The number of new patent challenges continues to accelerate – last week saw thirty-two requests for inter partes review, three for post-grant review, and eighteen for ex parte reexamination. Most notably, Apple, either alone or with one or more co-requesters, attacked six patents owned by either Arendi, THX, or VirnetX (see inter partes review Request Nos. (1), (4), (5), (25), (26), & (28)). In each instance, Apple is being sued for infringement of the respective patent now being challenged. Apple was also the target of an anonymous 180-page request for ex parte reexamination (see ex parte Request No. (7)) against its U.S. Patent No. 8,463,238 claiming a mobile device base station.
There is also an increasing pattern of companies filing joint requests. For instance, Samsung, LG and HTC teamed up to request inter partes review of two content delivery patents owned by Affinity Labs of Texas (see inter partes review Request Nos. (6) & (8)).
Toshiba Samsung Storage requested inter partes review of two LG recording media patents (see inter partes review Request Nos. (2) & (3)). The companies are involved in an infringement action in Delaware.
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.Next Page »