In recent years, more than 40 percent of US patent lawsuits have been filed in the federal courts of East Texas - courts known to be friendly to patent owners of all kinds, whether private inventors, operating companies, and possibly non-productive entities "Patent troll"), known as companies that buy patents not to use them, but to demand rewards. A single federal judge in Marshall, Texas, a three-hour drive from Dallas, oversaw more than a quarter of all national patent claims-more than the number of similar claims filed with federal judges in California, Florida and New York together. The court in Marshall, Texas (picture below) has even special rules for managing the many patent claims filed in it.
These facts made Marshall, Texas the perfect forum for the world's richest and most famous non-productive entity, Intellectual Ventures, in its lawsuit against the modern American industrial icon, FedEx, for patent infringement at the end of 2016. By then, IV had already filed a large number of claims to other courts without much success. However, it was clear that IV was looking to change its fortunes when it filed the suit against FedEx in East Texas court. Although IV is located in the state of Washington, it has spread across the United States to hire a New York law firm to sue FedEx.
As a background, IV was founded by multi-millionaire Nathan Meyerwald after he left his position as Microsoft's vice president of technology, and together with other founders, including former chief patent counsel of Intel, Meyerwald raised over $ 7.3 billion from such well-known companies Microsoft, Intel, Sony, Nokia, Apple, Google, Yahoo, American Express, Adobe, SAP, Navidia and eBay, along with various investment firms including Stanford, Hewlett Foundation, Mayo Clinic and Charles River Ventures. In order to obtain tens of thousands of patents, recently leveraged their patent war box to sue companies for patent infringement Real estate business of making or using rechargeable technologies it acquires patents.
FedEx's history is also fundamental to our story. FedEx is the abbreviation of the original Air Express, the Federal Express, which operated from 1973 to 2000. FedEx Express is recognized for its 24-hour shipping services and has pioneered a real-time tracking system for shipments On the location of the package (to help find a lost package), a feature which has been implemented by multiple worldwide forwarding services. Today FedEx is comprised of a group of companies operating under the FedEx brand.
IV chose Texas as a place to fight Fedex, armed with patents it acquired from giant companies such as Kimberly Clark (a manufacturer of Kleenex ® branded napkins and Colton® branded toilet paper along with other famous brands) and ABB, a Swiss-Swiss multinational corporation, Power supply, heavy electric equipment and automation technology) along with other unknown start-ups. The patents generally required documents with barcode, data collection and transfer using hand tools, saving information in a database, tracking items in a "controlled space" and allocating tasks to a field team.
US patent laws differ from laws in other countries - there are commentators who are also called "crazy." In the United States, decisions about complex technical disputes in patent infringement are usually not determined by experienced judges or senior government officials with technical training, By a jury composed of simple citizens from the community around the court. In IV's battle against FedEx, a jury of eight people who live near the court in Marshall, Texas, decided the outcome of the trial. As with most patent attorneys, they were not familiar with the law and technology in question.
FedEx may not only benefit from a positive public perception but also a rich history of forwarding services, including the establishment and use of its own systems, facilities and procedures to support the company's business. FedEx has leveraged this history to win the IV Company in East Texas!
There were many ways to build defense against IV's extensive attack. FedEx chose FedEx, which means focusing on the FedEx story, including a journey through the history of the FedEx brand and demonstrating how FedEx was actually the first in the shipping industry to do almost anything IV claimed to infringe.
The following graph briefly illustrates the story Fedex presented during the trial-
The delivery method within 24 hours, the foundation of FedEx companies, began with the idea of Fred Smith, the founder of the company, who came to his head during college after serving several years in the US Marine Corps, where FedEx's story began in 1979. FedEx has already developed a computerized system called Cosmos, the first of its kind to track collection and delivery of packages, enabling the company to quickly address customer questions about the location of their packages, and then develop hardware and software products such as DADS, PowerShip, SuperTracker, "and" InterNetShip, "which shipping companies use on PCs and the Internet to support the FedEx business. Bor used all of these long before the patents of IV, which appear later in the timeline, after 2000. FedEx filed a patent application in 1997, which included most of the new technologies mentioned and patent 642, which was produced before the patents claimed by IV .
The focus on this timeline and the story behind FedEx's earlier IV technologies played an important role in convincing the East Texas jury that Fedex did not need IV patents to build and operate the company - FedEx has its own technologies to build on. FedEx was different from "Method IV," as evidenced by FedEx witnesses and technical experts, and FedEx's earlier technology also supported the view that the patents in question were invalid, as approved by the jury's verdict.
The FedEx method also included an emphasis before the jury on how none of FedEx had consulted with IV, the former owner of the IV patents or the patents themselves, while developing and implementing the methods that IV claimed to be patent infringement. The absence of such consultations helped to demonstrate to the non-professional jury that no violation had been committed.
Importantly, the defense also included specific facts and claims that focused on IV's patents and infringement claims. However, the FedEx-specific claims association has been proven to be the winner! In a rare case in patent litigation in East Texas, the jury in the IV case against Fedex ruled in favor of Fedex and claimed that no patents had been infringed.
On July 9, a seminar will be held: " Winning Patent Protection Strategies in a Patent Lawsuit in America "
To learn more about the rare victory of the Haganah in East Texas, join us on July 9 in Tel Aviv with Finnigan's winning team of attorneys, senior partners Jeff Berkowitz and Eliot Cook who will come to Israel to tell about the victory at FedEx trial and answer questions such as How to put your company in the best position to win a patent infringement case. Sign up for a seminar here .
Finnegan is one of the world's largest law firms specializing in intellectual property and a magnet for Israeli companies. Finnegan represents more than 140 leading Israeli companies in their fields, which are engaged in the development of smart and innovative technology. Finnegan provides its clients with legal advice on the following subjects: Intellectual property files and the individual patent, developing a strong patent strategy for protecting the technology and maximizing profits and managing patent files and cash flows while developing the product and registering the patent.