Searching over 5,500,000 cases.

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Fundamental Innovation Systems International LLC v. ZTE Corp.

United States District Court, N.D. Texas, Dallas Division

November 20, 2019




         This Memorandum Opinion and Order addresses Plaintiff Fundamental Innovation Systems International, LLC's (“FIS”) motion for partial summary judgment of no invalidity of three patents [180]. For the reasons below, the Court denies FIS's motion.

         I. Origins of the Dispute

         The parties' dispute centers on several patents, the rights to which are owned by FIS, that relate to technologies enabling USB charging of mobile devices. Pltf.'s Brief Mot. Partial Summary Judgment 5 [181]. In February 2017, FIS filed suit against Defendants ZTE Corporation, ZTE (USA), Inc., and ZTE (TX), Inc. (collectively, “ZTE”). Id. FIS alleged that ZTE's mobile devices, tablets, and charging adaptors infringed multiple FIS patents, including patent numbers 8, 624, 550 (‘550 patent); 7, 239, 111 (‘111 patent); and 8, 232, 766 (‘766 patent). Id.

         During this litigation, ZTE filed two petitions for inter partes review (“IPR”) on claims of the ‘550 patent with the Patent Trial and Appeals Board (“PTAB”), both filed on October 26, 2017. Id. at 6-7. The PTAB instituted a review of all claims and grounds in the first petition. Id. at 6. The PTAB declined to institute the second petition, which raised as grounds anticipation based on references to patent 7, 360, 004 (“Dougherty”) and obviousness based on a combination of the Dougherty and 6, 625, 738 (“Shiga”) patents. Id. at 7. Subsequently, ZTE raised the arguments asserted in its second IPR petition in its invalidity expert report during this litigation. Id. at 6-7. FIS now seeks partial summary judgment of no invalidity of its ‘550, ‘111, and ‘766 patents.

         II. Legal Standards

         A. Summary Judgment

         Courts “shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). In making this determination, courts must view all evidence and draw all reasonable inferences in the light most favorable to the party opposing the motion. United States v. Diebold, Inc., 369 U.S. 654, 655 (1962).

         The moving party bears the initial burden of informing the court of the basis for its belief that there is no genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the movant has made the required showing, the burden shifts to the nonmovant to establish that there is a genuine issue of material fact such that a reasonable jury might return a verdict in its favor. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986). Factual controversies are resolved in favor of the nonmoving party “‘only when an actual controversy exists, that is, when both parties have submitted evidence of contradictory facts.'” Olabisiomotosho v. City of Houston, 185 F.3d 521, 525 (5th Cir. 1999) (quoting McCallum Highlands, Ltd. v. Washington Capital Dus, Inc., 66 F.3d 89, 92 (5th Cir. 1995)).

         B. Inter Partes Review Estoppel

         Parties may challenge the validity of an issued patent via an administrative review process, inter partes review, conducted by the PTAB. 35 U.S.C. § 311(a). Section 315(e)(2) provides that parties who petition for inter partes review by the PTAB and are granted institution will be estopped from subsequently asserting grounds in litigation that they either raised or “reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2).

         In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit interpreted section 315(e)(2) to estop only grounds that were granted institution by the PTO because the Court determined that “IPR does not begin until it is instituted.” Shaw Indus. Grp., Inc. v. Automated Creel Syst., Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016). The Court rendered this decision during a time when a Patent and Trademark Office (“PTO”) regulation permitted the PTAB to partially institute IPR by instituting some but not all the grounds raised by a petitioner in their IPR petition. 37 C.F.R. § 42.108(a), (b); see also Shaw Indus. Grp., Inc., 817 F.3d at 1298. Shaw thus applied its section 315(e)(2) interpretation to the specific question whether section 315(e)(2) estoppel barred all grounds raised in a partially instituted IPR petition, but the Shaw court did not limit its interpretation to these circumstances. Id. at 1300. The Supreme Court later invalidated the practice of partial institution and held that the PTAB must grant leave to proceed on the entirety of an IPR petition or not institute at all. SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1353 (2018).

         C. Obviousness

         A patent for a claimed invention is invalid as obvious “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103. A court's obviousness inquiry is not limited to comparisons to isolated teachings of individual prior art patents. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). “Often, it will be necessary for a court to look to interrelated ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.