FOR IMMEDIATE RELEASE
May 21, 2018
WASHINGTON, DC—On May 18, 2018, an Eastern District of Texas jury handed Finnegan client FedEx a win in a case brought by Intellectual Ventures (IV), ruling that FedEx did not infringe IV’s four shipping and tracking patents, and that three of the patents were invalid. IV argued that the patents related to shipping and tracking, but FedEx argued they did not.
In August 2016, IV filed suit against FedEx, claiming its patents were issued before FedEx started using the technology. However, Finnegan argued that FedEx has been pioneers in the industry for forty years and its shipping and tracking systems were in the works thirty years prior to the issuance of IV’s patents; FedEx never used or needed to use IV’s patents. Additionally, the firm argued that IV’s patents were obvious in view of the prior art.
Finnegan partner Jeff Berkowitz said:
Our FedEx clients are very pleased with the jury’s verdict in the case. At trial, IV was seeking nearly $100M in damages for infringement of four patents IV had acquired from four other companies. The jury heard from both sides, considered the evidence as guided by Chief District Court Judge Rodney Gilstrap, and issued a verdict favorable to our clients. The jury determined that all four patents are not infringed and three of the four are invalid. Earlier in the case, following a favorable claim construction for the FedEx companies, Judge Gilstrap issued an order granting summary judgment of non-infringement on a fifth asserted patent.
The jury’s verdict confirms our belief that IV wrongly asserted infringement against the FedEx companies in August 2016 when IV filed its complaint. We also filed on behalf of our FedEx clients inter partes review (IPR) petitions and re-examinations of asserted claims of IV’s five patents, and we expect final decisions on the IPRs in the next several months.
Our FedEx clients have and will continue to vigorously defend themselves against infringement claims based on overreaching patent assertions like those in the case filed by IV.
The case is Intellectual Ventures II LLC v. FedEx Corp. et al., 2:16-cv-00980, E.D. Texas.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest IP law firms in the world. From offices in Atlanta, Boston, London, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo, and Washington, DC, the firm practices all aspects of patent, trademark, copyright, and trade secret law, including counseling, prosecution, licensing, and litigation. Finnegan also represents clients on IP issues related to European patents and trade marks, international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust, and unfair competition. For additional information on the firm, please visit www.finnegan.com. Follow us on LinkedIn and Twitter.
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