Verizon Attacks on Two TiVo Time-Shifting Patents among the Reexamination Requests filed the Week of July 18, 2011

Scott Daniels | July 25, 2011

In 2009, TiVo sued Verizon and AT&T for infringement of U.S. Patent Nos. 7,493,015 and 7,529,465 related to time-shifting and play-back of media streams.  Verizon has now requested reexamination of the ‘015 and ‘465 patents (see inter partes Request Nos. (7) & (8)). 

Precision Biosciences filed for reexamination of Cellectis’ Patent No. 7,842,489 for single-chain endonucleases useful in genetic modifications of various sorts (see ex parte Request No. (7)).  The two companies are engaged in several infringement and declaratory judgment actions in North Carolina and Delaware involving the ‘489 patent and certain related patents.

RIM requested reexamination of Mobile Media Ideas’ Patent No. 5,732,390 (see ex parte Request No. (9)).  Moble Media has sued RIM for infringement of the ‘390 patent in the Eastern District of Texas.

Medical device patents are the subject of two requests, one for Voda’s U.S. Patent No. 6,475,195 for an angioplasty catheter guide (see inter partes Request No. (5)) and one for Boston Scientific’s U.S. Patent No. 5,922,021 for an intravascular stent (see ex parte Request No. (1)).

The following inter partes requests were filed:

(1)         95/001,689 (electronically filed) – U.S. Patent No. 7,833,053 entitled CONNECTOR HAVING CONDUCTIVE MEMBER AND METHOD OF USE THEREOF and owned by John Messalingua Associates, Inc.  Filed July 18, 2011, by Belden.  The ‘053 patent is currently the subject of a litigation styled John Mezzalingua v. Thomas & Betts (Case No. 1:10-cv-719-RC (E.D. Tex.)).

(2)         95/001,690 (electronically filed) – U.S. Patent No. D561,983 entitled CLOTH SHOE and owned by Diana FitzGerald.  Filed July 19, 2011.

(3)         95/001,691 (electronically filed) – U.S. Patent No. 7.828,595 entitled CONNECTOR HAVING CONDUCTIVE MEMBER AND METHOD OF USE THEREOF and owned by John Messalingua Associates, Inc.  Filed July 19, 2011, by Belden Inc.  The ‘595 patent is currently the subject of a litigation styled John Mezzalingua Associates v. Thomas & Betts Corp., (Case No. 1:10-cv-719-RC (E.D. Tex.)).

(4)         95/001,692 (electronically filed) – U.S. Patent No. 7,217,392 entitled RANDOM ACCESS SLIDE STAINER WITH INDEPENDENT SLIDE HEATING REGULATION and owned by Leica Biosystems Melbourne Party Ltd.  Filed July 19, 2011, by Dako Denmark.

(5)         95/001,693 (electronically filed) – U.S. Patent No. 6,475,195 entitled Angioplasty Guide Catheter and owned by Jan K. Voda.  Filed July 20, 2011, by Medtronic, Inc.  The ‘195 patent is currently the subject of a litigation styled Voda v. Medtronic, Inc., (Case No.: 09-cv-00095-L (W.D. Ok.)).

(6)         95/001,694 (electronically filed) – U.S. Patent No. RE42,240 entitled INFLATABLE, CUSHIONING, BUBBLE WRAP PRODUCT HAVING MULTIPLE, INTERCONNECTED, BUBBLE STRUCTURES and owned by Union Bank of California.  Filed July 21, 2011 by Sealed Air Corporation.

(7)         95/001,695 (electronically filed) – U.S. Patent No. 7,529,465 entitled and owned by TiVo Inc. Filed July 22, 2011, by Verizon Service Corp., et al.  The ‘465 patent is currently the subject of a litigation styled TiVo Inc. v. Verizon Communications, Inc., et al (Case No. 09-cv-00257 (E.D. Tex)); TiVo Inc. v. AT & T Inc., (Case No. 09-cv-00259 (E.D. Tex.)).

(8)         95/001,696 (electronically filed) – U.S. Patent No. 7,493,015 entitled AUTOMATIC PLAYBACK OVERSHOOT CORRECTION SYSTEM and owned by TiVo, Inc.  Filed July 22, 2011, by Verizon Service Corp., et al.  The ‘015 patent is currently the subject of a litigation styled TiVo Inc. v. Verizon Communications, Inc., et al (Case No. 09-cv-00257 (E.D. Tex)); TiVo Inc. v. AT & T Inc., (Case No. 09-cv-00259 (E.D. Tex.)).

The following ex parte requests were filed:

(1)         90/011,800 (electronically filed) – U.S. Patent No. 5,922,021 entitled INTRAVASCULAR STENT and owned by Boston Scientific.  Filed July 18, 2011, likely by Cordis.  The ‘201 patent is currently the subject of a litigation styled Cordis Corp. v. Boston Scientific Corp., (Civ. No. 03-027-SLR (D. Del.)).

(2)         90/011,801 (electronically filed) – U.S. Patent No. 7,142,477 entitled MEMORY INTERFACE SYSTEM AND METHOD FOR REDUCING CYCLE TIME OF SEQUENTIAL READ AND WRITE ACCESSES USING SEPARATE ADDRESS AND DATA BUSES and owned by Cypress Semiconductor Corp.  Filed by GSI Technologies, Inc. July 18, 2011. The ‘477 patent is currently the subject of a litigation styled Cypress Semiconductor Corp. v. GSI Technology, Inc., (Case No. 11-cv-00789 (D. MN.)); In the Matter of Certain Static Random Access Memories and Products Containing Same, (Inv. No.: 337-TA-2816 (U.S.I.T.C.)).

(3)         90/011,802 (electronically filed) – U.S. Patent No. 7,392,917 entitled ROLL OF DISPOSABLE PIECES OF HYGIENIC PAPER and owned by Gideon Sasonoff and Yaron Inbal.  Filed July 19, 2011, by Owners.

(4)         90/011,803 (electronically filed) – U.S. Patent No. 6,092,896 entitled EYE-WEAR WITH MAGNETS and owned by Contour Optik, Inc.  Filed July 21, 2011, by Zenni Optical, LLC.  The ‘896 patent is currently the subject of a litigation styled Aspex Eyewear, Inc. et al v. Levente Tibor Laczay, (Case No.: 09-cv-61468 (S.D. Fl.)); Aspex Eyewear, Inc., et al v. Altair Eyewear, Inc., (Case No.: 10-cv-12202)).

(5)         90/011,804 (electronically filed) – U.S. Patent No. 7,706,054 entitled PARAMETRIC GENERATION WITH LATERAL BEAM COUPLING and owned by The University Court of the University of St. Andrews.  Filed July 22, 2011.

(6)         90/011,805 (electronically filed) – U.S. Patent No. 7,479,662 entitled COATED LED WITH IMPROVED EFFICIENCY and owned by Gelcore, LLC.  Filed July 22, 2011.

(7)         90/011,806 (electronically filed) – U.S. Patent No. 7,842,489 entitled USE OF MEGANUCLEASES FOR INDUCING HOMOLOGOUS RECOMBINATION EX VIVO AND IN TOTO IN VERTEBRATE SOMATIC TISSUES AND APPLICATION THEREOF and owned by Cellectis.  Filed July 22, 2011, by Precision Biosciences.  The ‘489 patent is currently the subject of two litigations styled Precision Biosciences v. Cellectis (Case No. 5:10-cv-550-BR (E.D.N.C.)); Cellectis v. Precision Biosciences (Case No. 1:10-cv-1033-SLR (D. Del.)).

(8)         90/009,920 (paper filed) – U.S. Patent No. RE,36791 entitled LOCATION SYSTEM ADAPTED FOR USE IN MULTIPATH ENVIRONMENTS and owned by Freshloc Technologies, Inc.  Filed June 30, 2011.  

(9)         90/009,921 (paper filed) – U.S. Patent No. 5,732,390 entitled SPEECH SIGNAL TRANSMITTING AND RECEIVING APPARATUS WITH NOISE SENSITIVE VOLUME CONTROL and owned by Mobile Media Ideas LLC.  Filed July 7, 2011, by Research in Motion Limited (RIM).   The ‘390 patent is currently the subject of a litigation styled Mobile Media Ideas, LLC v. Research in Motion Limited and Research in Motion Corporation, (Civ. No. 10-cv-113 (E.D. Tex)).

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