Facts

MSI Computers Corporation manufactures and sells various types of computer components and peripherals including personal computers, motherboards, graphic cards, monitors and server hardware. Reversible Connections is the exclusive licensee of U.S. Patent No 7,458,825 ('825 Patent) entitled "Double-Sided USB-Compatible Receptacle," a patent that was issued to Walletex Microelectronics LTD on December 2, 2008. This patent relates to universal connectors for electronics such as laptop and desktop computers and can be inserted in either direction into a USB port (that is, right-side up or upside down). On July 13, 2017, Reversible Connections, as the exclusive licensee of the '825 Patent sent MSI a letter notifying that it was infringing their exclusive '825 Patent. Thereafter, Reversible Connections filed suit for patent infringement against MSI on July 20, 2017. In 2018, Toshiba America Information Systems, Inc. and MSI asked the Patent Trial and Appeal Board (PTAB) to conduct an inter partes review of the '825 Patent--Toshiba America Information Systems, Inc. et al. v. Walletex Microelectronics Ltd. The PTAB found that claims in Walletex's '825 Patent were obvious in light of previous inventions and publications and therefore invalid. In the meantime, Walletex filed an ex parte reexamination request with the Patent and Trademark Office (PTO) on April 29, 2020. During the reexamination, claims 1-24 of the '825 Patent were cancelled, but new claims 25-43 were added. On July 7, 2021, the PTO issued a reexamination certificate which acknowledged the addition of 25-43 and determined them to be patentable. Meanwhile, back in May 5, 2021, the Federal Circuit affirmed the PTAB's Toshiba America Information Systems, Inc. et al. v. Walletex Microelectronics Ltd decision. Reversible Connections then filed suit against MSI in the U.S. District Court, alleging patent infringement.

PLAINTIFF'S CONTENTIONS: Plaintiff Reversible Connections alleged direct, induced, and contributory infringement. In essence, it contended that defendant MSI, by selling computers and other electronics with USB Type C ports, which are double-sided USB connectors, infringes its '825 Patent.

DEFENDANT'S CONTENTIONS: Defendant MSI contended that Reversible Connections should not be afforded another opportunity to reassert claims that it has previously done so in another suit where its claims were held invalid.

Result

The court granted defendant MSI's motion to dismiss plaintiff Reversible Connection's complaint with prejudice finding generally that a comparison of the previous canceled claim and reissued, new claim showed that the subjected matter of the reissued, new claim was a subset of what was originally claimed, with some minor changes inserted to avoid the prior art.