Marathon Patent Group (MARA), the patent licensing company run by CEO Doug Croxall, is betting it can leverage some of the arguments the University of Wisconsin used against Apple Inc. to win a $234 million award in an enforcement action Marathon’s Dynamic Advances unit and Rensselaer Polytechnic Institute filed against Apple.
At stake for Los Angeles-based Marathon’s Dynamic Advances and Rensselaer is about a third of the $1.287 billion in sales generated by Apple’s Siri personal assistant feature on iPhones and iPads, or about $429 million.
The Wisconsin Alumni Research Foundation, or WARF, won the $234 million award against Apple in October in an enforcement action alleging infringement of U.S. Patent No. 5,781,752, which claimed an invention that significantly improves the efficiency and speed of computer processing.
Apple is expected to appeal the WARF decision and has had success in overturning or forcing a reassessment of damages in the past. Indeed, the computer giant this week is in a re-trial of damages with VirnetX Holding Corp. (VHC), in U.S. District Court in Tyler, Texas after the Court of Appeals for the Federal Circuit threw out a $368 million damages award. Apple also succeeded in throwing out a $533 million award SmartFlash LLC won against it last year.
WARF was represented in the case against Apple by Morgan Chu, a partner with Irell & Manilla LLP. Chu, who has sustained more than $5 billion in infringement awards over the years, declined to comment on the similarities between the WARF case and the Dynamic Advances/RPI cases.
Earlier this month, Chu told The Patent Investor at a conference in San Francisco that it is possible to sustain big awards if a plaintiff is careful and uses the right damages assessment. Asked whether it matters if a university such as Wisconsin or a non-practicing entity brings a claim, he said it shouldn't, though he conceded it sometimes does in reality.
The complaint by RPI and Dynamic Advances alleges that Apple’s Siri personal assistant available on iPhones and iPads, infringes a patent for a method for processing a natural-language input provided by a user, using searches of language-based databases and transforming the input into a format that can be used to access and query various databases.
The patent in suit is U.S. Patent No. 7,177,798 issued in February 2007 and entitled “Natural Language Interface Using Constrained Intermediate Dictionary of Results.
The case was filed in the U.S. District Court in Syracuse, N.Y. before Magistrate Judge David E. Peebles.
RPI and Dynamic Advances are represented by Paul Skiermont, Donald Tiller, Alexander Gasser and Shellie Stephens of the aw firm Skiermont Derby in Dallas. Other counsel include Nicholas Mesiti of Heslin Rothenberg Farley & Mesiti P.C. in Albany, N.Y., and James Muldoon and Steven Nonkes of Harris Beach in Syracuse, N.Y.
Skiermont and Skiermont Derby also work with Marathon shareholder and IP Navigation Group owner and founder Erich Spangenberg.
Apple is represented by Hector Ribera, Ryan Marton, J. David Hadden, Carolyn Chang, Jeffrey Ware and William Mosely, of Fenwick & West LLP. In addition, other counsel include Mitchell Katz, of Menter Rudin & Trivelpiece P.C. in Syracuse.
Apple has challenged the report submitted by the damages expert hired by Dynamic Advance and Rensselaer.
Judge Peebles on Jan. 7 issued a ruling concluding that “the report submitted by plaintiffs’ damages expert, Mr. Robert Yerman, satisfies the requirement of Rule 207 of the Federal Rule of Evidence, as well as Daubert and its progeny, and therefore will not be stricken from the record.”
Judge Peebles also found no basis to preclude any portions of the expert testimony of Dr. Jaime Carbonnell, the technical expert for RPI and Dynamic Advances.
The judge also found no basis to deny the testimony of Apple’s expert Dr. James Allen on invalidity and damages.
—To reach the reporter responsible for this story please contact Dan Lonkevich at 707 318-7899 or at email@example.com