Twenty Inter Partes Review Petitions Filed, Week of June 17, 2013

Scott Daniels and Cindy Chen | June 24, 2013

Inter Partes review is becoming more and more popular.  Last week, review requests were filed against 20 patents.  Apple challenged another VirnetX patent (see inter partes review Request Nos. (1)), Aisin Seiki requested review of three American Vehicular Sciences patents related car seat weight sensors (see inter partes review Request Nos. (16), (18) & (19)), and Samsung filed against a U.S. Ethernet Innovations patent (see inter partes review Request No. (20)).

Notably, several requests involved pharmaceutical patents.  Accord Healthcare requested inter partes review of an antifoliate patent owned by Ely Lilly (see inter partes review Request No. (3)), and Amneal Pharmaceuticals sought inter partes review of three Supernus patents for tetracycline formulations (see inter partes review Request Nos. (11), (13) & (14)).  Pharma patents were relatively rare in earlier inter partes reexamination practice.

The following inter partes review requests were filed:

(1)         IPR2013-00354 (electronically filed) – U.S. Patent No. 7,490,151 entitled ESTABLISHMENT OF A SECURE COMMUNICATION LINK BASED DOMAIN NAME SERVICE (DNS) REQUEST and owned by VirnetX, Inc. and Science Application International Corporation. Filed June 17, 2013 by Apple. The ‘151 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).

(2)         IPR2013-00355 (electronically filed) – U.S. Patent No. 8,305,840 entitled DOWNSCAN IMAGING SONAR and owned by Navico, Inc. Filed June 14, 2013 by Raymarine, Inc. The ‘840 patent is currently the subject matter of a litigation styled Navico, Inc. v. Raymarine, Inc. (Case No. 4:13-cv-00251 (N.D. Okla.)).

(3)         IPR2013-00356 (electronically filed) – U.S. Patent No. 7,772,209 entitled ANTIFOLATE COMBINATION THERAPIES and owned by Ely Lilly. Filed June 14, 2013 by Accord Healthcare, Inc. The ‘209 patent is currently the subject matter of litigation styled Eli Lilly and Company v. Accord Healthcare, Inc., USA (Case No. 1:13-cv-00335-TWP-DKL (S.D. Ind.)); Eli Lilly and Company v. Accord Healthcare, Inc., USA, Apotex Inc., and Apotex Corp. (Case No. 1:12-cv-0086-TWP-DKL (S.D. Ind.)); Eli Lilly and Company v. Teva Parental Medicines, Inc., et al. (Case No. 1:10-cv-01376-TWP-DKL (S.D. Ind.)).

(4)         IPR2013-00357 (electronically filed) – U.S. Patent No. 6,328,766 entitled MEDIA ELEMENT LIBRARY WITH NON-OVERLAPPING SUBSET OF MEDIA ELEMENTS AND NON-OVERLAPPING SUBSET OF MEDIA ELEMENT DRIVES ACCESSIBLE TO FIRST HOST AND UNACCESSIBLE TO SECOND HOST and owned by Overland Storage, Inc. Filed June 14, 2013 by Spectra Logic Corporation. The ‘766 patent is currently the subject matter of a litigation styled Overland Storage, Inc. v. Spectra Logic Corporation (Case No. 3:12-cv-01598-JLS-BLM (S.D. Cal.)); Overland Storage, Inc. v. Qualstar Corporation (Case No. 3:12-cv-01605-JLS-BLM (S.D. Cal.)); Overland Storage, Inc. v. Quantum Corporation, et al. (Case No. 3:12-cv-01599-JLS-BLM (S.D. Cal.)); Overland Storage, Inc. v. BDT AG, et al. (Case No. 3:10-cv-01700-JLS-BLM (S.D. Cal.)); In re Certain Automated Media Storage Libraries (Inv. No. 337-TA-746 (USITC)).

(5)         IPR2013-00358 (electronically filed) – U.S. Patent No. 8,286,561 entitled SPILL CONTAINING REFRIGERATOR SHELF ASSEMBLY and owned by SSW Holding Company, Inc. Filed June 14, 2013 by Schott Gemtron Corporation. The ‘561 patent is currently the subject matter of a litigation styled SSW Holding Co., Inc. v. SCHOTT Gemtron Corp. (Case No. 3:12-cv-00661 (W.D. Ky.)).

(6)         IPR2013-00360 (electronically filed) – U.S. Patent No. 8,342,784 entitled COLLAPSIBLE INTERMODAL TRANSPORT PLATFORM and owned by Raildeck (2009), Inc. Filed June 14, 2013 by Fontaine Engineering Products, Inc.

(7)         IPR2013-00361 (electronically filed) – U.S. Patent No. 8,353,647 entitled COLLAPSIBLE INTERMODAL TRANSPORT PLATFORM and owned by Raildeck (2009), Inc. Filed June 14, 2013 by Fontaine Engineering Products, Inc.

(8)         IPR2013-00362 & IPR2013-00363 (electronically filed) – U.S. Patent No. 7,348,575 entitled PROJECTION OPTICAL SYSTEM, EXPOSURE APPARATUS, AND EXPOSURE METHOD and owned by Nikon. Filed June 17, 2013 by Carl Zeiss SMT GmbH.

(9)         IPR2013-00364 (electronically filed) – U.S. Patent No. 6,883,446 entitled QUILTING METHOD AND APPARATUS and owned by Bernina International AG. Filed June 17, 2013 by Handi Quilter, Inc. and Tacony Corporation. The ‘446 patent is currently the subject matter of a litigation styled Bernina International AG v. Handi Quilter, Inc. (Case No. 2:12-cv-07079-JD (E.D. Pa.)); Bernina International AG v. Tacony Corporation (Case No. 2:13-cv-01787-JD (E.D. Pa.)).

(10)     IPR2013-00365 (electronically filed) – U.S. Patent No. 6,747,002 entitled QUILTING METHOD AND APPARATUS and owned by Bernina International AG. Filed June 19, 2013 by Hospira, Inc.

(11)     IPR2013-00368 (electronically filed) – U.S. Patent No. 8,206,740 entitled DAILY FORMULATIONS OF TETRACYCLINES and owned by Supernus Pharmaceuticals, Inc. Filed June 20, 2013 by Amneal Pharmaceuticals, LLC. The ‘740 patent is currently the subject matter of a litigation styled Supernus Laboratories Inc., et al. v. Amneal Pharmaceuticals, LLC (Case No. 11-1106-LPS (D. Del.)).

(12)     IPR2013-00369 (electronically filed) – U.S. Patent No. 7,107,612 entitled METHOD, APPARATUS AND COMPUTER PROGRAM PRODUCT FOR A NETWORK FIREWALL and owned by Juniper Networks, Inc. Filed June 20, 2013 by Palo Alto Networks, Inc. The ‘612 patent is currently the subject matter of a litigation styled Juniper Networks, Inc. v. Palo Alto Networks, Inc. (Case No. 11-1258-SLR (D. Del.)).

(13)     IPR2013-00371 (electronically filed) – U.S. Patent No. 8,394,405 entitled ONCE DAILY FORMULATIONS OF TETRACYCLINES and owned by Supernus Pharmaceuticals, Inc. Filed June 20, 2013 by Amneal Pharmaceuticals, LLC. The ‘405 patent is currently the subject matter of a litigation styled Supernus Laboratories Inc., et al. v. Amneal Pharmaceuticals, LLC (Case No. 11-1106-LPS (D. Del.)).

(14)     IPR2013-00372 (electronically filed) – U.S. Patent No. 8,394,406 entitled ONCE DAILY FORMULATIONS OF TETRACYCLINES and owned by Supernus Pharmaceuticals, Inc. Filed June 20, 2013 by Amneal Pharmaceuticals, LLC. The ‘406 patent is currently the subject matter of a litigation styled Supernus Laboratories Inc., et al. v. Amneal Pharmaceuticals, LLC (Case No. 11-1106-LPS (D. Del.)).

(15)     IPR2013-00373 (electronically filed) – U.S. Patent No. 6,778,074 entitled SPEED LIMIT INDICATOR AND METHOD FOR DISPLAYING SPEED AND THE RELEVANT SPEED LIMIT and owned by Cuozzo Speed Technologies, LLC. Filed June 20, 2013 by Garmin International, Inc. The ‘074 patent is currently the subject matter of a litigation styled Cuozzo Speed Technologies LLC v. Garmin International Inc., et al. (Case No. 2:12-cv-03623-CCC-JAD (D.N.J.)); Cuozzo Speed Technologies LLC v. General Motors Company (Case No. 2:12-cv-03624-CCC-JAD (D.N.J.)); Cuozzo Speed Technologies LLC v. JVC Americas Corporation (Case No. 2:12-cv-03625-CCC-JAD (D.N.J.)); and Cuozzo Speed Technologies LLC v. TomTom, Inc. et al., (Case No. 2:12-cv-03626-CCC-JAD (D.N.J.)).

(16)     IPR2013-00380 (electronically filed) – U.S. Patent No. 7,413,048 entitled WEIGHT MEASURING SYSTEMS AND METHODS FOR VEHICLES and owned by American Vehicular Sciences LLC. Filed June 21, 2013 by Aisin Seiki Co., Ltd. The ‘048 patent is currently the subject matter of a litigation styled American Vehicular Sciences LLC v. Toyota Motor Corporation, et al. (Case No. 6:12-cv-00409 (E. D. Tex.)); American Vehicular Sciences LLC v. American Honda Motor Co., Inc., et al. (Case No. 6:13-cv-00227 (E.D. Tex.)); American Vehicular Sciences LLC v. Kia Motors Corporation (Case No. 6:13-cv-00150 (E.D. Tex.)); American Vehicular Sciences LLC v. Subaru of America, Inc. (Case No. 6:13-cv-00229 (E.D. Tex.)); American Vehicular Sciences LLC v. Mazda Motor of America, Inc. (Case No. 6:13-00231 (E.D. Tex.)); and American Vehicular Sciences LLC v. Hyundai Motor Company, et al. (Case no. 6:13-cv-00270 (E.D. Tex.)). Petitioner is not a party to any of the litigations, but supplies allegedly infringing auto parts to Toyota, Honda, and Mazda.

(17)     IPR2013-00381 (electronically filed) – U.S. Patent No. 7,485,968 entitled 3D IC METHOD AND DEVICE and owned by Ziptronix, Inc. Filed June 21, 2013 by Taiwan Semiconductor Manufacturing Company, Ltd.

(18)     IPR2013-00382 (electronically filed) – U.S. Patent No. 7,976,060 entitled SEAT LOAD OR DISPLACEMENT MEASURING SYSTEM FOR OCCUPANT RESTRAINT SYSTEM CONTROL and owned by Bernina International AG. Filed June 21, 2013 by Aisin Seiki Co., Ltd. The ‘060 patent is currently the subject matter of a litigation styled American Vehicular Sciences LLC v. Toyota Motor Corporation, et al. (Case No. 6:12-cv-00409 (E.D. Tex.)); American Vehicular Sciences LLC v. American Honda Motor Co., Inc., et al. (Case No. 6:13-cv-00227 (E.D. Tex.)); and American Vehicular Sciences LLC v. Hyundai Motor Company, et al. (Case no. 6:13-cv-00270 (E.D. Tex.)). Petitioner is not a party to any of the litigations. However, Petition does supply allegedly infringing auto parts to Toyota and Honda.

(19)     IPR2013-00383 (electronically filed) – U.S. Patent No. 8,235,416 entitled ARRANGEMENT FOR SENSING WEIGHT OF AN OCCUPYING ITEM IN A VEHICULAR SEAT and owned by American Vehicular Sciences, LLC. Filed June 21, 2013 by Aisin Seiki Co., Ltd. The ‘416 patent is currently the subject matter of a litigation styled American Vehicular Sciences LLC v. American Honda Motor Co., Inc., et al. (Case No. 6:13-cv-00227 (E.D. Tex.)); American Vehicular Sciences LLC v. Subaru of America, Inc. (Case No. 6:13-cv-00229 (E.D. Tex.)); American Vehicular Sciences LLC v. Mazda Motor of America, Inc. (Case No. 6:13-00231 (E.D. Tex.)); and American Vehicular Sciences LLC v. Hyundai Motor Company, et al. (Case No. 6:13-cv-00270 (E.D. Tex.)). Petitioner is not a party to any of the litigations. However, Petition does supply allegedly infringing auto parts to Honda and Mazda.

(20)     IPR2013-00384 (electronically filed) – U.S. Patent No. 5,530,874 entitled NETWORK ADAPTER WITH AN INDICATION SIGNAL MASK AND AN INTERRUPT SIGNAL MASK owned by U.S. Ethernet Innovations.  Filed June 22, 2013 by Samsung.  The ‘874 patent is the subject of eight infringement actions, among them U.S. Ethernet Innovations v. Samsung et al. (Case No.6:12-cv-398-MHS-JDL (E.D. Tex.)).

The following ex parte requests were filed:

(1)         90/012,894 (electronically filed) – U.S. Patent No. 6,440,706 entitled DIGITAL AMPLIFICATION and owned by Johns Hopkins University. Filed June 17, 2013 by Life Technologies Corporation. The ‘706 patent is currently the subject matter of a litigation styled Esoterix Genetic Labs, LLC and The Johns Hopkins University v. Life Technologies Corp., et al. (Case No. 12-1173 (M.D.N.C.)).

(2)         90/012,895 (electronically filed) – U.S. Patent No. 7,824,889 entitled DIGITAL AMPLIFICATION and owned by Johns Hopkins University. Filed June 17, 2013 by Life Technologies Corporation. The ‘706 patent is currently the subject matter of a litigation styled Esoterix Genetic Labs, LLC and The Johns Hopkins University v. Life Technologies Corp., et al. (Case No. 12-1173 (M.D.N.C.)).

(3)         90/012,896 (electronically filed) – U.S. Patent No. 7,915,015 entitled DIGITAL AMPLIFICATION and owned by Johns Hopkins University. Filed June 17, 2013 by Life Technologies Corporation. The ‘706 patent is currently the subject matter of a litigation styled Esoterix Genetic Labs, LLC and The Johns Hopkins University v. Life Technologies Corp., et al. (Case No. 12-1173 (M.D.N.C.)).

(4)         90/012,897 (electronically filed) – U.S. Patent No. 6,744,858 entitled SYSTEM AND METHOD FOR SUPPORTING MULTIPLE CALL CENTERS and owned by Cassidian Communications, Inc. Filed June 18, 2013 by TeleCommunication Systems, Inc. The ‘858 patent is currently the subject matter of a litigation styled Cassidian Communications, Inc. v. microDATA GIS (Case No: 2:12-cv-00162 (E.D. Tex.)); Cassidian Communications, Inc. v. Synergem Emergency Services and Synergem Emergency Communications (Case No. 6:13-cv-00216-GKS-TBS (M.D. Fla.)); Solacom Technologies v. Cassidian Communications (Case No. 2:12-cv-00370-GZS (D. Me.)).

(5)         90/012,898 (electronically filed) – U.S. Patent No. 6,504,515 entitled HIGH CAPACITY BROADBAND CELLULAR/PCS BASE STATION USING A PHASED ARRAY ANTENNA and owned by Harris Corporation. Filed June 19, 2013 by. The ‘515 patent is currently the subject matter of a litigation styled Harris Corporation v. Ruckus Wireless, Inc. (Case No. 6:11-cv-00618 (M.D. Fla.)).

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