Realtime Data, LLC v. Carbonite, Inc. et al.

This patent infringement litigation, Realtime Data, LLC v. Carbonite, Inc. et al., centers on allegations that Carbonite and EVault infringed patents related to data compression. The plaintiff, Realtime Data, LLC, is identified as a prolific patent assertion entity (NPE) that holds a broad portfolio of data compression and encoding patents. Realtime Data is an inventor-owned research and development company focused on accelerating data storage, retrieval, transmission, and reception. The defendants, Carbonite, Inc. and EVault, Inc., are operating companies specializing in data protection services. Carbonite offers online backup services for consumers and businesses, while EVault, acquired by Carbonite in 2015, provides on-premises, cloud-based, and hybrid backup and recovery solutions for mid-market customers. The accused technology involved Carbonite and EVault's data management and backup products and services, particularly their utilization of data compression and acceleration techniques. The specific patent at issue in this case was US8643513, which generally covers data compression systems and methods.

The procedural journey of the case, initially filed in 2017 as 17-cv-12499, was complex. It began in the Eastern District of Texas, a popular venue for patent litigation, before being transferred to the District of Massachusetts in December 2019 following Carbonite's successful challenge to venue post-TC Heartland. In the Eastern District of Texas, Magistrate Judge Love issued a report recommending denial of a motion to dismiss related to patent eligibility. Upon transfer to Massachusetts, the case was first assigned to Judge Young, then to Judge Indira Talwani, who was also overseeing related Realtime Data litigation. In October 2022, Judge Talwani granted Carbonite's motion for entry of judgment. Claims related to one patent were dismissed as moot due to a finding of unpatentability by the Patent Trial and Appeal Board (PTAB). Judgment on the remaining three patents was granted based on collateral estoppel, as these patents had been previously deemed invalid under 35 U.S.C. § 101 by the District of Delaware in a parallel proceeding involving Realtime Data. Realtime Data subsequently appealed this judgment to the Federal Circuit, where the appeal was filed in December 2022 and terminated in October 2023.

This case is notable for several reasons. It exemplifies Realtime Data's extensive and long-running campaign of patent assertions against numerous technology companies, which has involved dozens of lawsuits across various courts and a broad portfolio of data compression patents. The outcome highlights the significant impact of both PTAB inter partes reviews and evolving judicial interpretations of patent eligibility under 35 U.S.C. § 101, particularly concerning software-related inventions. The application of collateral estoppel, leveraging a prior invalidity ruling from the District of Delaware, was a critical factor in the defendant's victory. Furthermore, the case's transfer from the Eastern District of Texas to the District of Massachusetts underscores the ongoing shifts in patent litigation venue following the Supreme Court's TC Heartland decision.

Realtime Data, LLC v. Carbonite, Inc. et al. (17-cv-12499) was a patent infringement lawsuit that ultimately concluded with a judgment for the defendants based on patent ineligibility and collateral estoppel.

Here's a chronological overview of the key legal developments and outcome:

• Filing & Initial Pleadings (2017): Realtime Data, LLC filed the lawsuit in the Eastern District of Texas in 2017, alleging infringement of four data compression patents by Carbonite, Inc. and EVault, Inc.. Carbonite, a Massachusetts-based company, filed a motion to dismiss for failure to state a claim.
• Pre-trial Motions of Substance (2017-2019):
  • Motion to Dismiss for Failure to State a Claim (2017-2018): Magistrate Judge John D. Love of the Eastern District of Texas recommended denying Carbonite's motion to dismiss for failure to state a claim, finding the patents directed to patent-eligible subject matter. This recommendation was adopted by Judge Young in the District of Massachusetts in March 2018.
  • Motion to Dismiss for Improper Venue (2017-2019): Following the TC Heartland decision, Carbonite filed a motion to dismiss for improper venue. The Eastern District of Texas initially denied this motion, citing a waiver for not filing it in the initial pleading. Carbonite sought a writ of mandamus from the Federal Circuit. The Federal Circuit denied the writ but noted that TC Heartland represented a change in law that could excuse the delay. The parties subsequently agreed to transfer the case.
  • Transfer of Venue (December 2019): The case was transferred from the Eastern District of Texas to the District of Massachusetts in December 2019 and was initially assigned to Judge Young. It was later transferred to Judge Talwani, who was overseeing related cases.
  • Consolidation and Stay: The case was consolidated with other related cases and stayed for several years pending the resolution of other cases in different jurisdictions.
• Claim Construction (Markman) Outcomes: The available information does not specify a distinct Markman hearing or claim construction order for this particular case. Given its eventual disposition on Section 101 grounds, a detailed claim construction phase might not have been fully completed or proven dispositive.
• Discovery Milestones: No specific strategic discovery milestones were highlighted for this case in the provided information.
• Trial Events, Verdict, and Post-Trial Motions: The case did not proceed to trial.
• Final Disposition and Appeals (2022-2024):
  • Judgment for Defendant (October 2022): In October 2022, Judge Talwani of the District of Massachusetts granted Carbonite's motion for entry of judgment. This judgment was based on two grounds:
    • Claims related to a "first patent" were dismissed as moot because the Patent Trial and Appeal Board (PTAB) had deemed them unpatentable. The specific identity of this patent among the four initially asserted is not explicitly named in the provided sources, though the prompt notes US8643513 as a patent at issue.
    • Carbonite was entitled to judgment on the claims of the "remaining three patents" based on collateral estoppel. These patents had been deemed invalid under 35 U.S.C. § 101 by the District of Delaware in related litigation. The Delaware decision was under appeal at the time of the Carbonite judgment.
  • Appeal to Federal Circuit (December 2022 - October 2023): Realtime Data filed a notice of appeal in this case, which was docketed at the Federal Circuit as Case # 0:23-cvpri-01232 on December 9, 2022. This appeal was terminated on October 16, 2023.
  • Supreme Court Petition Denial (January 2024): While not specific to the Carbonite case alone, Realtime Data, LLC filed a petition for writ of certiorari at the U.S. Supreme Court on October 31, 2023 (Case No. 23-498), challenging a Federal Circuit decision that held 211 of its patent claims ineligible as abstract under Section 101. This petition, concerning seven data compression patents, was denied by the Supreme Court on January 8, 2024. This broader context is significant as it likely cemented the collateral estoppel ruling in the Carbonite case regarding the Section 101 invalidity of Realtime Data's data compression patents.
• Parallel PTAB IPR/PGR Proceedings:
  • The dismissal of claims for one patent in the Carbonite case as moot was directly due to the PTAB deeming those claims unpatentable.
  • In a separate, but related, proceeding (IPR2016-00783), the PTAB found claims 1-4, 8, 14-17, 21, and 28 of Realtime Data's U.S. Patent No. 6,597,812 (the '812 patent) to be unpatentable as obvious over prior art. This decision was affirmed by the Federal Circuit on January 10, 2019. Although the '812 patent is not the US8643513 patent specifically, this demonstrates the impact of PTAB proceedings on Realtime Data's patent portfolio. The provided information does not explicitly state whether US8643513 was the patent deemed unpatentable by the PTAB in the Carbonite case, or one of the three invalidated under § 101 via collateral estoppel.

Here is the identified counsel of record representing Realtime Data, LLC in the patent infringement case Realtime Data, LLC v. Carbonite, Inc. et al. (17-cv-12499, Eastern District of Texas / District of Massachusetts), drawing on appearances in the originating district court and related appeals:

Russ August & Kabat (Los Angeles, CA)

• Reza Mirzaie (Lead Counsel)
  • Firm & Office Location: Russ August & Kabat, Los Angeles, CA.
  • Relevant Experience: Mr. Mirzaie is a partner and co-chair of the Litigation Department at Russ August & Kabat, specializing in intellectual property litigation, including patent, trade secret, and copyright infringement, as well as complex commercial disputes. He has been identified as counsel for Realtime Data LLC in multiple Federal Circuit appeals concerning data compression patents.
• Marc A. Fenster (Lead Counsel)
  • Firm & Office Location: Russ August & Kabat, Los Angeles, CA.
  • Relevant Experience: Mr. Fenster is the managing partner and chair of the Litigation Department at Russ August & Kabat. He is a prominent patent litigator known for representing patent holders in high-stakes infringement cases. He has been listed as counsel for Realtime Data LLC in Federal Circuit filings.
• Brian D. Ledahl (Lead Counsel)
  • Firm & Office Location: Russ August & Kabat, Los Angeles, CA.
  • Relevant Experience: Mr. Ledahl is a partner at Russ August & Kabat, focusing on patent litigation. He has appeared as counsel for Realtime Data, LLC in various patent disputes, including a Supreme Court petition against Fortinet, Inc.
• Paul A. Kroeger (Lead Counsel)
  • Firm & Office Location: Russ August & Kabat, Los Angeles, CA.
  • Relevant Experience: Mr. Kroeger is a partner at Russ August & Kabat with experience in patent and complex commercial litigation. He is listed as counsel for Realtime Data, LLC in Federal Circuit filings related to data compression patents.
• Shani Williams (Counsel)
  • Firm & Office Location: Russ August & Kabat, Los Angeles, CA.
  • Relevant Experience: Ms. Williams is an attorney at Russ August & Kabat, involved in patent litigation. She is listed as counsel for Realtime Data, LLC in Federal Circuit filings.
• Philip X. Wang (Counsel)
  • Firm & Office Location: Russ August & Kabat, Los Angeles, CA.
  • Relevant Experience: Mr. Wang is an attorney at Russ August & Kabat, specializing in intellectual property litigation. He is listed as counsel for Realtime Data, LLC in Federal Circuit filings.

Bayard LLP (Wilmington, DE)

• Stephen B. Brauerman (Of Counsel / Local Counsel)
  • Firm & Office Location: Bayard LLP, Wilmington, DE.
  • Relevant Experience: Mr. Brauerman is a director at Bayard and frequently serves as local counsel in Delaware patent litigation, representing both plaintiffs and defendants. He is listed as counsel for Realtime Data LLC in Federal Circuit filings.
• Ronald Golden (Of Counsel / Local Counsel)
  • Firm & Office Location: Bayard LLP, Wilmington, DE.
  • Relevant Experience: Mr. Golden is an attorney at Bayard LLP with experience in intellectual property and commercial litigation. He is listed as counsel for Realtime Data LLC in Federal Circuit filings.

Note: The case was initially filed in the Eastern District of Texas and later transferred to the District of Massachusetts. The provided information about counsel is primarily drawn from Federal Circuit appeals that often list attorneys from the originating district court or agency. While specific docket entries for their appearances in the initial EDTX or DMass proceedings were not explicitly retrieved in the immediate search, their listing in Federal Circuit certificates of interest confirms their representation of Realtime Data LLC in the underlying litigation.

Here is the identified counsel of record representing the defendant(s), Carbonite, Inc. and EVault, Inc., in Realtime Data, LLC v. Carbonite, Inc. et al. (17-cv-12499):

Based on the Federal Circuit appeal docket for a related case that originated from 17-cv-12499, the following attorneys represented Defendant-Appellee Carbonite, Inc.:

• Wasif Qureshi
  • Role: Counsel
  • Firm: Jackson Walker LLP
  • Office Location: Dallas, TX (common for lead counsel in EDTX cases)
  • Relevant Experience Note: Wasif Qureshi is a patent litigator with experience representing technology companies. His firm, Jackson Walker, frequently appears in Eastern District of Texas patent cases.
• Elizabeth M. Manno
  • Role: Counsel
  • Firm: Venable LLP
  • Office Location: Washington, D.C.
  • Relevant Experience Note: Elizabeth M. Manno is a partner at Venable LLP and focuses on intellectual property litigation, including patent litigation.
• Laura A. Wytsma
  • Role: Counsel
  • Firm: Venable LLP
  • Office Location: Washington, D.C.
  • Relevant Experience Note: Laura A. Wytsma is a partner at Venable LLP with a practice centered on patent litigation, post-grant proceedings, and intellectual property counseling.
• Timothy J. Carroll
  • Role: Counsel
  • Firm: Venable LLP
  • Office Location: Washington, D.C.
  • Relevant Experience Note: Timothy J. Carroll is a partner at Venable LLP, specializing in patent litigation across various technology sectors, including software and cloud computing.

It is worth noting that while Lando & Anastasi, LLP, publishes a case summary for Realtime Data, LLC v. Carbonite, Inc. et al. (D. Mass. 17-cv-12499) on their blog, suggesting their involvement, the Federal Circuit appeal docket explicitly listing counsel for Carbonite names the attorneys from Jackson Walker LLP and Venable LLP. These attorneys were listed as representing Carbonite in the appeal, indicating they were counsel of record for the defendant at least at the appellate stage, and likely in the preceding district court proceedings.