OAKLAND – The U.S. District Court of the Northern District of California awarded software company SAP America Inc. summary judgment in a patent-related legal battle against Dr. Lakshmi Arunachalam of Menlo Park.
In an April 2 ruling, Judge Phyllis J. Hamilton determined that Arunachalam, who launched a counterclaim against SAP for alleged infringement of U.S. Patent Nos. 8,037,158; 5,987,500; and 8,108,492 in 2013 in response to SAP’s pursuit of a declaratory judgment of non-infringement of the patents, “is estopped from asserting the validity of the patents-in-suit in this infringement action against SAP” and denied Arunachalam's motion for summary judgment.
Hamilton awarded SAP its summary judgment on its claim for declaratory judgment of noninfringement.
SAP also scored a summary judgment on its six-year-old declaratory judgment claim.
This is another blow suffered by Arunachalam, whose company and predecessor-in-interest in this case, Pi-Net International Inc., pursued legal action against JPMorgan Chase & Co. in the U.S. District Court for the District of Delaware over alleged infringement of the same patents. According to the ruling, the court “found the claims asserted in that action to be invalid and granted summary judgment against Pi-Net.”
Pi-Net’s efforts to appeal the case in addition to its petitions for rehearing in the federal circuit, a writ of certiorari, and for rehearing at the Supreme Court were denied. The Patent Trial and Review Board reviewed the patents-in-suit and “issued decisions finding the challenged claims invalid for multiple reasons," the ruling states.
Hamilton’s ruling was based on the following three factors: The presiding court in the JPMorgan case found the asserted claims invalid and entered summary judgment in favor of JPMorgan; the application of collateral estoppel barred Arunachalam “from not only re-litigating those claims directly at issue in JPMorgan but also the additional claims considered by the PTAB;” and collateral estoppel applies to all remaining claims of the patents-in-suit.
“For the foregoing reasons, the court concludes that the doctrine of collateral estoppel renders each of the claims of the patents-in-suit invalid for the reasons discussed… in JPMorgan,” Hamilton wrote.