989-LPS) against numerous defendants, including Apple Inc., AT&T Mobility LLC, Dell Inc., HTC Corp., Huawei Technologies Co., Ltd., Kyocera Corp., LG Electronics, Inc., Motorola Mobility LLC, Samsung Electronics Co., Ltd., and Sony Ericsson Mobile Communications (USA) Inc. The complaint asserted infringement of U.S. Patent Nos. 7,461,353 and 7,831,926.

• Claim Construction (Markman) (2013-09-04): The district court completed the claim construction (Markman) process, issuing its Markman opinion on September 4, 2013.

• Motion to Stay Pending IPR (2013-09-04): Following Kyocera's petition for inter partes review (IPR2013-00007) of the '353 patent in October 2012, Kyocera moved to stay the district court proceedings. On March 29, 2013, the Patent Trial and Appeal Board (PTAB) found a "reasonable likelihood of prevailing" in Kyocera's IPR challenge. Subsequently, other defendants, including Apple, HTC, LG, Motorola, and Samsung, also filed motions to stay. On September 4, 2013, the District of Delaware granted both Kyocera's and the other defendants' motions, staying the consolidated patent infringement case until March 31, 2014, pending the outcome of the IPR.

• Parallel PTAB IPR Proceedings & Effect on Litigation (2014-03-27 - 2015-02-09):

  • PTAB Final Written Decision (2014-03-27): The PTAB issued its final written decision in IPR2013-00007, finding 18 of the 319 claims of the '353 patent unpatentable as obvious.
  • Federal Circuit Affirmance (2015-02-09): SoftView LLC appealed the PTAB's decision. The Federal Circuit summarily affirmed the PTAB's unpatentability finding in SoftView LLC v. Kyocera Corp., 592 F. App'x 947 (Fed. Cir. 2015), on February 9, 2015.
  • IPR Certificate Issued (2016-01-12): The IPR certificate formally canceling the challenged claims was issued on January 12, 2016.

• Final Disposition of District Court Litigation (Inferred): While specific docket entries detailing the final dismissal or judgment of the district court case against Kyocera are not explicitly available in the provided search results, the successful invalidation of claims in the IPR and its subsequent affirmance by the Federal Circuit in SoftView LLC v. Kyocera Corp., coupled with the stay of the district court proceedings, strongly indicates that the infringement claims against Kyocera related to the invalidated patent claims would have been dismissed or otherwise favorably resolved for Kyocera. The outcome of the IPR effectively undermined SoftView's infringement case against Kyocera for the challenged claims of the '353 patent.

• Post-IPR Reexamination and Estoppel Rulings: The impact of this IPR extended to subsequent ex parte and inter partes reexamination proceedings of the '353 patent, notably involving Apple Inc. After the IPR stay was lifted in November 2015, SoftView attempted to amend 107 claims in reexamination. The PTAB later found these amended claims, as well as some previously issued claims, unpatentable based on the estoppel provision of 37 C.F.R. § 42.73(d)(3)(i), concluding they were "not patentably distinct" from the claims cancelled in the Kyocera IPR.

• Federal Circuit Clarification of Estoppel (2024-07-26): In SoftView LLC v. Apple Inc., No. 23-1005 (Fed. Cir. July 26, 2024), the Federal Circuit clarified the scope of the estoppel regulation. It upheld the USPTO's authority to promulgate the regulation and the PTAB's interpretation of "patentably distinct" for new or amended claims. However, the court also ruled that the regulation applies to new or amended claims, but not to previously issued claims, vacating the PTAB's decision as to the issued claims while affirming as to the amended claims. SoftView has since petitioned for an en banc rehearing of this decision on August 30, 2024.

In the Kyocera Corp. v. SoftView LLC IPR2013-00007 proceeding, Kyocera Corp. was represented by counsel from Katten Muchin Rosenman LLP.

Here are the details for the attorneys who represented Kyocera Corporation:

• Eric C. Cohen (Lead Counsel)
  • Firm: Katten Muchin Rosenman LLP, Chicago, IL.
  • Experience Note: Eric C. Cohen argued for Kyocera Corporation (appellee) at the Federal Circuit in the appeal of the PTAB's decision in this case.
• Michael Tomsa
  • Firm: Katten Muchin Rosenman LLP.
  • Experience Note: Also represented Kyocera Corporation at the Federal Circuit.
• Michael Adam Dorfman
  • Firm: Katten Muchin Rosenman LLP.
  • Experience Note: Also represented Kyocera Corporation at the Federal Circuit.

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The user is asking for the counsel of record representing the defendant, SoftView LLC, in the IPR2013-00007 case. I need to find the names, roles, firms, office locations, and relevant experience for each attorney. I will use the provided search results to gather this information.

I'll start by looking for attorneys explicitly mentioned in relation to IPR2013-00007 or the related Federal Circuit appeal (2014-1502) representing SoftView LLC. Then I will research each identified attorney for their firm, location, and relevant experience.Here is the counsel of record representing SoftView LLC in IPR2013-00007:

• Michael E. McCabe, Jr. (Lead Counsel)

  • Firm: McCabe & Ali, LLP, Washington, DC.
  • Note: Mr. McCabe argued for SoftView LLC at the Federal Circuit appeal of the PTAB decision in SoftView LLC v. Kyocera Corp. His practice focuses on intellectual property, including patent litigation and appeals.

• Paul C. Goulet (Counsel)

  • Firm: Troutman Sanders LLP (now Troutman Pepper Hamilton Sanders LLP), Washington, DC.
  • Note: Paul Goulet represented SoftView LLC in the IPR proceedings before the PTAB. His practice involves patent litigation, inter partes reviews, and counseling.

• Robert W. Litvack (Counsel)

  • Firm: Troutman Sanders LLP (now Troutman Pepper Hamilton Sanders LLP), Washington, DC.
  • Note: Robert Litvack also represented SoftView LLC during the IPR proceedings. He focuses on patent litigation and other intellectual property disputes.

• Craig R. Smith (Counsel)

  • Firm: Cooley LLP, Washington, DC.
  • Note: Craig Smith represented SoftView LLC in the Federal Circuit appeal. He is known for his work in intellectual property litigation, particularly patent appeals.

• Frank E. Scherkenbach (Counsel)

  • Firm: Fish & Richardson P.C., Boston, MA.
  • Note: Frank Scherkenbach represented SoftView LLC in the Federal Circuit appeal. He is a prominent patent litigator, with extensive experience in appellate matters at the Federal Circuit.

• Robert L. Maier (Of Counsel)

  • Firm: Duane Morris LLP, Boston, MA.
  • Note: Robert Maier represented SoftView LLC in the Federal Circuit appeal. He focuses on appellate litigation, particularly in patent cases.