Volkswagen Takes on Five Norman IP Holdings, Week of February 4, 2013

Scott Daniels and Cindy Chen | February 11, 2013

Volkswagen requested reexamination of five WiFi circuitry patents owned by Norman IP Holdings (see ex parte Request Nos. (1) & (3) to (6)).  The patents were originally assigned to Advanced Micro Devices, but later transferred through a series of companies, among them RPX, to Norman IP Holdings.

RPX describes itself as “the industry leader in comprehensive patent risk management through our defensive acquisition, litigation insurance, patent intelligence and strategic advisory services.  For our clients, the result is strong, broad-based defense against NPE litigation and dramatically lower operating costs and financial risk.”  Bloomberg describes Norma IP as “an intellectual property licensing company[that] controls patents covering a variety of consumer devices, which include Bluetooth enabled devices, camcorders, cameras, cellular telephones, copiers, cordless telephones, data storage devices, desktop personal computers, home entertainment electronics, laptops, PDAs, portable MP3 players, printers, speech recognition, WiFi enabled devices, work stations.” Norman IP used to be Saxon Innovations, LLC and is located in Tyler, Texas.

On Friday an anonymous request for ex parte reexamination was filed against a data search patent owned by I/P Engine (see ex parte Request No. 11)).  In September of 2011, I/P Engine, that was later bought by Vringo, asserted the ‘664 patent in a patent infringement action against Google and AOL, among others. The case concluded in 2012 with a jury verdict of approximately $30 million in damages to I/P Engine and Vringo.

And yet another reexamination request was filed by Xilinx against an Intellectual Ventures semiconductor patent (see ex parte Request No. (7)).

The following inter partes review requests were filed:

(1)         IPR2013-00131 (electronically filed) – U.S. Patent No. 6,635,196 entitled MOLDED ARTICLES HAVING A SURFACE BEARING A LENTICULAR IMAGE and owned by National Graphics, Inc.  Filed February 1, 2013 by Dynamic Drinkware, LLC.  The ’196 patent is currently the subject of a litigation styled National Graphics, Inc. v. Brax Ltd., et al. (Case No. 12-cv-01119-WCG (E.D. Wis.))

(2)         IPR2013-00132 (electronically filed) – U.S. Patent No. 7,806,360 entitled CREEL MAGAZINE SUPPLY SYSTEM AND METHOD and owned by Automated Creel Systems, Inc.  Filed February 1, 2013 by Shaw Industries Group, Inc.

 The following ex parte requests were filed:

(1)         90/012,781 (electronically filed) – U.S. Patent No. 5,530,597 entitled APPARATUS AND METHOD FOR DISABLING INTERRUPT MASKS IN PROCESSORS OR THE LIKE and owned by Norman IP Holdings, LLC. Filed February 4, 2013, by Volkswagen. The ‘597 patent is currently the subject of a litigation styled Norman IP Holdings, LLC v. Lexmark International, Inc., et al. (Case No. 6:11-cv-00495-LED (E.D. Tex.)); Saxon Innovations, LLC v. Apple, Inc. et al. (Case No. 6:08-cv-00265-JDL)).

(2)         90/012,782 (electronically filed) – U.S. Patent No. 8,324,136 entitled SYNERGISTIC BEAD LUBRICANT AND METHODS FOR PROVIDING IMPROVED LUBRICATION TO DRILLING FLUIDS FOR HORIZONTAL DRILLING and owned by Grinding and Sizing Company LLC. Filed February 4, 2013, by Bulldog Chemical LLC.

(3)         90/012,783 (electronically filed) – U.S. Patent No. 5,592,555 entitled WIRELESS COMMUNICATIONS PRIVACY METHOD AND SYSTEM and owned by Norman IP Holdings, LLC. Filed February 5, 2013, by Volkswagen. The ‘555 patent is currently the subject of litigation styled Norman IP Holdings, LLC v. Lexmark International, Inc., et al. (Case No. 6:11-cv-00495-LED (E.D. Tex.)); Saxon Innovations, LLC v. Apple, Inc. et al. (Case No. 6:08-cv-00265-JDL)); Saxon Innovations, LLC v. Nokia Corp., et al. (Case No. 6:07-cv-00490-LED-JDL (E.D. Tex.)).

(4)         90/012,784 (electronically filed) – U.S. Patent No. 5,502,689 entitled CLOCK GENERATOR CAPABLE OF SHUT-DOWN MODE AND CLOCK GENERATION METHOD and owned by Norman IP Holdings, LLC. Filed February 5, 2013, by Volkswagen. The ‘689 patent is currently the subject of litigation styled Norman IP Holdings, LLC v. Lexmark International, Inc., et al. (Case No. 6:11-cv-00495-LED (E.D. Tex.)); Saxon Innovations, LLC v. Apple, Inc. et al. (Case No. 6:08-cv-00265-JDL)); Saxon Innovations, LLC v. Nokia Corp., et al. (Case No. 6:07-cv-00490-LED-JDL (E.D. Tex.)).

(5)         90/012,785 (electronically filed) – U.S. Patent No. 5,608,873 entitled DEVICE AND METHOD FOR INTERPROCESSOR COMMUNICATIONS USING MAILBOXES OWNED BY PROCESSOR DEVICES and owned by Norman IP Holdings, LLC. Filed February 5, 2013, by Volkswagen. The ‘873 patent is currently the subject of litigation styled Norman IP Holdings, LLC v. Lexmark International, Inc., et al. (Case No. 6:11-cv-00495-LED (E.D. Tex.)).

(6)         90/012,786 (electronically filed) – U.S. Patent No. 5,771,394 entitled APPARATUS HAVING SIGNAL PROCESSORS FOR PROVIDING PERSPECTIVE SIGNALS TO MASTER PROCESSOR TO NOTIFY THAT NEWLY WRITTEN DATA CAN BE OBTAINED FROM ONE OR MORE MEMORIES and owned by Norman IP Holdings, LLC. Filed February 5, 2013, by Volkswagen. The ‘394 patent is currently the subject of litigation styled Norman IP Holdings, LLC v. Lexmark International, Inc., et al. (Case No. 6:11-cv-00495-LED (E.D. Tex.)); Saxon Innovations, LLC v. Nokia Corp., et al. (Case No. 6:07-cv-00490-LED-JDL (E.D. Tex.)).

(7)         90/012,787 (electronically filed) – U.S. Patent No. 5,687,325 entitled APPLICATION SPECIFIC FIELD PROGRAMMABLE GATE ARRAY and owned by Intellectual Ventures II, LLC. Filed February 5, 2013, possibly by Xilinx.

(8)         90/012,788 (electronically filed) – U.S. Patent No. 7,128,660 entitled METHOD OF GOLF CLUB PERFORMANCE ENHANCEMENT AND ARTICLES RESULTANT THEREFROM and owned by Triple Tee Golf, Inc. Filed February 6, 2013.

(9)         90/012,789 (electronically filed) – U.S. Patent No. 5,960,074 entitled MOBILE TELE-COMPUTER NETWORK FOR MOTION PICTURE, TELEVISION AND TV ADVERTISING PRODUCTION and owned by Advanced Media Networks, LLC. Filed February 6, 2013. The ‘074 patent is currently the subject of a litigation styled Advanced Media Networks, LLC v. Row 44 Inc. & Southwest Airlines (Case No. 2:12-cv-11018-PA-MAN (C.D. Cal.)).

(10)     90/012,790 (electronically filed) – U.S. Patent No. 6,445,777 entitled MOBILE TELE-COMPUTER NETWORK and owned by Advanced Media Networks, LLC. Filed February 6, 2013. The ‘777 patent is currently the subject of a litigation styled Advanced Media Networks, LLC v. Row 44 Inc. & Southwest Airlines (Case No. 2:12-cv-11018-PA-MAN (C.D. Cal.)).

(11)     90/012,791 (electronically filed) – U.S. Patent No. 6,775,664 entitled INFORMATION FILTER SYSTEM AND METHOD FOR INTEGRATED CONTENT-BASED AND COLLABORATIVE/ADAPTIVE FEEDBACK QUERIES and owned by I/P Engine, Inc. Filed February 8, 2013, likely by Microsoft. The ‘664 patent is currently the subject of a litigation styled I/P Engine, Inc. v. Microsoft Corp. (Case No. 13-cv-688 (S.D.N.Y.)).

(12)     90/012,792 (electronically filed) – U.S. Patent No. 6,294,953 entitled HIGH SENSITIVITY DEMODULATOR FOR A RADIO TAG AND METHOD and owned by Axcess International. Filed February 8, 2013, perhaps by Savi Technologies. The ‘953 patent is currently the subject of a litigation styled Axcess International v. Savi (Case No. 3:10-cv-1033 (N.D. Tex.)).

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