UnifiedOnline Inc fka UOIP

[VortMax]

THE reason why big money here:

Called the Halo Standard, my patent attorney friend point this out to me, this case and lawyers are going after the willfulness of infringement and are likely to win since the PTAB rejection of Cisco. Comcast et all were told about the infringement and willfully ignored Chanbond. All of this lawyering jargon is new and sets the precedent. Sprint just got $140M from Charter for VOIP, that $140M from just 1 big cable op...

https://www.law360.com/articles/894817/4-years-in-inter-partes-review-may-not-be-the-best-strategy

First, as IPR institution rates are falling, some district courts have allowed evidence regarding the refusal to institute. Other commentators have identified that plaintiff-patent owners have sought to introduce evidence of the PTAB’s refusal to institute an IPR petition with varying success, noting a split among four motions in limine to exclude such evidence.[2] In one of those cases where evidence of the PTAB’s refusal was allowed to be introduced, StoneEagle v. Pay-Plus, the plaintiff won a patent infringement award of $2.5 million, along with a finding of willful infringement.[3] While we cannot know how much this evidence may have impacted the jury’s verdict, it seems logical that a jury would be influenced by the USPTO’s finding that the petitioner (now the defendant accused of infringement) did not have a reasonable likelihood of success in invalidating the patent. As such, this should be a consideration for any patent infringement defendant contemplating an IPR petition.

The StoneEagle decision also highlights a related concern: IPR petitions that are not instituted, or where not all instituted claims are invalidated, can also be used to attack defenses to willfulness. This is especially true in light of the U.S. Supreme Court’s recent Halo v. Pulse decision, that rejected the Seagate objective assessment (which had set a high bar for a finding of willfulness), in favor of a more fact-intensive and subjective evaluation. Plaintiffs are more likely to seek a finding of willful infringement under the Halo standard, and a PTAB rejection of an IPR petition has the potential to be a cornerstone of a willfulness allegation.

Another issue is how a district court will view the PTAB’s construction of patent claim terms.[4] Some district courts have viewed the PTAB’s construction as intrinsic evidence owed some weight in construing claims, notwithstanding the lower “broadest reasonable interpretation” standard that is applied in an IPR proceeding.[5] In some cases, this could lead to a less favorable construction in the district court (perhaps dangerously so), where the PTAB’s construction would be unduly broad in the context of a district court. These issues could undermine a defendant’s success in a related district court case, as could more general concerns discussed below.