Ricoh Seeks Reexamination of Four Facsimile Circuit Patents

Scott Daniels and Cindy Chen | March 25, 2013

Infinity Computer Products has sued 13 computer/printer companies – Toshiba, Oki, Samsung, Lexmark, Canon, Konica, Panasonic, Xerox, HP, Epson, Dell, Brother and Ricoh – for infringement of four patents related to interface circuits for linking operation of a facsimile device to a computer, and now latter company, Ricoh, has requested reexamination of each of those four patents (see ex parte reexamination Nos. (9) to (12)).

SAP America has requested inter partes review of two patents owned by Pi-Net International. Inc., (see inter partes review Nos. (1) & (2)).  Both patents relate to “methods and apparatus for providing real-time, two-way transactional capabilities on the Web.”  Pi-Net has sued quite a number of financial and auto-rental companies, presumably SAP customers, for infringement of the two patents.

Kimberly-Clark diaper wars against First Quality opened a new front on Friday, when ex parte reexamination requests were filed against the former’s U.S. Patent No. 5,745,922 and 6,098,203 (see ex parte Request Nos. (7) & (8). 

The following inter partes review requests were filed:

(1)         IPR2013-00194 (electronically filed) – U.S. Patent No. 8,108,492 entitled WEB APPLICATION NETWORK PORTAL and owned by Pi-Net International, Inc. Filed March 18, 2013 by SAP America, Inc. The ‘492 patent is currently the subject matter of a litigation styled Pi-Net Int’l, Inc. v. 1st Valley Credit Union (Case No. 5:12-cv-01989 (C.D. Cal.)); Pi-Net Int’l, Inc. v. ACE Rent A Car Inc. (Case No. 2:12-cv-04303 (C.D. Cal.)); Pi-Net Int’l, Inc. v. Avis Budget Group Inc., et al. (Case No. 2:12-cv-09703 (C.D. Cal.)); Pi-Net Int’l, Inc. v. Dollar Thrifty Automotive Group Inc., et al. (Case No. 2:12-cv-04270 (C.D. Cal.)); and a plethora of other patent infringement cases against companies, including JPMorgan Chase, Sovereign Bank, UHaul, and Enterprise, filed in Delaware and the Northern District of California.  The lawsuits also alleged infringement of U.S. Patent No. 5,987,500 (IPR2013-00195).

(2)         IPR2013-00195 (electronically filed) – U.S. Patent No. 5,987,500 entitled A VALUE-ADDED NETWORK SYSTEM FOR ENABLING REAL-TIME BY-DIRECTIONAL TRANSACTIONS ON A NETWORK and owned by Pi-Net International, Inc. Filed March 18, 2013 by SAP America, Inc.  The ‘500 patent is the second patent asserted in the law suits mentioned above involving U.S. Patent No. 8,108,492 (IPR2013-00194).

(3)         IPR2013-00196 (electronically filed) – U.S. Patent No. 8,013,884 entitled DEVICE AND METHOD FOR PRINTING INFORMATION ON GLASS SLIDES and owned by Automatic Manufacturing Systems, Inc., d/b/a Accuplace. Filed March 19, 2013 by Primera Technology, Inc. The ‘884 patent is currently the subject matter of a litigation styled Automatic Manufacturing Systems, Inc. v. Primera Technology, Inc. (Case No. 6:12-cv-01727-RBD-DAB (M.D. Fla.)).

(4)         IPR2013-00197 (electronically filed) – U.S. Patent No. 8204561 entitled ONE PIECE CO-FORMED EXTERIOR HARD SHELL CASE WITH AN ELASTOMERIC LINER FOR MOBILE ELECTRONIC DEVICES and owned by Speculative Product Design, LLC. Filed March 20, 2013 by Fellowes, Inc. The ‘561 patent is currently the subject matter of law suits styled Certain Cases for Portable Electronic Devices (Inv. No. 337-TA-867/861 (U.S. ITC)); Speculative Product Design, LLC v. Fellowes, Inc. and Body Glove International, LLC (Case No. 3:12-cv-04998-EMC (N.D. Cal.)); Speculative Product Design, LLC v. JWIN Electronics, Corp. (Case No. 4:12-cv-04995 (N.D. Cal.)); Speculative Product Design, LLC v. Superior Communications, Inc. (Case No. 3:12-cv-04997 (N.D. Cal.)).

The following ex parte requests were filed:

(1)         90/012,806 (electronically filed) – U.S. Patent No. 5,670,325 entitled METHOD FOR THE DETECTION OF CLONAL POPULATIONS OF TRANSFORMED CELLS IN A GENOMICALLY HETEROGENEOUS CELLULAR SAMPLE and owned by Esoterix Genetic Labs. Filed March 18, 2013 by Life Technologies Corp.  The ‘325 patent is currently the subject matter of a litigation styled Esoterix Genetic Labs., LLC v. Life Technologies Corp., et al (Case No. 12-cv-411 (M.D.N.C.)).

(2)         90/012,807 (electronically filed) – U.S. Patent No. 7,635,249 entitled PIPE PICK-UP AND LAYDOWN APPARATUS and owned by Oilfield Innovators Ltd., LLC. Filed March 19, 2013 by Better Half Industries, LLC. The ‘249 patent is currently the subject matter of a litigation styled Better Half Industries, LLC v. Oilfield Innovators Ltd., LLC (Case No. 6:12-cv-01947-RTH-PJH (W.D. La.)).

(3)         90/012,808 (electronically filed) – U.S. Patent No. 7,665,944 entitled PIPE PICK-UP AND LAYDOWN APPARATUS AND METHOD and owned by Oilfield Innovators Ltd., LLC. Filed March 19, 2013 by Better Half Industries, LLC. The ‘944 patent is currently the subject matter of a litigation styled Better Half Industries, LLC v. Oilfield Innovators Ltd., LLC (Case No. 6:12-cv-01947-RTH-PJH (W.D. La.)).

(4)         90/012,810 (electronically filed) – Likely 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 March 20, 2013. The ‘074 patent is currently the subject matter of a litigation styled Advanced Media Networks LLC v. Row 44 Inc et. al. (Case No. 2:12-cv-11018-PA-MAN (C.D. Cal.)).

(5)         90/012,811 (electronically filed) – U.S. Patent No. 6,896,844 entitled PROCESS FOR GAS ASSISTED AND WATER ASSISTED INJECTION MOLDING and owned by Cinpres Gas Injection Ltd. Filed March 20, 2013.

(6)         90/012,812 (electronically filed) – U.S. Patent No. 6,106,192 entitled FLOW MODIFYING DEVICE FOR PAVING SCREEDS WITH EXTENDIBLE SECTIONS and owned by Blaw-Knox Construction Equipment Corp. Filed March 20, 2013.

(7)               90/012,813 (electronically filed) – U.S. Patent No. 5,745,922 entitled DISPOSABLE GARMENT AND RELATED MANUFACTURING EQUIPMENT AND METHODS and owned by Kimberly-Clark.  Filed March 22, 2013.  The ‘922 patent is the subject of an infringement action styled Kimberly-Clark v. First Quality (Case No. 09-cv-1685 (M.D. Pa.)).

(8)               90/012,814 (electronically filed) – U.S. Patent No. 6,098,203 entitled DISPOSABLE GARMENT AND RELATED MANUFACTURING EQUIPMENT AND METHODS and owned by Kimberly-Clark.  Filed March 22, 2013.  The ‘203 patent is the subject of an infringement action styled Kimberly-Clark v. First Quality (Case No. 09-cv-1685 (M.D. Pa.)).

(9)               90/012,815 (electronically filed) – U.S. Patent No. 7,489,423 entitled INTERFACE CIRCUIT FOR UTILIZING A FACSIMILE COUPLED TO A PC AS A SCANNER OR PRINTER and owned by Infinity Computer Products.  Filed March 22, 2013 by Ricoh.  The ‘423 is the subject of 13 infringement actions in Louisiana and Pennsylvania against Toshiba, Oki, Samsung, Lexmark, Canon, Konica, Panasonic, Xerox, HP, Epson, Dell, Ricoh and Brother.

(10)           90/012,816 (electronically filed) – U.S. Patent No. 6,894,811 entitled INTERFACE CIRCUIT FOR UTILIZING A FACSIMILE COUPLED TO A PC AS A SCANNER OR PRINTER and owned by Infinity Computer Products.  Filed March 22, 2013 by Ricoh.  The ‘811 is the subject of 13 infringement actions in Louisiana and Pennsylvania against Toshiba, Oki, Samsung, Lexmark, Canon, Konica, Panasonic, Xerox, HP, Epson, Dell, Ricoh and Brother.

(11)           90/012,817 (electronically filed) – U.S. Patent No. 8,040,574 entitled INTERFACE CIRCUIT FOR UTILIZING A FACSIMILE COUPLED TO A PC AS A SCANNER OR PRINTER and owned by Infinity Computer Products.  Filed March 22, 2013 by Ricoh. The ‘574 is the subject of 12 infringement actions in Louisiana and Pennsylvania against Toshiba, Oki, Samsung, Lexmark, Canon, Konica, Panasonic, Xerox, HP, Epson, Dell and Ricoh.

(12)           90/012,818 (electronically filed) – U.S. Patent No. 8,294,915 entitled INTERFACE CIRCUIT FOR UTILIZING A FACSIMILE COUPLED TO A PC AS A SCANNER OR PRINTER and owned by Infinity Computer Products.  Filed March 22, 2013 by Ricoh.  The ‘915 is the subject of 12 infringement actions in Louisiana and Pennsylvania against Toshiba, Oki, Samsung, Lexmark, Canon, Konica, Panasonic, Xerox, HP, Epson, Dell and Ricoh.

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