Finnegan client FedEx defeats Ronald Katz’s 11 year licensing litigation

Ronald A. Katz filed suit against Finnegan client FedEx in the Eastern District of Texas (E.D. Tex.), asserting 16 patents against FedEx automated telephone systems, including telephone service for scheduling pickups. Within one year, the suit was transferred to the Central District of California (C.D. Cal.) as part of a multidistrict litigation (MDL), as Katz had filed more than 50 lawsuits in three jurisdictions, asserting patents having nearly 2,000 claims against more than 150 companies. During the MDL, FedEx won on summary judgment, but the Federal Circuit reversed the win in part, and in doing so gave birth to the so-called “Katz Exception” for means plus function claims. The case returned to the C.D. Cal. for the judge to consider issues following the remand. Once the MDL issues were resolved, the case returned to the E.D. Tex., eight years after the transfer. Judge Gilstrap then transferred the case to the Western District of Tennessee (W.D. Tenn.). At Katz’s urging, roughly two months before trial, Judge McCalla stayed the case as FedEx challenged the remaining patent at issue in an ex parte reexamination. Katz received two final rejections in the reexamination, including an appeal decided by the Patent Trials and Appeal Board (PTAB), ending the case that lasted over a decade.