Eighteen Inter Partes Review Requests Filed, Week of March 25, 2013

Scott Daniels and Cindy Chen | April 1, 2013

The initial sticker shock, caused by the high filing fees for inter partes review requests, appears to be easing – last week, requests were filed against 18 patents, a weekly number quite comparable to the number of inter partes reexamination requests filed in the pre-AIA Era.  Notable requesters included Dell (see inter partes Request No. (1)), NuVasive (see inter partes Request No. (3)), Covidien (see inter partes Request No. (4)), Texas Instruments (see inter partes Request No. (5)), Butamax (see inter partes Request Nos. (6) & (7)), Hewlett-Packard (see inter partes Request No. (10)), and Sony (see inter partes Requests Nos. (11) & (12)).

The following inter partes review requests were filed:

(1)         IPR2013-00202 (electronically filed) – U.S. Patent No. 5,434,562 entitled METHOD FOR LIMITING COMPUTER ACCESS TO PERIHPERAL DEVICES and owned by NovelPoint Security, LLC. Filed March 25, 2013 by Dell, Inc. The patent owner has asserted the ‘562 patent in at least 31 litigations against a host of defendants, including Dell (Case No. 2:2012-cv-105 (E.D. Tex.)); Samsung (Case Nos. 2:2012-cv-100, 2:2013-cv-079 (E.D. Tex.)); Hewlett-Packard Co. (Case Nos. 2:2012-cv-104, 2:2013-cv-083 (E.D. Tex.)); and Hitachi (Case No. 2:2013-cv-081 (E.D. Tex.)).

(2)         IPR2013-00203 (electronically filed) – U.S. Patent No. 7,999,721 entitled RADAR DETECTOR WITH NAVIGATIONAL FUNCTION and owned by Escort, Inc. Filed March 22, 2013 by K-40 Electronics, LLC. The ‘721 patent is currently the subject matter of a litigation styled Escort Inc. v. K-40 Electronics, LLC (Case No. 1:12-cv-00937 (S.D. Ohio)). U.S. Patent No. 6,670,905 is also asserted in the litigation. The petitioner expects to requests inter partes review of the ‘905 patent.

(3)         IPR2013-00206 & IPR2013-00208 (electronically filed) – U.S. Patent No. 8,251,997 entitled METHOD FOR INSERTING AN ARTIFICIAL IMPLANT BETWEEN TWO ADJACENT VERTEBRAE ALONG A CORONAL PLANE and owned by Warsaw Orthopedic, Inc. Filed March 22, 2013 by NuVasive, Inc. The ‘997 patent is currently the subject matter of a litigation styled Warsaw Orthopedic, Inc., et al. v. NuVasive, Inc. (Case No. 3:12-cv-02738-CAB (S.D. Cal.)). In what is becoming a common practice, two inter partes requests were filed for the purpose of presenting a thorough challenge to the ‘997 patent despite the PTO’s page limit.

(4)         IPR2013-00209 (electronically filed) – U.S. Patent No. 8,317,070 entitled SURGICAL STAPLING DEVICES THAT PRODUCE FORMED STAPLES HAVING DIFFERENT LENGTHS and owned by Ethicon Endo-Surgery, Inc. Filed March 25, 2013 by Covidien LP.

(5)         IPR2013-00213 (electronically filed) – U.S. Patent No. 6,791,298 entitled MONOLITHIC BATTERY CHARGING DEVICE and owned by Unifi Scientific Batteries, LLC. Filed March 26, 2013 by Texas Instruments Inc. The ‘298 patent is currently the subject matter of litigation styled Unifi Scientific Batteries, LLC v. HTC Corp., et al. (Case No. 6:12-cv-221 (E.D. Tex.)); Unifi Scientific Batteries, LLC v. Research In Motion, Corp., et al. (case No. 6:12-cv-223 (E.D. Tex.)); Unifi Scientific Batteries, LLC v. Sony Mobile Comm. AB, et al. (Case No. 6:12-cv-224 (E.D. Tex.)); Unifi Scientific Batteries, LLC v. Nokia Siemens Networks, LLC, et al. (Case no. 6:12-cv-225 (E.D. Tex.)).

(6)         IPR2013-00214 (electronically filed) – U.S. Patent No. 8,304,588 entitled RECOVERY OF HIGHER ALCOHOLS FROM DILUTE AQUEOUS SOLUTIONS and owned by Gevo, Inc. Filed March 26, 2013 by Butamax(TM) Advanced Biofuels LLC. The ‘588 patent is currently the subject matter of litigation styled Gevo, Inc. v. Butamax(TM) Advanced Biofuels, LLC, et al. (Case No. 12-70(SLR) (D. Del.))

(7)         IPR2013-00215 (electronically filed) – U.S. Patent No. 8,283,505 entitled RECOVERY OF HIGHER ALCOHOLS FROM DILUTE AQUEOUS SOLUTIONS and owned by Gevo, Inc. Filed March 26, 2013 by Butamax(TM) Advanced Biofuels LLC. The ‘505 patent is currently the subject matter of litigation styled Butamax(TM) Advanced Biofuels LLC, et al. v. Gevo, Inc. (Case No. 12-1301 (SLR) (D. Del.)).

(8)         IPR2013-00216 (electronically filed) – U.S. Patent No. 5,572,576 entitled TELEPHONE ANSWERING DEVICE LINKING DISPLAYED DATA WITH RECORDED AUDIO MESSAGE and owned by IPVX Patent Holdings, Inc. Filed March 26, 2013 by Applied Voice & Speech Technologies. The ‘576 patent is currently the subject matter of litigation styled Klausner Technologies, Inc. v. Applied Voice & Speech Technologies, Inc. (Case No. 6:12-cv-00168 (E.D. Tex.)); Klausner Technologies, Inc. v. Aastra Technologies Ltd., et al. (Case No. 6:11-cv-00480 (E.D. Tex.)); Klausner Technologies, Inc. v. Altigen Communications, Inc., et al. (Case No. 6:11-cv-568 (E.D. Tex.)).

(9)         IPR2013-00212 (electronically filed) – U.S. Patent No. 8,052,583 entitled SWIVEL EXERCISER and owned by Cheng-Kang Chu. Filed March 27, 2013 by UKing Universe, Inc.

(10)     IPR2013-00217 (electronically filed) – U.S. Patent No. 7,162,549 entitled MULTIMODE CONTROLLER FOR INTELLIGENT AND “DUMB” FLASH CARDS and owned by MCM Portfolio, LLC. Filed March 27, 2013 by Hewlett-Packard Company. The ‘549 patent has been exclusively licensed to Technology Properties Limited, LLC (“TPL”). TPL has asserted the ‘549 patent in a number of patent infringement litigation filed in the district court for the Eastern District of Texas against, among others, Hewlett-Packard, Acer, and Dell. The same patent was also asserted in Certain Computer and Computer Peripheral Devices and Components Thereof and Products Containing Same (Inv. No. 337-TA-841 (ITC)).

(11)     IPR2013-00218 (electronically filed) – U.S. Patent No. 6,665,003 entitled SYSTEM AND METHOD FOR GENERATING AND DISPLAYING PANORAMIC IMAGES AND MOVIES and owned by Yissum Research Development Company of the Hebrew University of Jerusalem. Filed March 29, 2013 by Sony. The ‘003 patent is currently the subject matter of a litigation styled HumanEyes Technologies Ltd. v. Sony Electronics Inc., et al. (Case No. 1:12-CV-00398 (D. Del.)).

(12)     IPR2013-00219 (electronically filed) – U.S. Patent No. 7,477,284 entitled SYSTEM AND METHOD FOR CAPTURING AND VIEWING STEREOSCOPIC PANORAMIC IMAGES and owned by Yissum Research Development Company of the Hebrew University of Jerusalem. Filed March 29, 2013 by Sony. The ‘284 patent is currently the subject matter of a litigation styled HumanEyes Technologies Ltd. v. Sony Electronics Inc., et al. (Case No. 1:12-CV-00398 (D. Del.)).

(13)     IPR2013-00220 (electronically filed) – U.S. Patent No. 8,005,752 entitled SYSTEM AND METHOD FOR ASSESSING AND MANAGING FINANCIAL TRANSACTIONS and owned by AutoAlert, Inc. Filed March 28, 2013 by Dominion Dealer Solutions, LLC. The ‘526 patent is currently the subject matter of a litigation styled AutoAlert, Inc. v. Dominion Dealer Solutions, LLC, et al. (Case No. SACV12-01661 JST (JPR) (C.D.Cal.)).

(14)     IPR2013-00222 (electronically filed) – U.S. Patent No. 7,827,099 entitled SYSTEM AND METHOD FOR ASSESSING AND MANAGING FINANCIAL TRANSACTIONS and owned by AutoAlert, Inc. Filed March 28, 2013 by Dominion Dealer Solutions, LLC. The ‘099 patent is currently the subject matter of a litigation styled AutoAlert, Inc. v. Dominion Dealer Solutions, LLC, et al. (Case No. SACV12-01661 JST (JPR) (C.D.Cal.)).

(15)     IPR2013-00223 (electronically filed) – U.S. Patent No. 8,086,529 entitled SYSTEM AND METHOD FOR ASSESSING AND MANAGING FINANCIAL TRANSACTIONS and owned by AutoAlert, Inc. Filed March 28, 2013 by Dominion Dealer Solutions, LLC. The ‘529 patent is currently the subject matter of a litigation styled AutoAlert, Inc. v. Dominion Dealer Solutions, LLC, et al. (Case No. SACV12-01661 JST (JPR) (C.D.Cal.)).

(16)     IPR2013-00224 (electronically filed) – U.S. Patent No. 8,095,461 entitled SYSTEM AND METHOD FOR ASSESSING AND MANAGING FINANCIAL TRANSACTIONS and owned by AutoAlert, Inc. Filed March 28, 2013 by Dominion Dealer Solutions, LLC. The ‘461 patent is currently the subject matter of a litigation styled AutoAlert, Inc. v. Dominion Dealer Solutions, LLC, et al. (Case No. SACV12-01661 JST (JPR) (C.D.Cal.)).

(17)     IPR2013-00225 (electronically filed) – U.S. Patent No. 8,396,791 entitled SYSTEM AND METHOD FOR ASSESSING AND MANAGING FINANCIAL TRANSACTIONS and owned by AutoAlert, Inc. Filed March 28, 2013 by Dominion Dealer Solutions, LLC. The ‘791 patent is currently the subject matter of a litigation styled AutoAlert, Inc. v. Dominion Dealer Solutions, LLC, et al. (Case No. SACV12-01661 JST (JPR) (C.D.Cal.)).

(18)     IPR2013-00226 (electronically filed) – U.S. Patent No. 7,110,936 entitled SYSTEM AND METHOD FOR GENERATING AND MAINTAINING SOFTWARE CODE and owned by ComplementSoft LLC. Filed March 29, 2013 by SAS Institute, Inc. The ‘936 patent is currently the subject matter of a litigation styled ComplementSoft, LLC v. SAS Institute, Inc. (Case No. 1:12-cv-07372 (N.D. Ill.)).

The following ex parte requests were filed:

(1)         90/012,819 (electronically filed) – U.S. Patent No. 7,906,463 entitled BIOCIDE FOR WELL STIMULATION AND TREATMENT FLUIDS and owned by Kemira Chemicals Inc. Filed March 25, 2013.

(2)         90/012,820 (electronically filed) – U.S. Patent No. 8,336,638 entitled METHOD AND APPARATUS FOR HARVESTING AND PICKING UP SOD and owned by Trebro Manufacturing, Inc. Filed March 27, 2013.

(3)         90/012,822 (electronically filed) – U.S. Patent No. 6,459,413 entitled MULTI-FREQUENCY BAND ANTENNA and owned by Industrial Technology Research Institute. Filed March 28, 2013.  The ‘413 patent is the subject of an infringement action styled Industrial Technology Research Institute v. LG (Case No. 3:12-cv-393 (D. Del.)).

(4)         90/012,823 (electronically filed) – U.S. Patent No. 7,458,433 entitled ELECTRIC MOTOR AND GEAR DRIVE ASSEMBLY FOR DRIVING A VEHICLE WHEEL and owned by ArvinMeritor Technology, LLC. Filed March 29, 2013.

(5)         90/012,824 (electronically filed) – U.S. Patent No. 5690988 entitled PET FOOD COMPOSITION OF IMPROVED PALATABILITY AND A METHOD OF ENHANCING THE PALATABILITY OF A FOOD COMPOSITION and owned by Colgate-Palmolive Company. Filed March 30, 2013.

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