Cases & Deals

SAS Institute's patent infringement victory at District Court affirmed by Federal Circuit

Clients SAS Institute, Inc.

A cross-office, cross-practice Jones Day litigation team successfully defended SAS Institute, Inc. and DataFlux Corp. ("SAS") in patent-infringement litigation in the Eastern District of Texas and on appeal before the United States Court of Appeals for the Federal Circuit, by obtaining a summary judgment—and a Federal Circuit affirmance—that its opponent's patent claims were invalid under 35 U.S.C § 112 ¶ 2.

After obtaining settlements from other defendants in a prior case, JuxtaComm-Texas Software, LLC filed suit against SAS and several other defendants in January 2010, alleging that certain of defendants' software products infringed U.S. Patent No. 6,195,662 and seeking damages. As a part of its litigation strategy, Jones Day filed a request to have the Patent Office reexamine the asserted patent. The reexamination procedure limited JuxtaComm's ability to take positions in the litigation that would be inconsistent with positions it was taking on the validity of the patent before the Patent Office. In December, 2012, JuxtaComm was forced to appeal the Patent Office's determination that the asserted patent was not valid.

That same December, and less than one month before trial, the defendants obtained a favorable claim construction ruling. The ruling resulted in JuxtaComm seeking a continuance of the trial in order to permit it to develop new infringement theories. The ruling also allowed the defendants to file a summary judgment motion arguing that the patent was invalid for failing to claim what the applicants regarded as their invention. The Court granted defendants' summary judgment motion.

JuxtaComm appealed both the claim-construction ruling and the summary judgment. In a short opinion issued just 18 days after oral argument, the Federal Circuit affirmed both decisions "on the basis of the district court's opinions."

The Jones Day team was led by Hilda Galvan and Keith Davis, assisted by Chijioke Offor, Margaret Lyle and Courtney Carrell, all from the Firm’s Dallas office. John Biernacki and David Cochran from the Firm's Cleveland office assisted the team with the reexamination before the Patent Office. The appeal was argued by Greg Castanias of the Firm's Washington office. With him on the brief were Hilda Galvan, Keith Davis, Margaret Lyle, and Courtney Carrell.

JuxtaComm-Texas Software, LLC v. Axway, Inc. et al., Civil Action No. 6-10-cv-00011 (E.D. Tex. September 19, 2012) (Judge Davis); Appeal No. 2013-1004 (Fed. Cir. Sept. 30, 2013)

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