ZOLL Lifecor Seeks Inter Partes Review of Eight Philips Electrotherapy Patents, Week of September 23, 2013

Scott Daniels and Cindy Chen | September 30, 2013

Almost exactly a year ago, Koninklijke Philips N.V. and Philips Electronics North America Corp. sued. ZOLL Lifecor Corp for infringement of eight patents claiming various electrotherapy methods.  Last week, ZOLL retaliated by requesting inter partes review of each of those patents (see inter partes review Request Nos. (4) to (6), (9) to (10) & (12) to (14)).  Presumably, ZOLL will also seek a stay of the litigation, and the dispute will shift to the Patent Office.

Dell, Hewlett-Packard and NetApp teamed up to request inter partes review of a network patent owned by Electronics and Telecommunication Research Institute (see inter partes review Request No. (23). the patent is the subject of 19 separate infringement actions, all in Delaware.

The following inter partes review requests were filed:

(1)               IPR2013-00603 (electronically filed) – U.S. Patent No. 5,980,559 entitled SUTURE ANCHOR and owned by Bonutti Skeletal Innovations, LLC. Filed September 24, 2013, by Smith & Nephew, Inc. The ‘559 patent is the subject of a litigation styled Bonutti Skeletal Innovations, LLC v. Smith & Nephew, Inc. (Case No. 12-1111-GMS (D. Del.)).

(2)               IPR2013-00604 (electronically filed) – U.S. Patent No. 7,087,073 entitled METHOD OF SECURING BODY TISSUE and owned by Bonutti Skeletal Innovations, LLC. Filed September 24, 2013, by Smith & Nephew, Inc. The ‘073 patent is the subject of a litigation styled Bonutti Skeletal Innovations, LLC v. Smith & Nephew, Inc. (Case No. 12-1111-GMS (D. Del.)).

(3)               IPR2013-00605 (electronically filed) – U.S. Patent No. 7,749,229 entitled TOTAL KNEE ARTHROPLASTY THROUGH SHORTENED INCISION and owned by Bonutti Skeletal Innovations, LLC. Filed September 25, 2013, by Smith & Nephew, Inc. The ‘229 patent is the subject of a litigation styled Bonutti Skeletal Innovations, LLC v. Smith & Nephew, Inc. (Case No. 12-1111-GMS (D. Del.)).

(4)               IPR2013-00606 (electronically filed) – U.S. Patent No. 5,593,427 entitled ELECTROTHERAPY METHOD and owned by Koninklijke Philips Electronics N.V. Filed September 23, 2013, by ZOLL Lifecor Corporation. The ‘427 patent is the subject of a litigation styled Koninklijke Philips N.V. and Philips Electronics North America Corp. v. ZOLL Lifecor Corp. (Case No. 12-1369 (W.D.Pa.)).

(5)               IPR2013-00607 (electronically filed) – U.S. Patent No. 5,749,904 entitled ELECTROTHERAPY UTILIZING PATIENT DEPENDENT ELECTRICAL PARAMETERS and owned by Koninklijke Philips Electronics N.V. Filed September 23, 2013, by ZOLL Lifecor Corporation. The ‘904 patent is the subject of a litigation styled Koninklijke Philips N.V. and Philips Electronics North America Corp. v. ZOLL Lifecor Corp. (Case No. 12-1369 (W.D.Pa.)).

(6)               IPR2013-00609 (electronically filed) – U.S. Patent No. 5,836,978 entitled ELECTROTHERAPY METHOD FOR PRODUCING a MULTIPHASIC DISCHARGE BASED UPON a PATIENT-DEPENDENT ELECTRICAL PARAMETER AND TIME and owned by Philips Electronics North America. Filed September 23, 2013, by ZOLL Lifecor Corporation. The ‘978 patent is the subject of a litigation styled Koninklijke Philips N.V. and Philips Electronics North America Corp. v. ZOLL Lifecor Corp. (Case No. 12-1369 (W.D.Pa.)).

(7)               IPR2013-00610 (electronically filed) – U.S. Patent No. 6,095,661 entitled METHOD AND APPARATUS FOR AN L.E.D. FLASHLIGHT and owned by LED Tech Development, LLC. Filed September 23, 2013, by Samsung. The ‘661 patent is the subject of patent infringement actions styled LED Tech Dev., LLC v. The Coleman Co., Inc. (Case No. 12-1259 (D. Del.)); LED Tech Dev., LLC v. Samsung Elecs. Am., Inc., et al. (Case No. 12-1325 (D. Del.)); and LED Tech Dev., LLC v. Fujitsu America, Inc., et al. (Case No. 12-1443 (D. Del.)).

(8)               IPR2013-00611 (electronically filed) – U.S. Patent No. 6,488,390 entitled COLOR‑ADJUSTED CAMERA LIGHT AND METHOD and owned by LED Tech Development, LLC. Filed September 23, 2013, by Samsung. The ‘390 patent is the subject of a litigation styled LED Tech Dev., LLC v. Samsung Elecs. Am., Inc., et al. (Case No. 12-1325 (D. Del.)).

(9)               IPR2013-00612 (electronically filed) – U.S. Patent No. 5,803,927 entitled ELECTROTHERAPY METHOD AND APPARATUS FOR EXTERNAL DEFIBRILLATION and owned by Philips Electronics North America. Filed September 23, 2013, by ZOLL Lifecor Corporation. The ‘927 patent is the subject of a litigation styled Koninklijke Philips N.V. and Philips Electronics North America Corp. v. ZOLL Lifecor Corp. (Case No. 12-1369 (W.D.Pa.)).

(10)           IPR2013-00613 (electronically filed) – U.S. Patent No. 5,735,879 entitled ELECTROTHERAPY METHOD FOR EXTERNAL DEFIBRILLATIONS and owned by Philips Electronics North America. Filed September 23, 2013, by ZOLL Lifecor Corporation. The ‘879 patent is the subject of a litigation styled Koninklijke Philips N.V. and Philips Electronics North America Corp. v. ZOLL Lifecor Corp. (Case No. 12-1369 (W.D.Pa.)).

(11)           IPR2013-00614 (electronically filed) – U.S. Patent No. 7,439,616 entitled MINIATURE SILICON CONDENSER MICROPHONE and owned by Knowles Electronics, LLC. Filed September 12, 2013, by GoerTek, Inc. The ‘616 patent is the subject of a litigation styled Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-888 (USITC)); and Knowles Electronics, LLC v. GoerTek, Inc., et al. (Case No. 2013-cv-4586 (N.D. Ill.)).

(12)           IPR2013-00615 (electronically filed) – U.S. Patent No. 6,047,212 entitled EXTERNAL DEFIBRILLATOR CAPABLE OF DELIVERING PATIENT IMPEDANCE COMPENSATED BIPHASIC WAVEFORMS and owned by Philips Electronics North America. Filed September 23, 2013, by ZOLL Lifecor Corporation. The ‘212 patent is the subject of a litigation styled Koninklijke Philips N.V. and Philips Electronics North America Corp. v. ZOLL Lifecor Corp. (Case No. 12-1369 (W.D.Pa.)).

(13)           IPR2013-00616 (electronically filed) – U.S. Patent No. 5,749,905 entitled ELECTROTHERAPY METHOD UTILIZING PATIENT DEPENDENT ELECTRICAL PARAMETERS and owned by Philips Electronics North America. Filed September 23, 2013, by ZOLL Lifecor Corporation. The ‘905 patent is the subject of a litigation styled Koninklijke Philips N.V. and Philips Electronics North America Corp. v. ZOLL Lifecor Corp. (Case No. 12-1369 (W.D.Pa.)).

(14)           IPR2013-00618 (electronically filed) – U.S. Patent No. 5,607,454 entitled ELECTROTHERAPY METHOD AND APPARATUS and owned by Philips Electronics North America. Filed September 23, 2013, by ZOLL Lifecor Corporation. The ‘454 patent is the subject of a litigation styled Koninklijke Philips N.V. and Philips Electronics North America Corp. v. ZOLL Lifecor Corp. (Case No. 12-1369 (W.D.Pa.)).

(15)           IPR2013-00620 (electronically filed) – U.S. Patent No. 6,702,821 entitled INSTRUMENTATION FOR MINIMALLY INVASIVE JOINT REPLACEMENT AND METHODS FOR USING SAME and owned by Bonutti Skeletal Innovations, LLC. Filed September 25, 2013, by Smith & Nephew, Inc. The ‘821 patent is the subject of a litigation styled Bonutti Skeletal Innovations, LLC v. Smith & Nephew, Inc. (Case No. 12-1111-GMS (D. Del.)).

(16)           IPR2013-00621 (electronically filed) – U.S. Patent No. 8,133,229 entitled INSTRUMENTATION FOR MINIMALLY INVASIVE JOINT REPLACEMENT AND METHODS FOR USING SAME and owned by Bonutti Skeletal Innovations, LLC. Filed September 25, 2013, by Smith & Nephew, Inc. The ‘229 patent is the subject of a litigation styled Bonutti Skeletal Innovations, LLC v. Smith & Nephew, Inc. (Case No. 12-1111-GMS (D. Del.)).

(17)           IPR2013-00626 (electronically filed) – U.S. Patent No. 8,204,561 entitled ONE PIECE CO-FORMED EXTERIOR HARD SHELL CASE WITH AN ELASTOMERIC LINER FOR MOBILE ELECTRONIC DEVICES and owned by Speculative Product Design. Filed September 25, 2013, by Superior Communications, Inc. The ‘561 patent is the subject of an ITC investigation, In the Matter Certain Cases for Portable Electronic Devices, Investigation, No. 337-TA-867/86l and an infringement action styled Speculative Product Design, LLC v. Superior Communications, Inc., (Case No. 3:12-cv-04997 (N.D. Cal.)).

(18)           IPR2013-00627 (electronically filed) – U.S. Patent No. 8,418,432 entitled QUICK CONNECT/DISCONNECT COUPLING FOR A STALK STOMPER and owned by Not Dead Yet Manufacturing.  Filed September 26, 2013 by Pride Solutions.  The ‘432 patent is the subject of an infringement action styled Not Dead Yet Manufacturing, Inc. d/b/a NDY MFG, Inc. v. Pride Solutions, LLC and May Wes Manufacturing, (Case No. 1:13-cv-03418 (N.D. Ill.)).

(19)           IPR2013-00628 (electronically filed) – U.S. Patent No. 5,527,343 entitled SUTURE ANCHOR and owned by Bonutti Skeletal Innovations.  Filed September 26, 2013 by ConMed and Linvatec.  The ‘343 patent is the subject of two infringement actions styled Bonutti Skeletal Innovations, LLC v. Linvatec Corporation, et al., (Case No. 12-cv-01379 (M.D. Fla.)) and Bonutti Skeletal Innovations, LLC v. DePuy Mitek LLC, et al., (Case No. 12-cv-11667 (D. Mass.)).

(20)           IPR2013-00629 (electronically filed) – U.S. Patent No. 7,806,896 entitled INSTRUMENTATION FOR MINIMALLY INVASIVE JOINT REPLACEMENT AND METHODS FOR USING SAME and owned by Bonutti Skeletal Innovations, LLC. Filed September 26, 2013, by Smith & Nephew, Inc. The ‘896 patent is the subject of a litigation styled Bonutti Skeletal Innovations, LLC v. Smith & Nephew, Inc. (Case No. 12-1111-GMS (D. Del.)).

(21)           IPR2013-00630/631 (electronically filed) – U.S. Patent No. 5,921,986 entitled BONE SUTURE and owned by Bonutti Skeletal Innovations, LLC. Filed September 26, 2013, by Arthrex, Inc. The ‘986 patent is the subject of a litigation styled Bonutti Skeletal Innovations LLC v. Arthrex, Inc., (Case No. 6:13-cv-00620-ACC-TBS (M.D. Fla.)).

(22)           IPR2013-00632/633 (electronically filed) – U.S. Patent No. 8,147,514 entitled APPARATUS AND METHOD FOR SECURING A PORTION OF A BODY and owned by Bonutti Skeletal Innovations, LLC. Filed September 26, 2013, by Arthrex, Inc. The ‘514 patent is the subject of a litigation styled Bonutti Skeletal Innovations LLC v. Arthrex, Inc., (Case No. 6:13-cv-00620-ACC-TBS (M.D. Fla.)).

(23)           IPR2013-00635 (electronically filed) – U.S. Patent No. 6,978,346 entitled APPARATUS FOR REDUNDANT INTERCONNECTION BETWEEN MULTIPLE HOSTS AND RAID and owned by Electronics and Telecommunication Research Institute.  Filed September 27, 2013 by Dell, Hewlett-Packard and NetApp.  The ‘346 patent is the subject of 19 infringement actions in the District Court of Delaware.

The following ex parte reexamination request was filed:

(1)               90/020,061 (electronically filed) – U.S. Patent No. 7,532,106 entitled PERISHABLE PRODUCT ELECTRONIC LABEL INCLUDING TIME AND TEMPERATURE MEASUREMENT and owned by Paksense, Inc. Filed September 18, 2013.

(2)               90/013,001 (electronically filed) – U.S. Patent No. 7,167,503 entitled DISTRIBUTED SPREAD-SPECTRUM NETWORK and owned by Linex Technologies, Inc. Filed September 20, 2013. The ‘503 patent is the subject of an infringement action styled Linex Technologies, Inc. v. Aerohive Networks, Inc. (Case No. 9:13-cv-80281-KKM (S. D. Fla.)).

(3)               90/013,002 (electronically filed) – U.S. Patent No. 6,493,377 entitled DISTRIBUTED NETWORK, SPREAD-SPECTRUM SYSTEM and owned by Linex Technologies, Inc. Filed September 20, 2013. The ‘377 patent is the subject of an infringement action styled Linex Technologies, Inc. v. Aerohive Networks, Inc. (Case No. 9:13-cv-80281-KKM (S. D. Fla.)).

(4)               90/013,003 (electronically filed) – U.S. Patent No. 7,060,431 entitled METHOD OF MAKING AND DECODING OF ARRAY SENSORS WITH MICROSPHERES and owned by Illumina, Inc. Filed September 20, 2013, by Life Technologies Corporation. The ‘431 patent is the subject of an infringement action styled Illumina, Inc. v. Life Technologies Corp., et al. (Case No. 3:11-cv-03022-LAB-NLS (S. D. Cal.)).

(5)               90/013,004 (electronically filed) – U.S. Patent No. 8,304,663 entitled WIRING BOARD AND MANUFACTURING METHOD THEREOF and owned by Kyocera SLC Technologies Corporation.  Filed September 20, 2013.

(6)               90/013,005 (electronically filed) – U.S. Patent No. 5,841,146 entitled REFLECTOR and owned by Briese. Filed September 24, 2013, by Key Lighting, Inc. d/b/a B2Pro. The ‘146 patent is the subject of an infringement action styled Briese Lichttechnik et al. v. B2Pro, et al. (Case No. 9-cv-9790-SC-MHD (S.D.N.Y.)).

(7)               90/013,006 (electronically filed) – U.S. Patent No. 8,417,388 entitled LOAD CONTROL SYSTEM HAVING AN ENERGY SAVINGS MODE and owned by Lutron Electronics, Co., Inc. Filed September 26, 2013, by Creston Electronics, Inc.

(8)               90/013,007 (electronically filed) – U.S. Patent No. 8,269,654 entitled FLASHING BEACON and owned by R. D. Jones Stope Experts, Inc. Filed September 27, 2013, by Carmanah Technologies Corporation. The ‘654 patent is the subject of an infringement action styled Stop Experts, Inc., et al. v. Carmanah Technologies Corp., et al. (Case No. 9:13-cv-80965 (S.D. Fla.)).

(9)               90/013,008 (electronically filed) – U.S. Patent No. 6,462,180 entitled METHOD OF PREPARING a-1 PROTEINASE INHIBITOR and owned by Grifols Therapeutics.  Filed September 27, 2013.

 

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