Virginia IP Law > Troutman Sanders LLP

Judge Jackson Denies Verizon’s Motion to Overturn Judgment of Patent Invalidity in FiOS Case

Seeking to revive its counterclaim and perhaps ultimately escape an adverse verdict for $115 million, Verizon Communications moved to reverse Judge Jackson’s dismissal of its counterclaim for  patent infringement based on allegedly new evidence regarding the date of conception of its patented invention. In a November 7 ruling, found here, Judge Jackson forcefully denied the motion. Our previous posts on the Verizon v. ActiveVideo litigation can be found here, here and here.

Verizon claimed that it had one of the co-inventors on the patent, Howard Wan, had discovered invoices for his work on the invention which established a date of conception before the date of the invalidating prior art. Mr. Wan, according to Verizon, was in China and unable to search his Boston-area home for the invoices until after Judge Jackson had granted summary judgment of invalidity.

Judge Jackson found that Verizon bore the burden of showing that (1) the evidence was newly discovered; (2) that Verizon previously exercised due diligence to discover the evidence; and (3) that the evidence was material and likely to produce a new outcome. Judge Jackson ruled that Verizon had failed to establish any of these requirements. Specifically

  • Verizon knew for over a year before the Court’s ruling that the only place the documents could have been located was Mr. Wan’s home, and so the evidence was not newly discovered.
  • Mr. Wan did not respond to Verizon’s communications for nine months, but Verizon failed to provide any evidence that they had attempted to locate Mr. Wan through other available avenues and failed to apprise the Court of its difficulty reaching Mr. Wan.
  • Even if the Court were to consider the evidence, the invoices did not show that the patented invention was “clearly defined” in the minds of the inventors before the date of the invalidating prior art, and Mr. Wan’s own invoices were insufficient corroboration of his statements of an earlier date of conception.

With this ruling, Judge Jackson has denied all post-trial motions, and so Verizon now moves to the Federal Circuit.

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