Magistrate Recommends Rulings in IBM-Pardalis Blockchain Patent Dispute

On Monday, August 5, 2024, Roy Steven Payne, a U.S. magistrate judge of the United States District Court for the Eastern District of Texas recommended rulings on several motions in a patent infringement lawsuit between Pardalis Technology Licensing, LLC and International Business Machines Corporation (IBM).

The lawsuit, filed under case number 2:22-cv-00452 in the Marshall Division of the Eastern District of Texas, alleges that IBM infringed on several patents owned by Pardalis relating to data processing and storage. In his report and recommendation, Judge Payne considered Pardalis’ motion for partial summary judgment on the validity of the patents.

On the issue of inventorship, both parties agreed that one inventor, Kathleen Legako, had been unintentionally omitted from four of the patents in question. As the law allows for correcting unintended errors in inventorship through certificates of correction, Judge Payne determined this issue could not be fully resolved until the Patent and Trademark Office acted on Pardalis’ requests for certificates. He recommended denying this portion of the motion without prejudice pending the PTO’s decision.

For the written description defense raised by IBM, Judge Payne found IBM’s arguments focused improperly on whether the patents disclosed blockchain technology cited in IBM’s infringement arguments, rather than on support for the actual claim terms. As the specification is not required to explicitly disclose specific accused products, Judge Payne concluded IBM’s defense relying on blockchain was legally deficient and recommended granting Pardalis’ motion on this issue.

Finally, IBM withdrew its enablement invalidity defense, rendering that portion of Pardalis’ summary judgment motion moot. In line with limiting the court’s jurisdiction to live cases and controversies, Judge Payne recommended denying the motion as moot on enablement. The judge’s report sets up the potential for further litigation depending on the outcome of the outstanding PTO proceedings involving inventorship corrections.

Please contact BlockTribune for access to a copy of this filing.