Apple Takes another Crack at VirnetX ‘135 Patent, Week of June 10, 2013

Scott Daniels and Cindy Chen | June 17, 2013

VirnetX’s U.S. Patent No. 6,502,135 is the crown jewel of its portfolio of network patents that it has used to obtain a $200 million settlement with Microsoft and a $368.2 million verdict against AppleApple has now filed two inter partes review requests challenging the validity of the ‘135 patent (see inter partes review Request No. (9)).  The challenge, however, raise an estoppel issue, addressed by Apple in its petitions.

Specifically, Apple acknowledges that it was served with a complaint, which led to Case No. 6:10-cv-00417, in August 2010, that is, more than one year prior to the filing of the instant petition. However, Apple argues that the August 2010 complaint does not foreclose the instant petition under 35 U.S.C. §315(b), because Apple was served with a new complaint in December of 2012, which matured into Case No. 6:13-cv-00211-LED. Section 315(b) reads, “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). Emphasizing the plain wording of §315(b), Apple insists that as long as a petition for inter partes review is filed within one year of the date any complaint alleging infringement of the patent is served on the petitioner, the petition is timely.

Flying in less rarified air were two inter partes requests filed by the Federal Reserve against an individual inventor – Leon Stambler – who has sued the Fed for infringement of the patents (see inter partes review Request Nos. (5) & (7)).  Also, BioDelivery Sciences International asked for inter partes review of two MonoSol RX patents claiming thin films for drug delivery systems (see inter partes review Request Nos. (1) & (2)).

The following inter partes review requests were filed:

(1)         IPR2013-00315 (electronically filed) – U.S. Patent No. 7,425,292 C1 entitled THIN FILMS WITH NON-SELF-AGGREGATING UNIFORM HETEROGENEITY AND DRUG DELIVERY SYSTEMS MADE THEREFROM and owned by MonoSol RX, LLC. Filed June 12, 2013 by BioDelivery Sciences International, Inc. The ‘292 patent is related to three other patents owned by MonoSol RX (US Patent Nos. 7,425,292 B2, 7,824,588, and 7,357,891 B2), all three of which have been asserted against BioDelivery Sciences International in a litigation styled MonoSol RX, LLC v. BioDelivery Sciences International, Inc., et al. (Case No. 10-cv-5695 (D.N.J.)).

(2)         IPR2013-00316 (electronically filed) – U.S. Patent No. 7,357,891 C1 entitled PROCESS FOR MAKING AN INGESTIBLE FILM and owned by MonoSol RX, LLC. Filed June 12, 2013 by BioDelivery Sciences International, Inc. The ‘891 patent is related to three other patents owned by MonoSol RX (US Patent Nos. 7,425,292 B2, 7,824,588, and 7,357,891 B2), all three of which have been asserted against Petitioner in a litigation styled MonoSol RX, LLC v. BioDelivery Sciences International, Inc., et al. (Case No. 10-cv-5695 (D.N.J.)).

(3)         IPR2013-00339 (electronically filed) – U.S. Patent No. 6,888,661 entitled SQUARE FILTER FUNCTION TUNABLE OPTICAL DEVICES and owned by Cheetah Omni, LLC. Filed June 10, 2013 by Infinera Corporation. The ‘661 patent is currently the subject matter of a litigation styled Finisar Corporation v. Cheetah Omni, LLC (Case No. 2:11CV15625 (E.D. Mich.)); Cheetah Omni, LLC v. Alcatel-Lucent USA Inc., et al. (Case No. 6:11CV390 (E.D. Tex.)).

(4)          IPR2013-00340 & IPR2013-00342 (electronically filed) – U.S. Patent No. 8,323,060 entitled COAXIAL CABLE CONNECTOR HAVING ELECTRICAL CONTINUITY MEMBER and owned by PPC Broadband, Inc. Filed June 10, 2013 by Corning Gilbert Inc. The ‘060 patent is currently the subject matter of a litigation styled PPC Broadband, Inc. v. Corning Gilbert Inc. (Case No. 5:12-cv-0911-GLS-DEP (N.D.N.Y.)).

(5)         IPR2013-00341 (electronically filed) – U.S. Patent No. 5,793,302 entitled METHOD FOR SECURING INFORMATION RELEVANT TO A TRANSACTION and owned by Inventor. Filed June 11, 2013 by Federal Reserve Banks. The ‘302 patent is currently the subject matter of a litigation styled Leon Stambler v. Federal Reserve Bank of Atlanta, et al. (Case No. 2:12-cv-611-JRG (E.D. Tex.)).

(6)         IPR2013-00343 & IPR2013-00345 (electronically filed) – U.S. Patent No. 8,313,353 entitled COAXIAL CABLE CONNECTOR HAVING ELECTRICAL CONTINUITY MEMBER and owned by PPC Broadband Inc. Filed June 10, 2013 by Corning Gilbert Inc. The ‘353 patent is currently the subject matter of a litigation styled PPC Broadband, Inc. v. Corning Gilbert Inc. (Case No. 5:12-cv-0911-GLS-DEP (N.D.N.Y.)).

(7)         IPR2013-00344 (electronically filed) – U.S. Patent No. 5,936,541 entitled METHOD FOR SECURING INFORMATION RELEVANT TO A TRANSACTION and owned by Inventor. Filed June 11, 2013 by Federal Reserve Banks. The ‘541 patent is currently the subject matter of a litigation styled Leon Stambler v. Federal Reserve Bank of Atlanta, et al. (Case No. 2:12-cv-611-JRG (E.D. Tex.)).

(8)         IPR2013-00346 & IPR2013-00347 (electronically filed) – U.S. Patent No. 8,287,320 entitled COAXIAL CABLE CONNECTOR HAVING ELECTRICAL CONTINUITY MEMBER and owned by PPC Broadband Inc. Filed June 10, 2013 by Corning Gilbert Inc. The ‘320 patent is currently the subject matter of a litigation styled PPC Broadband, Inc. v. Corning Gilbert Inc. (Case No. 5:12-cv-0911-GLS-DEP (N.D.N.Y.)).

(9)         IPR2013-00348 & IPR2013-00349 (electronically filed) – U.S. Patent No. 6,502,135 entitled AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS WITH ASSURED SYSTEM AVAILABILITY and owned by VirnetX, Inc. and Science Application International Corporation. Filed June 12, 2013 by Apple. The ‘135 patent is currently the subject matter of a number of litigations in the Eastern District of Texas, including VirnetX, Inc. v. Apple, Inc. (Case No. 6:13-cv-00211-LED); VirnetX, Inc. and Science Applications International Corporation v. Apple, Inc. (Case No. 6:12-cv-00855-LED); and VirnetX, Inc. v. Cisco Systems, Inc., et al. (Case No. 6:10-cv-00417).

(10)     IPR2013-00350 (electronically filed) – U.S. Patent No. 8,401,682 entitled INTERACTIVE SOUND REPRODUCING and owned by Bose Corporation. Filed June 12, 2013 by SDI Technologies, Inc. The ‘682 patent is currently the subject matter of a litigation styled Bose Corporation v. SDI Technologies, Inc. (Case No. 13-cv-10277-WGY (D. Mass.)).

The following ex parte requests were filed:

(1)         90/012,888 (electronically filed) – U.S. Patent No. 6,199,942 entitled MODULAR ENERGY ABSORBING ASSEMBLY and owned by Oakwood Energy Management, Inc. Filed June 10, 2013.

(2)         90/012,889 (electronically filed) – U.S. Patent No. 6,739,773 entitled THERMAL PRINTING A TWO-COLOR SALES RECEIPT and owned by CognitiveTPG, LLC. Filed June 12, 2013.

(3)         90/012,890 (electronically filed) – U.S. Patent No. 7,460,252 entitled GRAPHICAL PRINTING SYSTEM AND METHOD USING TEXT TRIGGERS and owned by CognitiveTPG, LLC. Filed June 12, 2013.

(4)         90/012,891 (electronically filed) – U.S. Patent No. 6,340,309 entitled ZERO INSERTION FORCE SOCKET WITH AN IMPROVED COVER and owned by Hon Hai Precision Industry Co., Ltd. Filed June 12, 2013. The ‘309 patent is currently the subject matter of a litigation styled Lotes Co. Ltd. v. Hon Hai Precision Industry Co., Ltd., et al. (Case No. 3:11-cv-01036-JSW (N.D. Cal.)).

(5)         90/012,892 (electronically filed) – U.S. Patent No. 8,074,172 entitled METHOD, SYSTEM, AND GRAPHICAL USER INTERFACE FOR PROVIDING WORD RECOMMENDATIONS and owned by Apple.  Filed June 14, 2013.

(6)         90/012,892 (electronically filed) – U.S. Patent No. 8,014,760 entitled MISSED TELEPHONE CALL MANAGEMENT FOR A PORTABLE MULTIFUNCTION DEVICE and owned by Apple.  Filed June 14, 2013.

 

 

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