Section 101 Eligibility Challenge to Versata Patent, Week of August 26, 2013

Scott Daniels and Cindy Chen | September 3, 2013

Last week saw 32 new requests.  Most notable was Callidus Software’s request for post-grant review of Versata Development Group’s U.S. Patent No. 7,958,024 which claims “a way to manage agreements that institutions such as financial services companies have with distributors who sell their products” (see post-grant review Request No. (1)).   Callidus asserts that claims 17 and 26-29 are unpatentable under 35 U.S.C. § 101 as claiming ineligible subject matter.  Callidus also attacks those claims under 35 U.S.C. §§ 102 and 112.  In June, the APJs issued their first final decision under the new AIA procedures, finding that claims 1, 2, and 35-47 of Versata’s U.S. Patent No. 6,553,350 were unpatentable under 35 U.S.C. § 101.

The number of requests aimed at pharmaceutical and medical patents continues to grow, as BioMarin requested inter partes review of three Genzyme patents related to the treatment of Pompe’s Disease (see inter partes review Request Nos. (4), (5) & (6)).  That rare, but sometimes fatal, ailment is caused by mutations in a gene that makes an enzyme called acid alpha-glucosidase (GAA).

A new front in the biofuel war between Gevo and Butamax Advanced Biofuels opened last week with an attack by Butamax on Gevo’s U.S. Patent No. 8,273,565 (see inter partes review Request No. (8)).  The ‘565 patent was previously the subject matter of a litigation styled Gevo, Inc. v. Butamax Advanced Biofuels LLC, et al. (Case No. 12-1202-SLR (D. Del.)).  Butamax countered by seeking declaratory judgment of invalidity of the ‘565 patent in Butamax Advanced Biofuels LLC, et al. v. Gevo, Inc. (Case No. 12-1201-SLR (D. Del.)).  Butamax and Gevo eventually moved to voluntarily dismiss without prejudice all claims involved in the two litigations, and as a result, both cases were closed as of August 2013. Relying on Federal Circuit precedents treating voluntary dismissal of an action without prejudice as though the action was never brought, Butamax contends that the voluntary dismissal without prejudice of its motion for declaratory judgment of invalidity nullifies the effect of the declaratory judgment. Butamax’s emphasis on this point is intended to avoid the statutory bar under 35 U.S.C. §315(a), which prohibits a party from requesting inter partes review where, before the date on which the request is filed, the party has filed a civil action challenging the validity of a claim of the pertinent patent.

But the clear winner for the most new requests was CaptionCall that challenged eight Ultratec telephony patents (see inter partes review Request Nos. (9), (10), (11), (12), (13), (14), (18) & (19).  Each Ultratec patent is the subject of an infringement action in Wisconsin.

The following post-grant review requests were filed:

(1)   CBM 2013-000053 (electronically filed) – U.S. Patent No. 7,958,024 entitled METHOD AND APPARATUS FOR PROCESSING SALES TRANSACTION DATA and owned by Versata.  Filed August 29, 2013 by Callidus Software.  The ‘024 patent is the subject of the litigation styled Versata Software, Inc. v. Callidus Software,Inc., No. 1:12-cv-931-SLR (D. Del.).

The following inter partes review requests were filed:

(1)               IPR2013-00529 (electronically filed) – U.S. Patent No. 5,796,411 entitled HIGH RESOLUTION REAL TIME RASTER IMAGE PROCESSING SYSTEM AND METHOD and owned by R. R. Donnelley & Sons, Co. Filed on August 28, 2013, by Xerox. The ‘411 patent is currently the subject matter of a litigation styled R.R. Donnelley & Sons Co. v. Xerox, Corp. (Case No. 1:12-cv-01698 (N.D. Ill.)).

(2)               IPR2013-00530 & IPR2013-00531 (electronically filed) – U.S. Patent No. RE43,563 entitled BELLY COVERING GARMENT and owned by Destination Maternity Corp. Filed on August 27, 2013, by Target. The ‘563 patent is currently the subject matter of a litigation styled Destination Maternity Corporation v. Target Corporation (Case No. 2:12-cv-05680-AB (E.D. Pa.)).

(3)               IPR2013-00532 & IPR2013-00533 (electronically filed) – U.S. Patent No. RE43,531 entitled BELLY COVERING GARMENT and owned by Destination Maternity Corp. Filed on August 27, 2013, by Target. The ‘531 patent is currently the subject matter of a litigation styled Destination Maternity Corporation v. Target Corporation (Case No. 2:12-cv-05680-AB (E.D. Pa.)).

(4)               IPR2013-00534 (electronically filed) – U.S. Patent No. 7,351,410 entitled TREATMENT OF POMPE’S DISEASE and owned by Genzyme Therapeutic Products LP. Filed on August 28, 2013, by BioMarin Pharmaceutical, Inc.

(5)               IPR2013-00535 (electronically filed) – U.S. Patent No. 7,056,712 entitled TREATMENT OF GLYCOGEN STORAGE DISEASE TYPE II and owned by Duke University. Filed on August 28, 2013, by BioMarin Pharmaceutical, Inc.

(6)               IPR2013-00537 (electronically filed) – U.S. Patent No. 7,655,226 entitled TREATMENT OF POMPE’S DISEASE and owned by Genzyme Therapeutic Products LP.  Filed on August 28, 2013, by BioMarin Pharmaceutical, Inc.

(7)               IPR2013-00538 (electronically filed) – U.S. Patent No. 5,9494,38 entitled HIGH RESOLUTION REAL TIME RASTER IMAGE PROCESSING SYSTEM AND METHOD and owned by R. R. Donnelley & Sons, Co. Filed on August 28, 2013, by Xerox. The ‘438 patent is currently the subject matter of a litigation styled R.R. Donnelley & Sons Co. v. Xerox, Corp. (Case No. 1:12-cv-01698 (N.D. Ill.)).

(8)               IPR2013-00539 (electronically filed) – U.S. Patent No. 8,273,565 entitled METHOD OF INCREASING DIHYDROXY ACID DEHYDRATASE ACTIVITY TO IMPROVE PRODUCTION OF FUELS, CHEMICALS, AND AMINO ACIDS and owned by Gevo, Inc. Filed on August 30, 2013, by Butamax Advanced Biofuels, LLC.

(9)               IPR2013-00540 (electronically filed) – U.S. Patent No. 6,233,314 entitled RELAY FOR PERSONAL INTERPRETER and owned by Ultratec, Inc. Filed on August 30, 2013, by CaptionCall, LLC. The ‘314 patent is currently the subject matter of a litigation styled Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 13-cv-00346 (W.D. Wis.)).

(10)           IPR2013-00541 (electronically filed) – U.S. Patent No. 5,909,482 entitled RELAY FOR PERSONAL INTERPRETER and owned by Ultratec, Inc. Filed on August 30, 2013, by CaptionCall, LLC. The ‘482 patent is currently the subject matter of a litigation styled Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 13-cv-00346 (W.D. Wis.)).

(11)           IPR2013-00542 (electronically filed) – U.S. Patent No. 7,319,740 entitled SYSTEM FOR TEXT ASSISTED TELEPHONY and owned by Ultratec, Inc. Filed on August 30, 2013, by CaptionCall, LLC. The ‘740 patent is currently the subject matter of a litigation styled Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 13-cv-00346 (W.D. Wis.)).

(12)           IPR2013-00543 (electronically filed) – U.S. Patent No. 7,555,104 entitled RELAY FOR PERSONAL INTERPRETER and owned by Ultratec, Inc. Filed on August 30, 2013, by CaptionCall, LLC. The ‘104 patent is currently the subject matter of a litigation styled Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 13-cv-00346 (W.D. Wis.)).

(13)           IPR2013-00544 (electronically filed) – U.S. Patent No. 8,213,578 entitled SYSTEM FOR TEXT ASSISTED TELEPHONY and owned by Ultratec, Inc. Filed on August 30, 2013, by CaptionCall, LLC. The ‘578 patent is currently the subject matter of a litigation styled Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 13-cv-00346 (W.D. Wis.)).

(14)           IPR2013-00545 (electronically filed) – U.S. Patent No. 6,594,346 entitled RELAY FOR PERSONAL INTERPRETER and owned by Ultratec, Inc. Filed on August 30, 2013, by CaptionCall, LLC. The ‘346 patent is currently the subject matter of a litigation styled Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 13-cv-00346 (W.D. Wis.)).

(15)           IPR2013-00546 (electronically filed) – U.S. Patent No. 8,077,176 entitled METHOD FOR INTERACTIVELY VIEWING FULL-SURROUND IMAGE DATA AND APPARATUS THEREFOR and owned by Grandeye Ltd. Filed on August 30, 2013, by Google. The ‘176 patent is currently the subject matter of a litigation styled View 360 Solutions LLC v. Google, Inc. (Case No. 1:12-cv-1352 (N.D.N.Y.)). View 360 Solutions alleges that Google Maps’ Street View feature infringes the ‘176 patent.

(16)           IPR2013-00547 (electronically filed) – U.S. Patent No. 6,243,099 entitled METHOD FOR INTERACTIVELY VIEWING FULL-SURROUND IMAGE DATA AND APPARATUS THEREFOR and owned by Grandeye, Ltd. Filed on August 30, 2013, by Google. The ‘099 patent is currently the subject matter of litigations styled View 360 Solutions LLC v. Google, Inc. (Case No. 1:12-cv-1352 (N.D.N.Y.)); Grandeye Ltd. v. Immervision (Case No. 1:11-cv-251 (W.D. Tex.)).

(17)           IPR2013-00548 (electronically filed) – U.S. Patent No. 7,542,035 entitled METHOD FOR INTERACTIVELY VIEWING FULL-SURROUND IMAGE DATA AND APPARATUS THEREFOR and owned by Grandeye, Ltd. Filed on August 30, 2013, by Google. The ‘035 patent is currently the subject matter of litigations styled View 360 Solutions LLC v. Google, Inc. (Case No. 1:12-cv-1352 (N.D.N.Y.)); Grandeye Ltd. v. Immervision (Case No. 1:11-cv-251 (W.D. Tex.)).

(18)           IPR2013-00549 (electronically filed) – U.S. Patent No. 6,603,835 entitled SYSTEM FOR TEXT ASSISTED TELEPHONY and owned by Ultratec, Inc. Filed on August 30, 2013, by CaptionCall, LLC. The ‘835 patent is currently the subject matter of a litigation styled Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 13-cv-00346 (W.D. Wis.)).

(19)           IPR2013-00550 (electronically filed) – U.S. Patent No. 7,003,082 entitled SYSTEM FOR TEXT ASSISTED TELEPHONY and owned by Ultratec, Inc. Filed on August 30, 2013, by CaptionCall, LLC. The ‘082 patent is currently the subject matter of a litigation styled Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 13-cv-00346 (W.D. Wis.)).

(20)           IPR2013-00551 (electronically filed) – U.S. Patent No. 7,174,293 entitled AUDIO IDENTIFICATION SYSTEM AND METHOD and owned by Iceberg Industries.  Filed August 31, 2013 by Gracenote Inc.

(21)           IPR2013-00552 (electronically filed) – U.S. Patent No. 7,782,489 entitled AUDIO IDENTIFICATION SYSTEM AND METHOD and owned by Iceberg Industries.  Filed August 31, 2013 by Gracenote Inc.

The following ex parte requests were filed:

(1)         90/012,957 (electronically filed) – U.S. Patent No. 6,465,961 entitled SEMICONDUCTOR LIGHT SOURCE USING A HEAT SINK WITH A PLURALITY OF PANELS and owned by Cao Group, Inc. Filed on August 26, 2013. The ‘961 patent is currently the subject matter of a litigation styled Cao Group, Inc. v. GE Lighting, Inc., et al. (Case No. 2:11-cv-00426-DB (D. Utah)).

(2)         90/012,958 (electronically filed) – U.S. Patent No. 6,636,803 entitled REAL-ESTATE INFORMATION SEARCH AND RETRIEVAL SYSTEM and owned by Corus Realty, LLC. Filed on August 27, 2013.

(3)         90/012,959 (electronically filed) – U.S. Patent No. 6,634,770 entitled LIGHT SOURCE USING SEMICONDUCTOR DEVICES MOUNTED ON A HEAT SINK and owned by Cao Group, Inc. Filed on August 30, 2013. The ‘770 patent is currently the subject matter of a litigation styled Cao Group, Inc. v. GE Lighting, Inc., et al. (Case No. 2:11-cv-00426-DB (D. Utah)).

(4)         90/012,960 (electronically filed) – U.S. Patent entitled RAILWAY BASED KINETIC POWER GENERATION SYSTEM. Filed on August 28, 2013.

(5)         90/012,961 (electronically filed) – U.S. Patent No. 7,112,789 entitled HIGH ASPECT RATIO, HIGH MASS RESOLUTION ANALYZER MAGNET AND SYSTEM FOR RIBBON ION BEAMS and owned by Nicolas R. White and Jiong Chen. Filed on August 28, 2013.

(6)         90/012,962 (electronically filed) – U.S. Patent No. 6,028,107 entitled ORTHOMOLECULAR MEDICAL USE OF L-CITRULLINE FOR VASOPROTECTION, RELAXATIVE SMOOTH MUSCLE TONE AND CELL PROTECTION and owned by Tawnsaura Group, LLC. Filed on August 29, 2013, by Tawnsaura Group, LLC. The ‘107 patent is currently the subject matter of a litigation styled Tawnsaura Group, LLC v. Maximum Human Performance, LLC, et al. (Case No. SACV-12-07189-SJO (C.D. Cal.)).

(7)         90/012,963 (electronically filed) – U.S. Patent No. 7,096,030 entitled SYSTEM AND METHOD FOR INITIATING LOCATION-DEPENDENT APPLICATIONS ON MOBILE DEVICES and owned by Nokia. Filed on August 29, 2013.

(8)         90/012,964 (electronically filed) – U.S. Patent No. 6,936,851 entitled SEMICONDUCTOR LIGHT-EMITTING DEVICE AND METHOD FOR MANUFACTURING THE SAME and owned by Lexington Luminance LLC. Filed on August 30, 2013, by Formosa Epitaxy, Inc.

(9)         90/012,965 (electronically filed) – U.S. Patent No. 5,985,347 entitled CHEESE PROCESSING VAT AND METHOD and owned by Tetra Laval Holdins & Finance, S.A. Filed on August 30, 2013. The ‘347 patent is currently the subject matter of a litigation styled Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., et al. (Case No. 3:11-cv-00021-BBC (W.D. Wis.)).

(10)     90/012,966 (electronically filed) – U.S. Patent No. 4,977,577 entitled WIRELESS ALARM SYSTEM and owned by Northpeak Wireless, LLC. Filed on August 30, 2013, by Intel.

 

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