Inter Partes Review Requests against Four VirnetX Patents, Week of June 24, 2013

| July 1, 2013

Last week saw four more inter partes review requests against VirnetX patent, this time filed by New Bay Capital (see inter partes review Request Nos. (1) through (4)).  As we have previously reported, VirnetX has been quite successful in litigating and licensing these patents.

A number of universities – Stanford University, Boston University, University of Illinois – saw inter partes review requests filed against their patents (see inter partes review Request Nos. (8), (10) & (13)).

Sony filed its second inter partes review requests against U.S. Patent No. 6,218,903 owned by Network-1 Security Solutions, Inc. (see inter partes review Request No. (6)).   Sony’s previous request for inter partes review of the ‘930 patent was denied (see IPR2013-00092). A request for rehearing of a portion of the Board’s decision not to institute review is currently pending.

The following inter partes review requests were filed:

(1)         IPR2013-00375 (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. Filed on June 23, 2013, by New Bay Capital, LLC. The ‘135 patent is currently the subject matter of a litigation styled VirnetX, Inc. v. Cisco Systems, et al. (Case No. 6:10‑cv-417 (E.D. Tex.)); VirnetX, Inc. v. Apple, Inc. (Case No. 6:12-cv-855 (E.D. Tex.)); VirnetX, Inc. v. Apple Inc. (Case No. 6:13-cv-211 (E.D. Tex.)); VirnetX, Inc. v. Microsft Corporation (Case No. 6:07-cv-80 (E.D. Tex.)); VirnetX, Inc. v. Microsoft (Case No. 6:10-cv-94 (E.D. Tex.)); VirnetX, Inc. v. Microsoft Corporation (Case No. 6:13-cv-351 (E.D. Tex.)); and VirnetX, Inc. v. Mitel Networks Corp. (Case No. 6:11-cv-18 (E.D. Tex.)).

(2)         IPR2013-00376 (electronically filed) – U.S. Patent No. 7,490,151 entitled ESTABLISHMENT OF A SECURE COMMUNICATION LINK BASED ON A DOMAIN NAME SERVICE (DNS) REQUEST and owned by VirnetX, Inc. Filed on June 23, 2013, by New Bay Capital, LLC. The ‘151 patent is currently the subject matter of a litigation styled VirnetX, Inc. v. Cisco Systems, et al. (Case No. 6:10‑cv-417 (E.D. Tex.)); VirnetX, Inc. v. Apple, Inc. (Case No. 6:12-cv-855 (E.D. Tex.)); VirnetX, Inc. v. Apple Inc. (Case No. 6:13-cv-211 (E.D. Tex.)); and VirnetX, Inc. v. Microsoft Corporation (Case No. 6:13-cv-351 (E.D. Tex.)).

(3)         IPR2013-00377 (electronically filed) – U.S. Patent No. 7,418,504 entitled AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS USING SECURE DOMAIN NAMES and owned by VirnetX, Inc. Filed on June 23, 2013, by New Bay Capital, LLC. The ‘504 patent is currently the subject matter of a litigation styled VirnetX, Inc. v. Cisco Systems, et al. (Case No. 6:10‑cv-417 (E.D. Tex.)); VirnetX, Inc. v. Apple, Inc. (Case No. 6:12-cv-855 (E.D. Tex.)); VirnetX, Inc. v. Apple Inc. (Case No. 6:13-cv-211 (E.D. Tex.)); VirnetX, Inc. v. Mitel Networks Corp. (Case No. 6:11-cv-18 (E.D. Tex.)); and VirnetX, Inc. v. Microsoft Corporation (Case No. 6:13-cv-351 (E.D. Tex.)).

(4)         IPR2013-00378 (electronically filed) – U.S. Patent No. 7,921,211 entitled AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS USING SECURE DOMAIN NAMES and owned by VirnetX, Inc. Filed on June 23, 2013, by New Bay Capital, LLC. The ‘211 patent is currently the subject matter of a litigation styled VirnetX, Inc. v. Cisco Systems, et al. (Case No. 6:10‑cv-417 (E.D. Tex.)); VirnetX, Inc. v. Apple, Inc. (Case No. 6:12-cv-855 (E.D. Tex.)); VirnetX, Inc. v. Apple Inc. (Case No. 6:13-cv-211 (E.D. Tex.)); VirnetX, Inc. v. Mitel Networks Corp. (Case No. 6:11-cv-18 (E.D. Tex.)); and VirnetX, Inc. v. Microsoft Corporation (Case No. 6:13-cv-351 (E.D. Tex.)).

(5)         IPR2013-00385 (electronically filed) – U.S. Patent No. 6,218,930 entitled APPARATUS AND METHOD FOR REMOTELY POWERING ACCESS EQUIPMENT OVER A 10/100 SWITCHED ETHERNET NETWORK and owned by Network-1 Security Solutions, Inc. Filed on June 24, 2013, by Dell, Inc. The ‘930 patent is currently the subject matter of a litigation styled Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al. (Case No. 6:11-cv-00492-LED (E.D. Tex.)). The ‘930 patent is also currently the subject matter of an inter partes review styled Avaya Inc. v. Network-1 Security Solutions Inc. (IPR2013-00071). Dell is seeking joinder with that inter partes review.

(6)         IPR2013-00386 (electronically filed) – U.S. Patent No. 6,218,930 entitled APPARATUS AND METHOD FOR REMOTELY POWERING ACCESS EQUIPMENT OVER A 10/100 SWITCHED ETHERNET NETWORK and owned by Network-1 Security Solutions, Inc. Filed on June 24, 2013, by Sony Corporation of America. The ‘930 patent is currently the subject matter of a litigation styled Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al. (Case No. 6:11-cv-00492-LED (E.D. Tex.)).

(7)         IPR2013-00387 (electronically filed) – U.S. Patent No. 8,156,944 entitled AEROSOL ELECTRONIC CIGARETTE and owned by Ruyan Investment (Holdings) Limited. Filed on June 27, 2013, by CB Distributors, Inc. The ‘944 patent is currently the subject matter of a litigation styled Ruyan Investment (Holdings) Limited v. CB Distributors, Inc. and DR Distributors, LLC (Case No. CV12-5462 (C.D. Cal.)). The ‘944 patent has also been asserted separately against at least eight other alleged infringers.

(8)         IPR2013-00390 (electronically filed) – U.S. Patent No. 8,195,415 entitled NONINVASIVE DIAGNOSIS OF FETAL ANEUPLOIDY BY SEQUENCING and owned by Stanford University. Filed on June 26, 2013, by Sequenom, LLC. The ‘415 patent is currently the subject matter of a litigation styled Verinata Health, Inc. and Stanford University v. Sequenom, Inc. (Case No. 3:12-cv-00865-SI (N.D. Cal.)).

(9)         IPR2013-00391 (electronically filed) – U.S. Patent No. 6,857,067 entitled SYSTEM AND METHOD FOR PREVENTING UNAUTHORIZED ACCESS TO ELECTRONIC DATA and owned by Uniloc Luxembourg S.A. Filed on June 28, 2013, by Distinctive Developments, Ltd. The ‘067 patent is currently the subject matter of a litigation styled Uniloc USA Inc. and Uniloc Luxembourg S. A. v. Distinctive Developments, Inc. (Case No. 6:12-cv-00462-LED (E. D. Tex.)). Uniloc has also asserted the ‘067 patent against a host of other alleged infringers, including Electronic Arts, Gameloft, Square Enix, and Halfbrick Studios. The other alleged infringers are joint petitioners of the present request for inter partes review of the ‘067 patent.

(10)     IPR2013-00392 (electronically filed) – U.S. Patent No. 6,953,703 entitled METHOD OF MAKING A SEMICONDUCTOR DEVICE WITH EXPOSURE OF SAPPHIRE SUBSTRATE TO ACTIVATED NITROGEN and owned by Boston University. Filed on June 27, 2013, by Seoul Semiconductor, Co. Ltd. The ‘703 patent is currently the subject matter of a litigation styled Boston University v. Seoul Semiconductor, Ltd. (Case No. 1:12-cv-11938 (D. Mass.)). Boston University has also asserted the ‘703 patent separately against Everlight Electronics, Epistar Corp., Lite-On Inc., Samsung Electronics, Amazon, and Arrow Electronics.

(11)     IPR2013-00395 & IPR2013-00396 (electronically filed) – U.S. Patent No. 8,444,696 entitled ANATOMIC SPINAL IMPLANT HAVING ANATOMIC BEARING SURFACES and owned by Warsaw Orthopedic, Inc. Filed on June 27, 2013, by NuVasive, Inc. The patent owner has requested to add ‘696 patent to an ongoing litigation styled Warsaw Orthopedic, Inc., et al. v. NuVasive, Inc. (Case No. 3:12-cv-02738-CAB (M.D.D.)). The request is currently pending.

(12)     IPR2013-00399 (electronically filed) – U.S. Patent No. 5,817,364 entitled BEVERAGE CONTAINING ALPHA-KETOGLUTARIC ACID AND METHOD OF MAKING and owned by Harcol Research, LLC. Filed on June 28, 2013, by USPlabs, LLC. The ‘364 patent is currently the subject matter of a litigation styled Harcol Research, LLC v. USPlabs, LLC, et al. (Case No. 2:13-cv-230 (E.D. Tex.)). Harcol Research also asserted the ‘364 patent against Cellulcor, Europa Sports Products, Lone Star Distribution, LLC., Labrada Bodybuilding Nutrition, among other alleged infringers.

(13)     IPR2013-00401 & 00404 (electronically filed) – U.S. Patent No. 5,527,533 entitled METHOD OF RETARDING AND AMELIORATING CENTRAL NERVOUS SYSTEM AND EYE DAMAGE and owned by University of Illinois.  Filed June 28, 2013 by Cyanotech Corporation.  The ‘533 patent is the subject of the infringement action styled U.S. Nutraceuticals LLC d/b/a Valensa International; and The Board of Trustees of the University of Illinois vs. Cyanotech Corporation, and Nutrex Hawaii, Inc. (Case No. 5:12-cv-366-oc-10PRL (M.D.Fla.)).

(14)     IPR2013-00402 (electronically filed) – U.S. Patent No. 8,312,226 entitled NETWORK MEMORY APPLIANCE PROVIDING DATA BASED ON LOCAL ACCESSIBILITY and owned by Silver Peak Systems.  Filed June 28, 2013 by Riverbed Technology.

(15)     IPR2013-00403 (electronically filed) – U.S. Patent No. 8,370,583 entitled NETWORK MEMORY APPLIANCE PROVIDING DATA BASED ON LOCAL ACCESSIBILITY and owned by Silver Peak Systems.  Filed June 28, 2013 by Riverbed Technology.

The following ex parte requests were filed:

(1)         90/012,899 (electronically filed) – U.S. Patent No. RE37,802 entitled MULTICODE DIRECT SEQUENCE SPREAD SPECTRUM and owned by Ensemble Communications, Inc. Filed June 28, 2013.

(2)         90/012,900 (electronically filed) – U.S. Patent No. 7,518,495 entitled UNIVERSAL TIRE PRESSURE MONITOR and owned by Lear Corporation. Filed June 28, 2013.

(3)         90/012,901 (electronically filed) – U.S. Patent No. 5,530,597 entitled APPARATUS AND METHOD FOR DISABLING INTERRUPT MASKS IN PROCESSORS OR THE LIKE and owned by Norman IP Holdings, LLC. Filed June 27, 2013 by ARM, Incorporated.

(4)         90/012,902 (electronically filed) – U.S. Patent No. 7,757,509 entitled VERY LOW TEMPERATURE STAINLESS STEEL PLATE UNIT FOR PREPARING AN ON-SITE NATURAL ICE CREAM and owned by Han Mi Trade, Inc. Filed June 27, 2013 by Dong Hwan Sul.

(5)         90/012,903 (electronically filed) – U.S. Patent No. 6,401,078 entitled BILL OF LADING TRANSMISSION AND PROCESSING SYSTEM FOR LESS THAN A LOAD CARRIERS and owned by R+L Carriers, Inc. Filed June 28, 2013 by Geoffrey L. Oberhaus. The ‘078 patent is currently the subject matter of a litigation styled DriverTech LLC v. R+L Carriers, Inc. (Case No. 2:08-cv-862 (D. Utah)); PeopleNet Communications Corp. v. R+L Carriers, Inc. (Case No. 0:09-cv-144 (D. Minn.)); R+L Carriers, Inc. v. Affiliated Computer Services (Case No. 1:09-cv-00818 (S.D. Ohio)); R+L Carriers, Inc. v. FFE Transportation Services, Inc. (Case no. 1:12-cv-00473 (S.D. Ohio)); R+L Carriers, Inc. v. Intermec Technologies Corp. (Case No. 1:09-cv-00532 (S.D. Ohio)); R+L Carriers, Inc. v. Microdea, Inc. (Case No. 1:09-cv-00179 (S.D. Ohio)); R+L Carriers, Inc. v. Qualcomm, Inc. (Case No. 1:09-cv-00445 (S.D. Ohio)).

(6)         90/012,904 (electronically filed) – U.S. Patent No. 7,600,292 entitled SURFACE TREATING APPLIANCE and owned by Dyson Technology.  Filed June 28, 2013 perhaps by LG Electronics.

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