A Delaware federal jury on Monday found that a patent Intellectual Ventures was asserting against Toshiba Corp. was invalid, and that Toshiba wasn’t infringing two others in a case over memory chip technology that has lasted nearly four years.

The patent holder had accused Toshiba of infringing its patents for NAND flash memory, a high-capacity data storage chip, court records show. After several trips to the Patent Trial and Appeal Board trimmed some of the patents from the suit, the jury made decisions about three remaining, according to the verdict form.

After an eight-day trial that concluded Monday, the jury found that U.S. Patent No. 5,701,270 was invalid because prior art anticipated its content, according to the verdict form. And Intellectual Ventures hadn’t proven that Toshiba’s work infringes its U.S. Patents Nos. 5,568,431 and 5,500,819, according to the form.

The jury wasn’t asked to reach a conclusion about damages amounts, court records show.

The case kicked off in 2013 when two Intellectual Ventures companies — called Intellectual Ventures I and II — sued Toshiba for alleged infringement of some 10 patents related to memory chips, court records show. Some of the patents were owned by IV I, while others were held by IV II, prompting an immediate challenge by Toshiba to split the cases, according to the docket.

U.S. District Judge Sue L. Robinson denied that request, but did grant a request to cut a claim of willful infringement out of the case, according to the order.

The patents in the original complaint were U.S. Patent Nos. 5,500,819; 5,568,431; 5,600,606; 5,687,132; 5,701,270; 5,829,016; 6,058,045; 5,938,742; 7,836,371 B2; and 6,618,788.

In May and June 2015, Toshiba won its America Invents Act challenges to two of the patents in the case when the Patent Trial and Appeal Board found claims in U.S. Patent No. 5,687,132 and 6,058,045 were invalid as anticipated by prior art.

In July, the parties agreed to cut the ‘045 patent infringement claims from the suit, followed quickly by the ‘132 patent, according to the docket.

As the case progressed, more patents fell out, according to the docket. In February 2016, after a claims construction ruling, the parties stipulated to a partial summary judgment that Toshiba didn’t infringe the ‘606 patent

And in March 2016, the parties agreed to trim claims related to the ‘016 patent from the case. In December, Judge Robinson ruled the ‘788 patent invalid.

And earlier today, the judge ruled in favor of Intellectual Ventures on Toshiba’s bid to escape the claim that it literally infringed a claim of the ‘270 patent.

It wasn’t immediately apparent from the docket why the remainder of the patents weren’t at issue in the jury’s verdict, though the ‘742 patent appears to have expired, according to patent records. Representatives for the parties didn’t immediately respond to requests for comment late Monday.

The patents-in-suit are U.S. Patent Nos. 5,701,270; 5,568,431; and 5,500,819.

Intellectual Ventures is represented by Brian E. Farnan of Farnan LLP and John M. Desmarais and Jon T. Hohenthaner of Desmarais LLP.

Toshiba is represented by Denise Seastone Kraft and Brian A. Biggs of DLA Piper LLP.

The case is Intellectual Ventures I LLC et al. v Toshiba Corp. et al., case number 1:13-cv-00453, in the U.S. District Court for the District of Delaware.

By: DocMemory
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