Scott Daniels | December 3, 2013
Judge Mitchell Goldberg’s decision yesterday in Bortex Industry v. Fiber Optic Designs (12-cv-4228, E.D. Pa.) – entering judgment against the accused infringer because of discovery misconduct – sheds light on the statutory estoppel faced by those who sponsor, but do not themselves file, inter partes reexamination requests. 35 U.S.C. § 315(c) (pre-AIA) (a similar provision applies to AIA inter partes review requests). Essentially, “a real party in interest” to an inter partes reexamination proceeding is estopped from later attacking, in any civil action, the validity of any claim determined to be patentable on any ground which that third party raised or could have raised during the reexamination.
The case began when Bortex Industry, a Chinese maker of LED Christmas lights, sued Fiber Optic Designs (FOD) for declaratory judgment (1) that Bortex’s LED lights did not infringe two patents owned by FOD, and (2) that the patents were invalid because they were obvious over the prior art and because Bortex’s chairman had previously invented the claimed LED lights. FOD counter-claimed for infringement of both patents and moved for preliminary relief further to the stipulated infringement of one of the patents.
Significantly, FOD had successfully sued NEP, a customer of Bortex, in Colorado for infringement of FOD’s patent. During that dispute, FOD’s patent survived an inter partes reexamination in which NEP was listed as the real party in interest. FOD asserted that Bortex had participated in that reexamination and indemnified NEP’s expenses. Accordingly, FOD argued, Bortex had been a real party in interest and would be estopped from asserting in the present litigation any prior art references that had been “raised or could have been raised during the reexamination.”
Video game-maker Naught Dog, Inc., a wholly owned subsidiary of Sony Computer Entertainment, has requested inter partes review of U.S. Patent Nos. 6,611,278 and 6,307,576 that claim methods for lip synching sound with the facial expressions of animated characters (see inter partes review Request Nos. (3) & (4)). The owner of the patents, Planet Blue, has sued Naughty Dog for infringement. Planet Blue’s infringement action has been consolidated, along with fourteen other cases, into McRO, Inc. v. Namco Bandai Games America, Inc. (Case No. 2:12-cv-10322-GW-FFMx (C.D. Cal.)). Planet Blue has also asserted the ‘278 and ‘576 patents against Sony Computer Entertainment in a patent infringement action styled McRO, Inc. d/b/a Planet Blue v. Sony Computer Entertainment America, LLC and SCE Santa Monica Studio, Inc. (Case No. 1:12-cv-01514-LPS (D. Del.)); and against Sucker Punch Productions in an action styled McRO, Inc. d/b/a Planet Blue v. Sucker Punch Productions, LLC (Case No. 1:12-cv-01515-LPS (D. Del.)). These infringement actions have not made much progress, and Respondents’ motions to stay pending completion of the inter partes reviews seem likely to be granted.
Inter partes review was also requested for another Intellectual Ventures II patent, this time by Toshiba (see inter partes review Request No. (7)). This past March, Intellectual Ventures I & II sued Toshiba for infringement of the patent, plus nine other patents, related to computer bus interfaces for use in hard disk drives.
Scott Daniels | November 25, 2013
Last Monday we reported that RPX had petitioned for inter partes review of MacroSolve patent that had been the basis for 67 infringement actions against a wide range of financial and retail concerns. This past week, RPX filed seven inter partes review requests against four network protocol patents owned by VirnetX (see inter partes review Request Nos. (15), (16), (17) & (18)). The patents have been the source of an enormous flow of licensing revenue for VirnetX, resulting from a series of highly successful infringement actions in the Easter District of Texas.
At the same time, the four VirnetX patents have been involved in various reexaminations in which the claims are under either non-final rejection or final rejection. Apple and New Bay Capital LLC have also filed inter partes review petitions against the VirnetX patents. RPX explains “that the grounds presented in this petition closely parallel the grounds presented in the petitions filed by Apple and New Bay Capital.” RPX states that it “has established a Research & Development program (“RPX R&D”) through which it advances a variety of initiatives [with the goals of] increasing transparency by collecting information regarding enforcement activities of entities or patents, tracking patent sales, collecting and evaluating prior art, and compiling databases of this information, which RPX makes available to its clients. In addition, as part of its RPX R&D program, RPX contests patents of questionable validity by filing requests for post-issuance review with the PTO.”
Nintendo requested inter partes review of three patents related to methods for determining orientation in space of hand-held devices in video games (see inter partes review Request Nos (9), (10) & (11)). The owner of the patents, Motion Games, has sued Nintendo and three other companies in the Eastern District of Texas for infringement of the patents.
Since 2011 MacroSolve has filed suit in the Eastern District of Texas against 67 retail, financial, and social media companies – among them American Express, Bank of America, Chipotle, Comcast, Dropbox, Facebook, Home Box Office, Pandora Media, and United Airlines,– for infringement of its U.S. Patent No. 7,822,816. The ‘816 patent states that in one embodiment, it claims a method for collecting “survey data and making the responses to the survey available to a client in virtually real time over the Internet.” Last week RPX, who has not been sued, requested inter partes review of the ‘816 patent (see inter partes review Request No. (5)).
RPX is a patent-holding company that assists other companies in resisting infringement allegations. RPX explains that it uses “capital from annual subscription fees [from clients] to acquire dangerous patents and patent rights, with each RPX client receiving a license to every asset we own. We acquire those patents for defensive purposes, and we have committed to never assert these patents. As the network continues to grow and our service offerings expand, we are removing progressively more high-threat patents – and more high-cost risk – from the operating ecosystem.” RPX’s business model evidently also includes challenges at the Patent Office to the validity of adverse patents.
Bank of America and PNC Financial each requested post-grant review of four Intellectual Ventures patents related to Internet commerce (see covered business method post-grant review Request Nos. (1) through (4)). Each of the four petitions relies entirely on allegations that the patents claim mere abstractions that are patent-ineligible under 35 U.S.C. § 101. Six other post-grant review petitions were filed.Next Page »