Intellectual Ventures Attack on Xilinx Patents among the Filings in the Two Weeks September 16-28, 2012

Scott Daniels and Cindy Chen | October 1, 2012

The feud between Intellectual Ventures and Xilinx heated up last month when IV requested inter partes review of four Xilinx patents (see inter partes review Request Nos. (6) to (8) and (10)).  Xilinx sued IV for declaratory judgment of invalidity and non-infringement last year, and has since requested reexamination of a number of IV patents.

Microsoft requested inter partes review of U.S. Patent No. 6,757,717owned by Proxyconn claiming a data access system (see inter partes review Request No. (11)).  The two companies are involved in litigation in the Central District of California.

Sony requested inter partes review of Tessera’s U.S. Patent No. 6,054,337 (see inter partes review Request No. (13)).  Tessera has sued Sony for infringement of the ‘337 patent.  On the same day Sony requested ex parte reexamination of a 1st Media patent (see ex parte Request No. (3)).

From the large number of gaps in the IPR control numbers posted by the Patent Office, it appears that requesters might be having some difficulty in complying with the new filing rules.

The following inter partes review requests were filed:

(1)         IPR2012-00001 (electronically filed) – U.S. Patent No. 6,778,074 entitled SPEED LIMIT INDICATOR AND METHOD FOR DISPLAYING SPEED AND THE RELEVANT SPEED LIMIT and owned by Cuozzo Speed Technologies LLC.  Filed September 16, 2012 by Garmin International, Inc..  The ‘074 patent is currently the subject of a litigation styled Cuozzo Speed Technologies LLC v. Garmin International Inc., et al. (Case No. 2:12cv-03623-CCC-JAD (D.N.J.)); Cuozzo Speed Technologies LLC v. General Motors Company (Case No. 2:12-cv-03624-CCC-JAD (D.N.J.)); Cuozzo Speed Technologies LLC v. JVC Americas Corporation (Case No. 2:12-cv-03625-CCC-JAD (D.N.J.)); Cuozzo Speed Technologies LLC v. TomTom, Inc., et al. (Case No. 2:12-cv-03626-CCC-JAD (D.N.J.)).

(2)         IPR2012-00004 (electronically filed) – U.S. Patent No. 6,422,291 entitled ROLL-UP BLIND WITH STOWABLE GUIDING MEMBERS FOR THE WINDOW OF A VEHICLE and owned by Baumeister & Ostler GmbH & Co.  Filed September 16, 2012 by MACAUTO U.S.A..

(3)         IPR2012-00005 (electronically filed) – U.S. Patent No. 6,653,215 entitled CONTACT TO N-GAN WITH AU TERMINATION and owned by Emcore Corporation.  Filed September 16, 2012 by Nichia Corporation.  The ‘215 patent is currently the subject of a litigation styled Emcore Corp. and Everlight Electronics Co., Ltd. v. Nichia Corp., et al. (Case No. 2-12-cv-11758 (E.D. Mich.)).

(4)         IPR2012-00006 (electronically filed) – U.S. Patent No. 7,713,698 entitled MASSIVE PARALLEL METHOD FOR DECODING DNA AND RNA and owned by National Science Foundation.  Filed September 16, 2012 by Illumina, Inc..  The ‘698 patent is currently the subject of a litigation styled The Trustees of Columbia University in the City of New York v. Illumina, Inc. (Case No. 1:12-cv-00376-UNA (D. Del.)).

(5)         IPR2012-00007 (electronically filed) – U.S. Patent No. 7,790,869 entitled MASSIVE PARALLEL METHOD FOR DECODING DNA AND RNA and owned by National Science Foundation.  Filed September 16, 2012 by Illumina, Inc..  The ‘869 patent is currently the subject of a litigation styled The Trustees of Columbia University in the City of New York v. Illumina, Inc. (Case No. 1:12-cv-00376-UNA (D. Del.)).

(6)         IPR2012-00018 (electronically filed) – U.S. Patent No. 7,566,960 entitled AN INTERPOSING STRUCTURE and owned by Xilinx, Inc..  Filed September 17, 2012 by Intellectual Ventures Management, LLC.

(7)         IPR2012-00019 (electronically filed) – U.S. Patent No. 8,062,968 entitled INTERPOSER FOR REDISTRIBUTING SIGNALS and owned by Xilinx, Inc..  Filed September 17, 2012 by Intellectual Ventures Management, LLC.

(8)         IPR2012-00020 (electronically filed) – U.S. Patent No. 8,058,897 entitled CONFIGURATION OF A MULTI-DIE INTEGRATED CIRCUIT and owned by Xilinx, Inc..  Filed September 17, 2012 by Intellectual Ventures Management, LLC.

(9)         IPR2012-00022 (electronically filed) – U.S. Patent No. 6,258,540 entitled NON-INVASIVE PRENATAL DIAGNOSIS and owned by Isis Innovation Ltd..  Filed September 17, 2012 by Ariosa Diagnostics.  The ‘540 patent is currently the subject of a litigation styled Ariosa Diagnostics v. Sequenom, et al. (Case No. 3:11-cv-06391 (N.D. Cal.)).

(10)     IPR2012-00023 (electronically filed) – U.S. Patent No. 7,994,609 entitled SHIELDING FOR INTEGRATED CAPACITORS and owned by Xilinx, Inc..  Filed September 17, 2012 by Intellectual Ventures Management, LLC.

(11)     IPR2012-00026 (electronically filed) – U.S. Patent No. 6,757,717 entitled SYSTEM AND METHOD FOR DATA ACCESS and owned by Proxyconn, Inc..  Filed September 18, 2012 by Microsoft.  The ‘717 patent is currently the subject of a litigation styled Proxyconn Inc. v. Microsoft Corporation, et al. (Case No. SA CV11-1681 DOC (ANx) (C.D. Cal.)).

(12)     IPR2012-00027 (electronically filed) – U.S. Patent No. 7,591,303 entitled VEHICLE AIR CONDITIONING AND HEATING METHOD PROVIDING ENGINE ON AND ENGINE OFF OPERATION and owned by Bergstrom, Inc..  Filed September 18, 2012 by Idle Free Systems, Inc..  The ‘303 patent is currently the subject of a litigation styled Bergstrom, Inc. v. Idle Free Systems, Inc. (Case No. 3:12-cv-50254 (N.D. Ill.)).

(13)     IPR2012-00033 (electronically filed) – U.S. Patent No. 6,054,337 entitled METHOD OF MAKING A COMPLIANT MULTICHIP PACKAGE and owned by Tessera, Inc..  Filed September 24, 2012 by Sony Corporation.  The ‘337 patent is currently the subject of a litigation styled Tessera, Inc. v. Sony Electronics, Inc. et al. (Case No. 10-838 (RMB) (KW) (D. Del.)).

(14)     IPR2012-00035 (electronically filed) – U.S. Patent No. 5,411,797 entitled NANOPHASE DIAMOND FILMS and owned by Carl B. Collins and Farzin Davanloo.  Filed September 27, 2012 by Nissan North America, Inc..  The ‘797 patent is currently the subject of a litigation styled Collins v. Nissan North America, Inc. (Case No. 2:11-cv-00428-JRG (E.D. Tex.)); Collins v. Western Digital Techs., Inc. (Case No. 2:09-cv-219-TJW (E.D. Tex.)): Collins v. The Gillette Co. (Case No. 2-04-CV-38 (TJW) (E.D. Tex.)).

(15)     IPR2012-00037 (electronically filed) – U.S. Patent No. 5,478,650 entitled NANOPHASE DIAMOND FILMS and owned by Carl B. Collins and Farzin Davanloo.  Filed September 27, 2012 by Nissan North America, Inc..  The ‘650 patent is currently the subject of a litigation styled Collins v. Western Digital Techs., Inc. (Case No. 2:09-cv-219-TJW (E.D. Tex.)): Collins v. The Gillette Co. (Case No. 2-04-CV-38 (TJW) (E.D. Tex.)).

(16)     IPR2012-00041 (electronically filed) – U.S. Patent No. 6,947,882 entitled REGIONALLY TIME MULTIPLEXED EMULATION SYSTEM and owned by Mentor Graphics Corporation.  Filed September 27, 2012 by Synopsys, Inc..  The ‘882 patent is currently the subject of a litigation styled Mentor Graphics Corp. v. EVE-USA, Inc. et al. (Case No. 3-12-cv-01500 (D. Or.)).

(17)     IPR2012-00042 (electronically filed) – U.S. Patent No. 6,240,376 entitled METHOD AND APPARATUS FOR GATE-LEVEL SIMULATION OF SYNTHESIZED REGISTER TRANSFER LEVEL DESIGNS WITH SOURCE-LEVEL DEBUGGING and owned by Mentor Graphics Corporation.  Filed September 27, 2012 by Synopsys, Inc..  The ‘376 patent is currently the subject of a litigation styled Synopsys, Inc. v. Mentor Graphics Corporation (Case No. 3:12-cv-5025 (N.D. Cal.)).

The following ex parte requests were filed:

(1)         90/012,693 (electronically filed) – U.S. Patent No. 5,676,968 entitled TRANSDERMAL THERAPEUTIC SYSTEMS WITH CRYSTALIZATION INHIBITORS and owned by Bayer Schering Pharma AG.  Filed September 20, 2012.

(2)         90/012,694 (electronically filed) – U.S. Patent No. 7,5612,104 entitled Method to modify calibration data used to locate a mobile unit and owned by CommScope.  Filed September 24, 2012.

(3)         90/012,695 (electronically filed) – U.S. Patent No. 5,464,946 entitled SYSTEM AND APPARATUS FOR INTERACTIVE MULTIMEDIA ENTERTAINMENT and owned by 1st Media, LLC.  Filed September 24, 2012 by Sony Computer Entertainment America LLC.  The ‘946 patent is currently the subject of a litigation styled 1st Media, LLC v. Electronic arts, Inc., et al. (Case No. 2:07-cv-1589-JCM-RJJ (D. Nev.)).

(4)         90/012,696 (electronically filed) – U.S. Patent No. 7,104,465 entitled WATER SPRAY RETORT SYSTEM SUITABLE FOR PAPERBOARD PACKAGES and owned by John Bean Technologies Corporation.  Filed September 25, 2012 by John Bean Technologies Corporation.

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