US Supreme Court Denies Petition Following Federal Circuit and PTAB Decisions, Enabling ALE USA Inc. to Prevail in Patent Dispute

July 2, 2020 | Client Results

On Monday, June 29, 2020, the U.S. Supreme Court denied a petition for a writ of certiorari filed by Chrimar Systems, Inc. and Chrimar Holding Company, LLC, which sought review of the Federal Circuit’s rule that its affirmance of PTAB decisions invalidating asserted patent claims precludes any recovery for infringement in pending district court cases. Jackson Walker client ALE USA Inc. had submitted a brief in opposition, stating that the patent claims on which Chrimar based assertions of patent infringement have been canceled by the USPTO following the Federal Circuit’s affirmance of IPR decisions and the Court’s denial of certiorari.

Jackson Walker attorneys Leisa Talbert Peschel and Chris Cravey said, “We are very pleased that the Supreme Court denied Chrimar’s petition for certiorari. After more than five years of litigation, including multiple appeals, the case is now over with the correct legal outcome achieved. Throughout this process, we remained committed to the principle that ALE USA Inc. should not have to pay royalties on Chrimar’s invalid patents. We were fortunate that ALE shared that belief and was committed to partnering with us to see this case to the end. After all of these years, it is gratifying to see ALE prevail.”

For more information about the case, view the Law360 article “Justices Won’t Stop PTAB From Overruling Trial Courts” (subscription required).

On September 19, 2019, the U.S. Court of Appeals for the Federal Circuit entered an opinion ending ALE USA Inc.’s longstanding patent dispute with Chrimar Systems, Inc. and Chrimar Holding Company, LLC. The appeals court vacated the district court’s judgment and remanded with instructions to dismiss. In doing so, the opinion cites the appeals court’s affirmance of Final Written Decisions from the Patent Trial and Appeals Board invalidating each of the four patents-in-suit and explains that Chrimar is precluded from continuing to enforce its invalid patents against ALE.

This case dates back to March of 2015. Chrimar sued ALE, alleging that products compliant with the IEEE Power over Ethernet (PoE) standards infringed Chrimar’s patents. The patents at issue were U.S. Patent Nos. 8,155,012; 8,942,107; 9,902,760; and 9,019,838. Chrimar contends that its patents are essential to practicing the PoE standards.

The case was tried in the Eastern District of Texas in October 2016 and subsequently appealed. Following ALE’s successful appeal, the case was remanded to the district court for further proceedings. Contemporaneous with the remand, the Patent Trial and Appeals Board completed its review of the four patents-in-suit, which resulted in Final Written Decisions invalidating all of the patent claims asserted against ALE. Chrimar appealed the Board’s Final Written Decisions.

At the district court, ALE requested relief in view of the Board’s intervening Final Written Decisions invalidating all of the asserted patent claims, including a stay of the case and relief from any prospective enforcement of Chrimar’s invalid patents. The district court denied ALE’s request for relief, and ALE appealed.

The appeals court consolidated ALE’s appeal for purposes of oral argument with Chrimar’s appeal of the Board’s Final Written Decision and both appeals were argued on the same day. In a separate order, the appeals court affirmed the Board’s Final Written Decisions invalidating the patent claims asserted against ALE. The appeals court’s affirmance of invalidity necessitated dismissal of Chrimar’s case against ALE, ending nearly five years of litigation between the parties.

ALE was represented by Chris Cravey and Leisa Talbert Peschel, both of Jackson Walker LLP, at the district court and on appeal to the Federal Circuit. The favorable outcome in this case resulted from a close partnership with ALE, and the unwavering support of the company, including ALE’s general counsel, the executive management team, and ALE’s employees supporting the case.

About ALE USA Inc.

ALE USA Inc. is the US-based headquarters of Alcatel Lucent Enterprise, a leading, worldwide provider of enterprise services, communications, networking and cloud solutions. Building on 100 years of technology heritage, innovation and entrepreneurial spirit, ALE is committed to providing comprehensive business outcomes through personalized connected experiences for customers and end users.

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