Esoterix DNA Amplification Patents Challenged, Week of April 8, 2013

Scott Daniels and Cindy Chen | April 15, 2013

On Friday Life Technologies requested ex parte reexamination of two Esoterix Genetic Labs patents, both entitled “Universal Primer Sequence For Multiplex DNA Amplification” (see ex parte Request Nos. (7) & (8)).  An infringement action involving those patents is currently pending in North Carolina.  Esoterix’ patents were originally owned by Genzyme Corporation.

Volkswagen seeks inter partes review of a luminaire patent owned by Light Transformation Technologies (see inter partes review Request No. (1)).  Light Transformation has sued quite a number of lighting device manufacturers for infringement of that patent, among them General Electric.

A Tessera patent is the target of an inter partes review requested by Amkor Technologies (see inter partes review Request No. (5)).  Tessera has sued Amkor in Delaware for infringement of that patent.

The following inter partes review requests were filed:

(1)         IPR2013-00238 (electronically filed) – U.S. Patent No. 8,220,959 entitled HIGHLY EFFICIENT LUMINAIRE HAVING OPTICAL TRANSFORMER PROVIDING PRECALCULATED ANGULAR INTENSITY DISTRIBUTION AND METHOD THEREOF and owned by Light Transformation Technologies, LLC. Filed April 10, 2013 by Volkswagen. The ‘959 patent is currently the subject matter of a litigation styled Light Transformation Technologies, LLC v. General Electric Company, et al. (Case No. 12-cv-00827 (E.D. Tex.)); Light Transformation Technologies, LLC v. Feit Electric Company, Inc., et al. (Case No. 12-cv-00828 (E.D. Tex.)); Light Transformation Technologies, LLC v. Lighting Science Group Corp., et al. (Case No. 12-cv-00826 (E. D. Tex.)).

(2)         IPR2013-00239 (electronically filed) – U.S. Patent No. 7,462,552 entitled METHOD DETACHABLE DIRECT BONDING AT LOW TEMPERATURES and owned by Ziptronix. Filed April 5, 2013 by Taiwan Semiconductor.

(3)         IPR2013-00240 (electronically filed) – U.S. Patent No. 6,670,905 entitled RADAR WARNING RECEIVER WITH POSITION AND VELOCITY SENSITIVE FUNCTIONS and owned by Escort Inc. Filed April 8, 2013 by K-40 Electronics, LLC. The ‘905 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.)). A second patent-in-suit is U.S. Patent 7,999,721. The petitioner had previously requested inter partes review of the ‘721 patent (see IPR2013-00203).

(4)          IPR2013-00241 (electronically filed) – U.S. Patent No. 6,370,954 entitled METHOD FOR COMPENSATING THE POSITION OFFSET OF A CAPACITIVE INERTIAL SENSOR, AND CAPACITIVE INERTIAL SENSOR and owned by STMicroelectronics, Inc. Filed April 8, 2013 by InvenSense, Inc. The ‘954 patent is currently the subject matter of a litigation styled STMicroelectronics, Inc. v. InvenSense, Inc. (Case No. 13-cv-1116 (N.D. Cal.)); In re Certain Microelectromechanical Systems (“MEMS Devices”) and Products Containing Same (Docket No. 2943 (USITC)).

(5)         IPR2013-00242 (electronically filed) – U.S. Patent No. 6,046,076 entitled VACUUM DISPENSE METHOD FOR DISPENSING AN ENCAPSULANT AND MACHINE THEREFOR and owned by Tessera, Inc. Filed April 9, 2013 by Amkor Technology, Inc. The ‘076 patent is currently the subject matter of a litigation styled Tessera, Inc. v. Amkor Technology, Inc. (Case No. 1:12-cv-00852-LSR (D. Del.)).

(6)         IPR2013-00245 (electronically filed) – U.S. Patent No. 5,743,190 entitled RERAILER APPARATUS and owned by Brookville Equipment.  Filed April 11, 2013 by A.L. Lee Corp.

(7)         IPR2013-00246 (electronically filed) – U.S. Patent No. 6,108,704 entitled POINT-TO-POINT INTERNET PROTOCOL and owned by Innovative Communications Technologies.  Filed April 11, 2013 by Sipnet EU S.R.O.  The ‘704 patent is the subject of infringement action styled Innovative Technologies v. Vivox (Case No. 2:12-cv-00008 (E.D. Va.)); Innovative Technologies v. Stalker Software (Case No. 2:12-cv-00009 (E.D. Va.)).  It is also the subject of ex parte reexamination No. 90/010,416.

(8)         IPR2013-00247 (electronically filed) – U.S. Patent No. 7,250,105 entitled MEASUREMENT OF SUBSTANCES IN LIQUIDS and owned by Lifescan.  Filed April 11, 2013 by Pharmatech Solutions.  The ‘105 patent is the subject of an infringement action styled Lifescan v. Shasta Techs.  (Case No. 5:11-cv-04494 (N.D. Cal.)).

(9)         IPR2013-00248 (electronically filed) – U.S. Patent No. 6,326,978 entitled DISPLAY METHOD FOR SELECTIVELY ROTATING WINDOWS ON A COMPUTER DISPLAY and owned by Rotatable Technologies.  Filed April 11, 2013 by Rackspace Hosting.

 The following ex parte requests were filed:

(1)         90/012,831 (electronically filed) – U.S. Patent No. 6,128,651 entitled INTERNET ADVERTISING WITH CONTROLLED AND TIMED DISPLAY OF AD CONTENT FROM CENTRALIZED SYSTEM CONTROLLER and owned by Klaustech, Inc. Filed April 8, 2013, likely by Admob, Inc. The ‘651 patent is currently the subject matter of a litigation styled Klaustech, Inc. v. Admob, Inc. (Case No. 6:10-cv-00039-LED (E.D. Tex.)).

(2)         90/012,832 (electronically filed) – U.S. Patent No. 8,005,303 entitled METHOD AND APPARATUS FOR ENCODING/DECODING IMAGE DATA and owned by RecogniCorp, LLC. Filed April 8, 2013.

(3)         90/012,833 (electronically filed) – U.S. Patent No. 7,479,900 entitled NOTIFICATION SYSTEMS AND METHODS THAT CONSIDER TRAFFIC FLOW PREDICAMENT DATA and owned by Eclipse IP, LLC. Filed April 9, 2013.

(4)         90/012,834 (electronically filed) – U.S. Patent No. 7,482,952 entitled RESPONSE SYSTEMS AND METHODS FOR NOTIFICATION SYSTEMS FOR MODIFYING FUTURE NOTIFICATIONS and owned by Eclipse IP, LLC. Filed April 9, 2013.

(5)         90/012,835 (electronically filed) – U.S. Patent No. 8,172,612 entitled ELECTRICAL CONNECTOR WITH GROUNDING MEMBER and owned by Corning Gilbert Inc.  Filed April 11, 2013 by PPC Broadband.  The ‘612 patent is the subject of an infringement action styled Corning Gilbert v. PPC Broadband (Case No. 2:12-cv-22808 (D. Ariz.)).

(6)         90/012,836 (electronically filed) – U.S. Patent No. 6,955,397 entitled VEHICLE SEAT ASSEMBLY HAVING ACTIVE HEAD RESTRAINT SYSTEM and owned by Lear Corp. Filed April 12, 2013 by TS Tech North America.  The ‘397 patent is the subject of an infringement styled Lear Corp. v. TS Tech North America (Case No. 2:11-cv-00245 (S.D. Ohio)).

(7)         90/012,837 (electronically filed) – U.S. Patent No. 5,882,856 entitled UNIVERSAL PRIMER SEQUENCE FOR MULTIPLEX DNA AMPLIFICATION and owned by Esoterix Genetic Labs..  Filed April 12, 2013 by Life Technologies.  The ‘856 patent is the subject of an infringement action styled Esoterix Genetic Labs. v. Life Technologies (Case No. 12-cv-411 (M.D.N.C.)).

(8)         90/012,838 (electronically filed) – U.S. Patent No. 6,207,372 entitled UNIVERSAL PRIMER SEQUENCE FOR MULTIPLEX DNA AMPLIFICATION and owned by Esoterix Genetic Labs..  Filed April 12, 2013 by Life Technologies.  The ‘856 patent is the subject of an infringement action styled Esoterix Genetic Labs. v. Life Technologies (Case No. 12-cv-411 (M.D.N.C.)).

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