Apple is Requesting that the Court Invalidate two Patents being used against them in a Long-Standing Patent Dispute
Back in September 2015 Patently Apple posted a report titled " One of the Most Compelling Legal Cases Filed against Apple in Years was filed in California Yesterday." The case brought on by a patent troll by the name of Zeroclick, was about Dr. Irvine, the original owner of the patents in this case, covered an invention for touch displays for the medical and other fields. Dr. Irvine had claimed that he faxed a letter to Avie Tevanian, Apple's then director of software development, back in 2002 about this invention. Apple never replied. The patent troll sued Apple over their 'Slide-to-Unlock" feature that reportedly infringed Zeroclick's acquired patents.
At the time it was questioned whether Samsung could be behind this lawsuit as they were in the middle of a long and nasty patent infringement case brought on by Apple. Beating Apple in this Zeroclick patent would have been of value to Samsung.
In 2018 we posted a follow-up report titled "U.S. Federal Circuit Gives Green Light to Patent Infringement Case against Apple over the iPhone's Touch Display." The Federal Circuit revived an infringement suit alleging that Apple used another company's intellectual property for its iPhone touch screen, finding that a California federal judge erred by invalidating two patents because he hadn't done the proper analysis to find they were indefinite." Eventually the patents were once again found to be invalid as you'll learn from Apple's action filed with the court this week.
June 2020: Apple's new Declaratory Judgement Filing
On Friday Apple filed an action for declaratory judgement of invalidity of two U.S. patents that were previously ruled as invalid back in 2015. The patent troll is trying to repeat their case using another tactic after the court ruled the patents invalid.
Apple's lawsuit begins with a segment title "Nature of Action." Apple's position in-part states the following: "This is an action for declaratory judgment of invalidity of U.S. Patent No.8,549,443 and U.S. Patent No. 7,818,691 arising under the Declaratory Judgment Act.
The Zeroclick Patents were previously asserted against Apple by a prior entity also named Zeroclick ("Zeroclick-1"). Zeroclick-1 filed suit in this District on September 25, 2015, accusing Apple of infringing the Zeroclick Patents directly, contributorily, and by inducement.
Apple asserted in the Zeroclick-1 Litigation that it does not infringe the Zeroclick Patents and that the Zeroclick Patents are invalid and/or unpatentable under one or more provisions of 35 U.S.C. § 101, 102, 103, or 112, or other judicially created bases for invalidity.
Zeroclick-1 divested itself of all rights to the Zeroclick Patents in August 2017 by transferring the rights to Dr. Nes Irvine, the named inventor of the Zeroclick Patents. Zeroclick-1 was terminated as an entity in December 2017. The Honorable Judge Jon S. Tigar found that Zeroclick-1 lacked standing to sustain the Zeroclick-1 Litigation after divesting its rights to the Zeroclick Patents, and ordered Zeroclick-1 to show cause why the Zeroclick-1 Litigation should not be dismissed for lack of standing and subject matter jurisdiction.
After further briefing from the parties, Judge Tigar dismissed the Zeroclick-1 Litigation on June 11, 2020. Judge Tigar determined that Zeroclick-1 lost standing to pursue the Zeroclick-1 Litigation as of December 2017, and struck all proceedings in that action since December 2017. (Id.)
In the course of briefing in the Zeroclick-1 Litigation on the issue of standing, Zeroclick-1 asserted that Dr. Irvine had transferred the rights to the Zeroclick Patents to Defendant Zeroclick-2 in January 2020.
Zeroclick-1 asserted that rather than dismissing the Zeroclick-1 Litigation, the court should permit Zeroclick-2 to be substituted in to continue the Zeroclick-1 Litigation against Apple.
The course of the Zeroclick-1 Litigation has demonstrated that it is highly likely that Defendant Zeroclick-2 will assert infringement of the Zeroclick Patents against Apple.
As set forth in the Zeroclick-1 Litigation and herein, Apple maintains that the Zeroclick Patents are invalid and/or unpatentable, and that Apple does not infringe the Zeroclick Patents. Therefore, an actual and justiciable controversy exists under 28 U.S.C. §§ 2201-2202 between Apple and Zeroclick-2 as to whether the Zeroclick Patents are invalid and/or unpatentable.
A judicial declaration is necessary to determine the respective rights of the parties regarding the asserted patents. Apple seeks a judicial declaration that the Zeroclick Patents are invalid and/or unpatentable."
For more details, read Apple's full complaint filed with the court in the full SCRIBD document presented below, courteous of Patently Apple.
Apple v Zeroclick by Jack Purcher on Scribd