Cases & Deals

IBM successfully resolves patent infringement claims brought by Auburn University involving semiconductor testing technologies

Clients International Business Machines Corporation

Jones Day defended International Business Machines Corporation (IBM) against a suit filed by Auburn University in 2009 in the Opelika division of the Middle District of Alabama. Auburn alleged infringement of two patents and asserted Alabama state law tort claims based on IBM's purported "theft" of Auburn's intellectual property. Auburn sought compensatory and treble damages for the patent claims, and compensatory and punitive damages for the Alabama state law claims.

In June 2010, IBM persuaded the Alabama district court to dismiss the state law tort claims on statute of limitations grounds. In April 2011, IBM obtained a favorable Markman ruling regarding the scope of the Auburn patents. After extensive fact and expert discovery, and in view of the favorable Markman ruling, IBM obtained summary judgment of noninfringement in August 2012. The summary judgment ruling was a complete victory for IBM on infringement, with the Alabama court finding that none of the nine accused IBM products infringed the Auburn patents.

In parallel with the Alabama litigation, IBM also challenged the validity of the two asserted Auburn patents in inter partes reexaminations in the U.S. Patent & Trademark Office. The USPTO rejected all of the claims of both Auburn patents in the reexaminations as being unpatentable in view of prior art identified by IBM. In a series of decisions in January 2014, June 2014 and January 2015, the USPTO Patent Trial & Appeal Board ("PTAB") affirmed in full the unpatentability of all claims of both Auburn patents asserted against IBM.

In May 2015, Auburn abandoned its appeals and the parties resolved the dispute on mutually satisfactory terms.

Auburn University v. International Business Machines Corporation, Civil Action No. 09-cv-00694 (M.D. Ala.) (Judge Fuller)