Minnesota Patent Litigation Wrap-Up: March 2018

Authored by: Conrad Gosen

This post continues our monthly summary of patent litigation in the District of Minnesota, including short summaries of various substantive orders issued in pending cases.

Solutran, Inc. v. U.S. Bancorp., No. 13-cv-02637 (March 12, 2018) (Nelson)

• Motions in Limine: Denied or deferred

In 2014, U.S. Bank petitioned for Covered Business Method ("CBM") review of Solutran's asserted patent, alleging invalidity under § 101 and obviousness under § 103. The PTAB instituted CMB review under § 103 based on a prior art publication, Randle '283. However, the PTAB ultimately found that the challenged claims were not obvious in view of Randle.

Prior to trial, the parties filed various in limine motions relating to the CBM review. First, Solutran sought to exclude reference to another prior art reference, Randle '717 (a continuation-in-part of Randle '283) on the grounds that U.S. Bank was estopped from further obviousness challenges in light of the PTAB's ruling. U.S. Bank sought to exclude evidence relating to the outcome of the CBM proceedings.

Judge Nelson first addressed the scope of CBM estoppel. After CBM review, the petitioner is estopped from alleging invalidity "on any ground" that it raised to the PTAB. Judge Nelson rejected Solutran's argument that "ground" refers to a statutory provision (e.g., § 101 or § 103), instead citing the Federal Circuit's Shaw decision for the proposition that a "ground" is a particular reference or combination of references considered during review.

Having concluded that U.S. Bank was only estopped from presenting the same "grounds" as it did during CBM review, Judge Nelson next turned to Solutran's motion to exclude the Randle '717 reference. Judge Nelson concluded that, if Randle '717 discloses elements of the patent-in-suit that were not present in Randle '238 (the patent relied on during CBM), then U.S. Bank would not be estopped from relying on it. However, the Court deferred ruling on this issue until the parties provided additional evidence on the teachings of each reference. The Court also deferred ruling on whether evidence of the CBM review itself was permissible, noting that this would depend on whether Randle '717 was excluded.

Solutran ultimately prevailed against U.S. Bank, and the jury awarded Solutran $3.27 million in damages.

M-I Drilling Fluids UK Ltd. v. Dynamic Air Inc., No. 14-4857 (March 20, 2018) (Tunheim)

• Report and Recommendation re Fees Award: Adopted-in-part

Judge Tunheim reviewed a number of challenges to Magistrate Bowbeer's award of fees and costs to Defendant Dynamic Air. Of note, Judge Tunheim discussed the denial of Dynamic's request for fees and costs associated with its filing of IPR petitions against M-I's patents. Judge Tunheim noted that IPRs have become "quite common in modern patent disputes." However, Judge Tunheim adopted the no-fees recommendation, explaining that "DAI prevailed in this action because M-I's infringement theories were meritless, not because M-I's patents were invalid." As a result, the IPRs did not impact the "ultimate resolution of the case" or "when this case resolved."