Monsanto’s Attack on Two Pioneer Hi-Bred Patents among the Post-Grant Challenges Filed Week of October 15, 2012

| October 22, 2012

Monsanto has requested inter partes review of two Pioneer Hi-Bred International patents claiming a method for increasing corn seed quality (see inter partes review Request Nos. (3) & (4)).  The companies are involved in an infringement action over these patents in Iowa.

At the end of August ViiV Healthcare Co. and Vertex Pharmaceuticals Inc. sued Mylan in Delaware for infringing an aspartyl protease inhibitor patent.  Ranbaxy has now requested inter partes review of the patent (see inter partes review Request No. (5)).

The feud between Intellectual Ventures and Xilinx deepened Friday when the latter requested inter partes review of an IV video projection patent (see inter partes review Request No. (9)).

The following inter partes review requests were filed:

(1)         IPR2013-00020 (electronically filed) – U.S. Patent No. 7,297,364 entitled METHOD FOR REFURBISHING LAMP SURFACES and owned by Clearlamp, LLC.  Filed October 17, 2012 by LKQ Corporation. The ‘364 patent is currently the subject of a litigation styled Clearlamp, LLC v. LKQ Corporation (Case No. 1:12-cv-02533 (N.D. Ill.)).

(2)         IPR2013-00021 (electronically filed) – U.S. Patent No. 6,584,306 entitled TWO-WAY RADIO WITH SILENT ANNUNCIATION and owned by Cobra Electronics Corp. Filed October 16, 2012 by Midland Radio Corporation.

(3)         IPR2013-00022 (electronically filed) – U.S. Patent No. 5,518,989 entitled SEED VIGOR BY PRE-HARVEST DEFOLIATION OF MAIZE PLANTS and owned by Pioneer Hi-Bred International.  Filed October 17, 2012 by Monsanto Company. The ‘989 patent is currently the subject of a litigation styled Pioneer Hi-Bred Int’l, Inc. v. Monsanto Co. (Case No. 4:11-cv-00497-JAJ-RAW (S.D. Iowa)).

(4)         IPR2013-00023 (electronically filed) – U.S. Patent No. 6,162,974 entitled Seed vigor by pre-harvest defoliation of maize plants and owned by Pioneer Hi-Bred International.  Filed October 17, 2012 by Monsanto Company. The ‘974 patent is currently the subject of a litigation styled Pioneer Hi-Bred Int’l, Inc. v. Monsanto Co. (Case No. 4:11-cv-00497-JAJ-RAW (S.D. Iowa)).

(5)         IPR2013-00024 (electronically filed) – U.S. Patent No. 6,436,989 entitled PRODRUGS OF ASPARTYL PROTEASE INHIBITORS and owned by Vertex Pharmaceuticals Inc.  Filed October 18, 2012 by Ranbaxy Laboratories, Ltd. The ‘989 patent is currently the subject of a litigation styled ViiV Healthcare Co. and Vertex Pharmaceuticals Inc. v. Mylan Inc. (Case No. 12-1065-RGA (D. Del.)).

(6)         IPR2013-00026 (electronically filed) – U.S. Patent No. 6,029,111 entitled VEHICLE NAVIGATION SYSTEM AND METHOD USING GPS VELOCITIES and owned by Beacon Navigation GmbH.  Filed October 18, 2012 by Denso Corporation. The ‘111 patent is currently the subject of a litigation styled Beacon Navigation GmbH v. Chrysler Group LLC (Case No. 1:11-cv-00922-GMS (D. Del.)); Beacon Navigation GmbH v. Ford Motor Company (Case No. 1:11-cv-00924-GMS (D. Del.)); Beacon Navigation GmbH v. General Motors LLC (Case No. 1:11-cv-00927-GMS (D. Del.)); Beacon Navigation GmbH v. Audi AG et al. (Case No. 1:11-cv-00929-GMS (D. Del.)); Beacon Navigation GmbH v. Bayerische Motoren Werke AG et al. (Case No. 1:11-cv-00931-GMS (D. Del.)); Beacon Navigation GmbH v. Honda Motor Co., Ltd. et al. (Case No. 1:11-cv-00933-GMS (D. Del.)); and a host of similar litigation against Hyundai Motor, Jaguar Land Rover, Kia Motors,  Daimler, Nissan, Porsche, Fuji Heavy Industries, Suzuki Motor, Toyota Motor, Volkswagen, and Volvo, all of which are filed contemporaneously in the District Court of Delaware.

(7)         IPR2013-00027 (electronically filed) – U.S. Patent No. 5,862,511 entitled VEHICLE NAVIGATION SYSTEM AND METHOD and owned by Beacon Navigation GmbH.  Filed October 18, 2012 by Denso Corporation. The ‘511 patent is currently the subject of a litigation styled Beacon Navigation GmbH v. Chrysler Group LLC (Case No. 1:11-cv-00922-GMS (D. Del.)); Beacon Navigation GmbH v. Bayerische Motoren Werke AG et al. (Case No. 1:11-cv-00931-GMS (D. Del.)); Beacon Navigation GmbH v. Honda Motor Co., Ltd. et al. (Case No. 1:11-cv-00933-GMS (D. Del.)); Beacon Navigation GmbH v. Hyundai Motor Company et al. (Case No. 1:11-cv-00935-GMS (D. Del.)); Beacon Navigation GmbH v. Jaguar Land Rover North America, LLC et al. (Case No. 1:11-cv-00937-GMS (D. Del.)); Beacon Navigation GmbH v. Kia Motors Corp. et al. (Case No. 1:11-cv-00940-GMS (D. Del.)); Beacon Navigation GmbH v. Mazda Motor Corporation and Mazda Motor of America, Inc. (Case No. 1:11-cv-00941-GMS (D. Del.)); Beacon Navigation GmbH v. Daimler AG et al. (Case No. 1:11-cv-00944-GMS (D. Del.)); Beacon Navigation GmbH v. Suzuki Motor Corporation and American Suzuki Motor Corporation (Case No. 1:11-cv-00954-GMS (D. Del.)); Beacon Navigation GmbH v. Volkswagen AG et al. (Case No. 1:11-cv-00958-GMS (D. Del.))

(8)         IPR2013-00028 (electronically filed) – U.S. Patent No. 6,404,480 entitled CONTACT STRUCTURE and owned by Semiconductor Energy Laboratory Co., Ltd.  Filed October 19, 2012 by Chi Mei Innolux Corp.  The ‘480 patent is currently the subject of a litigation styled Semiconductor Energy Laboratory Co., Ltd. v. Chi Mei Innolux Corp. (Case No. SACV12-0021-JST (C.D. Cal.)).

(9)         IPR2013-00029 (electronically filed) – U.S. Patent No. 5,632,545 entitled ENHANCED VIDEO PROJECTION SYSTEM and owned by Intellectual Ventures I, LLC.  Filed October 19, 2012 by Xilinx, Inc.

The following ex parte requests were filed:

(1)         90/012,704 (electronically filed) – U.S. Patent No. 8,143,015 entitled METHODS OF CLEAVING DNA WITH RATIONALLY-DESIGNED MEGANUCLEASES and owned by Duke University.  Filed October 15, 2012.

(2)         90/012,705 (electronically filed) – U.S. Patent No. 6,887,114 entitled ELECTRICAL CONNECTOR WITH HIGH PERFORMANCE CONTACTS and owned by Hon Hai Precision Ind. Co., Ltd.  Filed October 17, 2012. The ‘114 patent is currently the subject of litigation styled Lotes Co., Ltd. v. Hon Hai Precision Industry Co., Ltd et al (Case No. 1:12-cv-07465 (S.D.N.Y.)).

(3)         90/012,706 (electronically filed) – U.S. Patent No. 6,012,101 entitled COMPUTER NETWORK HAVING COMMONLY LOCATED COMPUTING SYSTEMS and owned by INT Labs, Inc..  Filed October 18, 2012.

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