Chrimar Systems v. ALE USA Inc

Jackson Walker represented ALE, while Chrimar has been represented by Thompson & Knight LLP and Flachsbart & Greenspoon LLC.

On Tuesday, May 26, 2020, ALE USA Inc. opposed the petition for a writ of certiorari to the U.S. Court of Appeals for the Federal Circuit filed by Chrimar Systems, Inc. and Chrimar Holding Company, LLC. In its brief in opposition, ALE asked the U.S. Supreme Court to deny the petition, stating that the patent claims on which Chrimar based its 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.

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.

The Jackson Walker team included Chris Cravey (Picture) and Leisa Talbert Peschel.

The Thompson & Knight LLP team included Justin Cohen, J. Michael Heinlen and Richard Wynne.

Flachsbart & Greenspoon team was led by Robert P. Greenspoon.

Involved fees earner: Robert Greenspoon – Flachsbart & Greenspoon LLC; Chris Cravey – Jackson Walker L.L.P.; Leisa Peschel – Jackson Walker L.L.P.; Justin Cohen – Thompson Knight LLP; Michael Heinlen – Thompson Knight LLP; Richard Wynne – Thompson Knight LLP;

Law Firms: Flachsbart & Greenspoon LLC; Jackson Walker L.L.P.; Thompson Knight LLP;

Clients: Alcatel Lucent; Chrimar Systems, Inc;

Author: Ambrogio Visconti