Xilinx Seeks Inter Partes Review of Intellectual Ventures Video Projection Patent, Week of January 14, 2013

Scott Daniels and Cindy Chen | January 22, 2013

The feud between Xilinx and Intellectual Ventures continued last week, when the former filed an inter partes review petition against U.S. Patent No. 5,779,334 owned by IV and claiming a system for enhanced video projection (see inter partes review Request No. (1)).  The parent of the ‘334 patent, U.S. Patent No. 5,632,545, is the subject of an earlier petition for inter partes review (IPR 2013-0029), also filed by Xilinx.

Ex parte reexamination was requested for Apple’s U.S. Patent No. 8,245,924, related to podcasting (see ex parte Request No. (1)). Its main claim reads:

A portable media player, comprising: a communication port adapted for communication with an external device other than the portable media player; and a processor coupled with the communication port and adapted to update a podcast having episodes by accessing episode information for the podcast and then updating the podcast with a new episode if it is determined that there is a new episode of the podcast.

There was fair amount of comment on the Internet regarding this patent when it issued in August.

The following inter partes reviewrequests were filed:

(1)         IPR2013-00112 (electronically filed) – U.S. Patent No. 5,779,334 entitled ENHANCED VIDEO PROJECTION SYSTEM and owned by Intellectual Ventures I, LLC.  Filed January 15, 2013 by Xilinx, Inc.

(2)         IPR2013-00104 (electronically filed) – U.S. Patent No. 8,121,904 entitled ELECTRONIC PROPOSAL PREPARATION SYSTEM and owned by Clear with Computers, LLC.  Filed January 16, 2013 by Hyundai Motor America, Inc.  The ‘904 patent is currently the subject of a litigation styled Clear with Computers, LLC v. Hyundai Motor America, Inc. (Case No. 6:12-CV-777-LED (E.D. Tex.)).  In addition, Clear with Computers, LLC v. Hyundai Motor America, Inc. (Case No. 6:09-CV-479-LED (E.D. Tex.)) involves U.S. Patent No. 7,606,739, which is the parent of the ‘904 patent.  That case is currently on appeal at the Federal Circuit (No. 2012-1291).

(3)         IPR2013-00114 (electronically filed) – U.S. Patent No. 5,972,401 entitled PROCESS FOR MANUFACTURING TASTELESS SUPER-PURIFIED SMOKE FOR TREATING SEAFOOD TO BE FROZEN AND THAWED and owned by Leo Sandau.  Filed January 18, 2013 by Anova LLC.  The ‘401 patent is currently the subject of a litigation styled William R. Kowalski and Hawaii International Seafood, Inc. v. Anova Food, LLC, et al. (Case No. CV11-00795 (D. Haw.)).

The following ex parterequests were filed:

(1)         90/012,766 (electronically filed) – U.S. Patent No. 8,245,924 entitled TECHNIQUES AND SYSTEMS FOR SUPPORTING PODCASTING and owned by Apple.  Filed January 14, 2013.

(2)         90/012,767 (electronically filed) – U.S. Patent No. 6,725,964 entitled RELATING TO ELECTRICAL POWER ASSISTED STEERING and owned by TRW LucasVarity Electric Steering.  Filed January 18, 2013.

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