University Of California Won't Give Up: Sues Facebook Over Already Rejected Patents

from the they-won't-give-up dept

We’ve been writing about the patent troll Eolas for about a decade at this point. It’s a trolling operation connected to the University of California, and used to take some ridiculously broad patents and try to shake down companies who actually innovated and did incredibly obvious things on the internet. Eolas’ various lawsuits had gone back and forth over the years, and finally, earlier this year, a jury in East Texas (surprisingly) invalidated some of the key patents.

This summer, the judge in the case agreed that the key patents were invalid. Eolas had ridiculously tried to argue that the fact that some other companies had previously licensed the patents should have been shared with the jury to prove the “validity” of the patents. Of course, that’s ridiculous on its face as trolls often convince companies to license bogus patents because it’s cheaper to settle and license than to fight a bad patent lawsuit (even if you win). Of course, the judge blasted Eolas over this desire… because earlier in the case, Eolas had specifically argued that the jury shouldn’t be allowed to know of Eolas’ previous “business success or failure.” Basically, Eolas didn’t want the jury to know it was a troll without any real business. However, as the judge realized, Eolas can’t hide that bit of info and then want the jury to have this other bit of info from its past.

Thus, for all intents and purposes it seemed that those two key patents — 5,838,906 and 7,599,985 — were effectively dead.

So it was a bit of a surprise to find out that Eolas/University of California has now sued Facebook, Disney and Wal-mart over those same patents (and a couple others). Apparently, Cal and Eolas figure that if they just keep suing, maybe one of these times they’ll win.

What’s really amazing is that this scorched earth, anti-innovation effort hasn’t created more backlash for the University of California, and Berkeley in particular, given its proximity to Silicon Valley. You’d think that alums of the University who work at the various innovative tech companies that keep getting sued would speak out against their alma mater. It’s pretty sad to see the University of California trying to set up a tollbooth on innovation by using such ridiculous patents.

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Companies: disney, eolas, facebook, university of california, walmart

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Comments on “University Of California Won't Give Up: Sues Facebook Over Already Rejected Patents”

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Anonymous Coward says:

Re: Penalty for EOLAs?

Wrong. A finding of invalidity in a prior trial involving another alleged infringing party may give rise to what is known as “colleteral estoppel”, i.e., “You had a full and fair bite at the apple…” While “collateral estoppel” will certainly be pled in a motion to dismiss filed by Facebook, the grant of such a motion is not a “given”.

Tunnen (profile) says:

Re: Penalty for EOLAs?

From my understanding, they are filing the lawsuit now, but have also put it on hold until the appeals of the patent invalidation is heard. Something about them needing to get the filing date now (Maybe a statue of limitations or something?) This way if the patents are made valid again they can continue this suit. If the patents remain invalid they can modify this suit to drop the invalid patents but continue with the valid patents.

I think this is more to just get some publicity so that they can try to shake down other smaller fish. They could then tell them that they are serious because they are suing the big guys!

Anonymous Coward says:

Re: Re: Penalty for EOLAs?

A point of clarification because Patent documents are not well understood. A patent is a document that concludes with a series of claims, each of which are deemed to be separate and distinct. When someone says a “patent was invalidated”, what they should say is that one or more claims of the patent have been invalidated. Claims that have not been invalidated remain in full force and effect.

Importantly, when a claim is invalidated at the trial court level, that does not necessarily mean that the claim is conclusively invalid as a matter of law. That can only happen once all appeals, if any, have fully run their course.

As a practical matter, when a trial court has declared a claim invalid and an appeal is taken, other courts that may be hearing cases involving the claim invariably stay their proceedings pending the outcome of the appeal.

average_joe (profile) says:

Re: Re: Re:

My guess is that the particular claims that were found to be invalid this past summer (the jury invalidated them for anticipation and nonobviousness) are not the particular claims being sued on.

From the final judgment: “AMENDED FINAL JUDGMENT. Claims 1 and 6 of U.S. Patent No. 5,838,906 are found to be invalid. Claims 1, 3, 10, 16, 18, 20, 22, 36, 38, 40, and 42 of U.S. Patent No. 7,599,985 are found to be invalid.” Source:

They are probably suing over other claims in those two patents. That would at least make sense. We need to keep in mind that it’s not the entire patent that’s been invalidated. It’s just certain claims therein.

Anonymous Coward says:

Re: Re: Re: Re:

Using the ‘906 patent as an example, the order you cite reflects that Claims 1-6 were held to be invalid. Importantly, the patent also includes Claims 7-14.

As you aptly note, invalidating certain claims contained in a patent is not the same as invalidating the patent. Thus, the ‘906 patent remains in full force and effect, as modified by the decision in the prior litigation.

Importantly, the invalidation of Claims 1-6 of the ‘906 patent does not necessarily mean that they cannot be asserted in subsequent litigation. However, in order to successfully assert one or more of these claims the patent holder would have to squarely confront and try to overcome “collateral estoppel” as to Claims 1-6. Obviously, this would be a very difficult task, but over the years I have seen many strange things happen in matters pending before a court.

One of the great difficulties discussing patents in general forums is that most persons unfamiliar with patent law do not realize that a patent typically contains numerous claims (8 to 10 is typical, but I have seen a very few with several hundred). Invalidating one claim does not invalidate the entire patent, but only that one claim.

The eejit (profile) says:

Re: Re: Re:3 Re:

I’m pretty sure that’s what should happen. Sadly, we don’t live in MagicalChristmasLand. We live in a reality. At the very least, I would consider that if a number of the patent’s claims are invalid, it should be referred for a full review with people who have the time and resources to investigate doing the work.

But again, MagicalChristmasLand.

Anonymous Coward says:

Re: Re: Re: Re:

BTW, the ‘985 patent has 36 claims that remain in full force and effect. The patent has 47 claims, only 11 of which have been held invalid.

For those who may wonder “Why weren’t the other 36 also invalidated?”, the simple answer is that a court only considers those claims actually asserted as being infringed.

staff says:

another biased article

?Patent troll?

Call it what you will…patent hoarder, patent troll, non-practicing entity, shell company, etc. It all means one thing: ?we?re using your invention and we?re not going to pay or stop?. This is just dissembling by large invention thieves and their paid puppets to kill any inventor support system. It is purely about legalizing theft. The fact is, many of the large multinationals and their puppets who defame inventors in this way themselves make no products in the US or create any American jobs and it is their continued blatant theft which makes it impossible for the true creators to do so.

It?s about property rights. They should not only be for the rich and powerful. Show me a country with weak or ineffective property rights and I?ll show you a weak economy and high unemployment.

Prior to eBay v Mercexchange, small entities had a viable chance at commercializing their inventions. If the defendant was found guilty, an injunction was most always issued. Then the inventor small entity could enjoy the exclusive use of his invention in commercializing it. Unfortunately, injunctions are often no longer available to small entity inventors because of the Supreme Court decision so we have no fair chance to compete with much larger entities who are now free to use our inventions. Essentially, large infringers now have your gun and all the bullets. Worse yet, inability to commercialize means those same small entities will not be hiring new employees to roll out their products and services. And now some of those same parties who killed injunctions for small entities and thus blocked their chance at commercializing now complain that small entity inventors are not commercializing. They created the problem and now they want to blame small entities for it. What dissembling! If you don?t like this state of affairs (your unemployment is running out), tell your Congress member. Then maybe we can get some sense back in the patent system with injunctions fully enforceable on all infringers by all inventors, large and small.

Those wishing to help fight big business giveaways should contact us as below and join the fight as we are building a network of inventors and other stakeholders to lobby Congress to restore property rights for all patent owners -large and small.

For the truth about trolls, please see

Masnick and his monkeys have an unreported conflict of interest-

They sell blog filler and “insights” to major corporations including MS, HP, IBM etc. who just happen to be some of the world?s most frequent patent suit defendants. Obviously, he has failed to report his conflicts as any reputable reporter would. But then Masnick and his monkeys are not reporters. They are patent system saboteurs receiving funding from huge corporate infringers. They cannot be trusted and have no credibility. All they know about patents is they don?t have any.

Anonymous Coward says:

Penalty for EOLAs?

As a general rule the patent continues in force for the remainder of its term as long as maintenance fees are paid, but it has been rendered a meaningless document since there is nothing within its metes and bounds (the claims) that can be asserted against others.

There is one option that a patentee of such a patent may wish to pursue, but it too is largely meaningless at best. It is always possible during the term of a patent to file for what is known as a “Narrowing Reissue”. What this means is that prior art has come to light, and that the patentee (certainly in the case where all claims have been invalidated) wishes to narrow one or more of those claims so that they differ sufficiently from the prior art to qualify for being allowed. Of course this has a downside which generally renders it a fool’s errand. If enough limitations (ie, narrowing) are added to a claim, it may eventually recite allowable subject matter. However, the more limitations that are added to a claim the easier it is for a potential infringer to avoid infringement. Hence, Reissue in these circumstances is a theoretical possibility, but not a practical one.

There is a bright side to all of this, however, in the eyes of a patentee. Though all the claims have been invalidated, the patentee still retains the document originally presented when the patent was first issued. It contains a nice looking ribbon, an official gold seal, and properly framed makes a nice wall hanging.

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