Petitions for Post-Grant Review of Six “Covered Business Method Patents” Filed, Week of October 14, 2013

Scott Daniels and Cindy Chen | October 22, 2013

The number of requests for post-grant review of covered business method patents was slow at first, but has picked up steam of late, to the point that last week there were more such requests than requests for inter partes review.  Most notably, a collection of companies, lead by Apple, requested post-grant review of four patents related to “information management and synchronous communications system and method for generation of computerized menus for restaurants” (see post-grant review Request Nos. (2) to (5)).  The owner of the patents, Ameranth, has sued Apple and an assortment of restaurateurs for infringement.  Practitioners will be interested to note that none of the proposed grounds for rejection are based on patents or printed publications, rather the challenges are based on §§ 101 and 112.

Electronic Frontier Foundation, that describes itself as “a donor-supported membership organization working to protect fundamental rights regardless of technology,” requested inter partes review of a media content dissemination patent owned by Personal Audio (see inter partes Request No. (1)).  Quite a number of media companies have been sued in the Eastern District of Texas for infringement of the patent.

Finally, the knock-down-drag-battle between NuVasive and Medtronic escalated last week with the latter filing two more requests for inter partes review (see inter partes review Request Nos. ((2) & (4)).

The following inter partes review requests were filed:

(1)               IPR2014-00070 (electronically filed) – U.S. Patent No. 8,112,504 entitled SYSTEM FOR DISSEMINATING MEDIA CONTENT REPRESENTING EPISODES IN A SERIALIZED SEQUENCE and owned by Personal Audio, LLC. Filed October 16, 2013, by Electronic Frontier Foundation. The ‘504 patent is currently the subject matter of patent infringement litigations styled Personal Audio, LLC v. CBS Corp. (Case No. 2:13-cv-270 (E.D. Tex.)); Personal Audio, LLC v. NBC Universal Media, LLC (Case No. 2:13-cv-271 (E.D. Tex.)); Personal Audio, LLC v. Ace Broadcasting Network, LLC (Case No. 2:13-cv-14 (E.D. Tex.)); Personal Audio, LLC v. Howstuffworks.com (Case No. 2:13-cv-15 (E.D. Tex.)); Personal Audio, LLC v. Togi Entertainment, Inc. (Case No. 2:13-cv-13 (E.D. Tex.)); Fox Networks Group, Inc. v. Personal Audio, LLC (Case No. 1:13-cv-11795 (D. Mass.)); and Personal Audio, LLC v. Fox Broadcasting Co. (Case No. 2:13-cv-577 (E.D. Tex.)).

(2)               IPR2014-00071 (electronically filed) – U.S. Patent No. D652,922 entitled DILATOR and owned by NuVasive, Inc. Filed October 16, 2013, by Medtronic, Inc.

(3)               IPR2014-00072 (electronically filed) – U.S. Patent No. 5,686,738 entitled HIGHLY INSULATING MONOCRYSTALLINE GALLIUM NITRIDE THIN FILMS and owned by Boston University. Filed October 17, 2013, by Seoul Semiconductor Co., Ltd. The ‘738 patent is currently the subject matter of a patent infringement litigation styled Trustees of the Boston University v. Seoul Semiconductor Co., Ltd. (Case No. 1:12-cv-11938 (D. Mass.)). In addition, the ‘738 patent has been asserted in over thirty litigations before the District of Massachusetts. Alleged patent infringers include Samsung (Case No. 1:13-cv-10659-PBS), Amazon.com (Case No. 1:13-cv-11097-PBS), Apple (Case No. 1:13-cv-11575-PBS), and Microsoft (Case No. 1:13-cv-12338-PBS).

(4)               IPR2014-00073 & IPR2014-00074 (electronically filed) – U.S. Patent No. 8,192,356 entitled SURGICAL ACCESS SYSTEM AND RELATED METHODS and owned by NuVasive, Inc. Filed October 18, 2013, by Medtronic, Inc. The ‘356 patent is currently the subject matter of a litigation styled Warsaw Orthopedic Inc., et al. v. Medtronic, Inc. (Case No. 3:12-cv-02738-CAB-MDD (S.D. Cal.)).

The following requests for covered business method post-grant review were filed:

(1)       CBM2014-00012 (electronically filed) – U.S. Patent No. 6,625,582 entitled METHOD AND SYSTEM FOR CONVERTING A DESIGNATED PORTION OF FUTURE SOCIAL SECURITY AND OTHER RETIREMENT PAYMENTS TO CURRENT BENEFITS and owned by Retirement Capital Access Management Company, LLC. Filed October 16, 2013 by Regions Financial Corporation, Advance America, Cash Advance Centers, Inc., and CNU Online Holdings, LLC. The ‘582 patent is currently the subject matter of litigations styled Benefit Funding Systems LLC, et al. v. Regions Financial Corporation (Case No. 1:12-cv-802-LPS (D. Del.)); Benefit Funding Systems LLC, et al. v. Cash Advance Centers, Inc., LLC (Case No. 1:12-cv-801-LPS (D. Del.)); Benefit Funding Systems LLC, et al. v. U.S. Bancorp  (Case No. 1:12-cv-803-LPS (D. Del.)). U.S. Bancorp previously requested, and was granted, covered business method patent review of the ‘581 patent (see CBM 2013-00014).

(2)       CBM2014-00013 (electronically filed) – U.S. Patent No. 6,982,733 entitled INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS SYSTEM WITH MENU GENERATION, AND HANDWRITING AND VOICE MODIFICATION OF ORDERS and owned by Ameranth, Inc. Filed October 15, 2013 by Apple, Inc., Fandango, LLC, OpenTable, Inc., and Domino’s Pizza, Inc. Ameranth has asserted the ‘733 patent in patent infringement litigations styled Ameranth, Inc. v. Apple Inc. (Case No. 3:12-cv-02350 (S.D. Cal.)); Ameranth, Inc. v. Fandango, Inc. (Case Nos. 3:12-cv-01651 (S.D. Cal.) and 3:13-cv-01525 (S.D. Cal.)); Ameranth, Inc. v. Domino’s Pizza, LLC., et al. (Case Nos. 3:12-cv-00733 (S.D. Cal.) and 3:13-cv-01520 (S.D. Cal.)); and Ameranth, Inc. v. OpenTable, Inc. (Case Nos. 3:12-cv-00731 (S.D. Cal.) and 3:12-cv-01840 (S.D. Cal.)).

(3)       CBM2014-00014 (electronically filed) – U.S. Patent No. 8,146,077 entitled INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS SYSTEM WITH MENU GENERATION, AND HANDWRITING AND VOICE MODIFICATION OF ORDERS and owned by Ameranth, Inc. Filed October 15, 2013 by a consortium of 35 petitioners, including Expedia, Inc., Fandango, LLC, OpenTable, Inc., Papa John’s USA, Inc., Pizza Hut, Inc., Starbucks Corporation, Hilton Worldwide, Inc., and Apple, Inc. Ameranth has asserted the ‘077 patent in at least 40 patent infringement lawsuits in the Southern District of California against the petitioners and other alleged infringers.

(4)       CBM2014-00015 (electronically filed) – U.S. Patent No. 6,384,850 entitled INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS SYSTEM WITH MENU GENERATION and owned by Ameranth, Inc. Filed October 15, 2013 by a group of 35 petitioners, including Expedia, Inc., Fandango, LLC, OpenTable, Inc., Papa John’s USA, Inc., Pizza Hut, Inc., Starbucks Corporation, Hilton Worldwide, Inc., and Apple, Inc. The ‘850 patent is currently the subject matter of at least 35 patent infringement litigations in the South District of California against the petitioners and other alleged infringers.

(5)       CBM2014-00016 (electronically filed) – U.S. Patent No. 6,871,325 entitled INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS SYSTEM WITH MENU GENERATION and owned by Ameranth, Inc. Filed October 15, 2013 by a group of 35 petitioners, including Expedia, Inc., Fandango, LLC, OpenTable, Inc., Papa John’s USA, Inc., Pizza Hut, Inc., Starbucks Corporation, Hilton Worldwide, Inc., and Apple, Inc. The ‘325 patent is currently the subject matter of at least 35 patent infringement litigations in the South District of California against the petitioners and other alleged infringers.

(6)       CBM2014-00017 (electronically filed) – U.S. Patent No. 8,209,389 entitled SYSTEM AND METHOD FOR VERIFYING DELIVERY AND INTEGRITY OF ELECTRONIC MESSAGES, which is owned by RPost Communications Ltd. and licensed exclusively to RPost Holdings, Inc. Filed October 16, 2013 by Epsilon Data Management, LLC and Experian Marketing Solutions, Inc. The ‘389 patent is currently the subject matter of litigations styled RPost Holdings, Inc. v. Epsilon Data Management, LLC (Case No. 2:12-cv-00511-JRG (E.D. Tex.)); RPost Holdings, Inc. v. Experian Marketing Solutions, Inc. (Case No. 2:12-cv-00513-JRG (E.D. Tex.)); RPost Holdings, Inc. v. Vocus, Inc. (Case No. 2:12-cv-00516-JRG (E.D. Tex.)); RPost Holdings, Inc. v. Constant Contact, Inc. (Case No. 2:12-cv-00510-JRG (E.D. Tex.)); RPost Holdings, Inc. v. Strongmail Systems, Inc. (Case No. 2:12-cv-00515-JRG (E.D. Tex.)); RPost Holdings, Inc. v. Infogroup, Inc. (Case No. 2:12-cv-00517-JRG (E.D. Tex.)); and RPost Holdings, Inc. v. Docusign, Inc. (Case No. 2:12-cv-00683-JRG (E.D. Tex.)).

The following ex parte reexamination requests were filed:

(1)               90/013,026 (electronically filed) – U.S. Patent No. 8,528,142 entitled FLOOR TREATMENT APPARATUS and owned by Karcher North America, Inc. Filed October 15, 2013, by Nilfisk-Advance, Inc. The ‘142 patent is currently the subject matter of a litigation styled Karcher North America, Inc. v. Nilfisk-Advance, Inc. (Case No. 13-cv-01248-CMA-MJW (D. Colo.)).

(2)               90/013,027 (electronically filed) – U.S. Patent No. D637,903 entitled CONTAINER FOR POUCHES OF SMOKELESS TOBACCO and owned by Azionaria Costruziono Macchine Automatiche ACMA SPA. Filed October 18, 2013, by Swedish Match North Europe AB.

(3)               90/013,029 (electronically filed) – U.S. Patent No. 7,888,445 entitled FIBROUS PRODUCTS AND METHODS FOR PRODUCING THE SAME and owned by Knauf Insulation GmbH. Filed October 16, 2013, by Rockwool International A/S.

(4)               90/013,030 (electronically filed) – U.S. Patent No. 7,772,347 entitled FIBROUS PRODUCTS AND METHODS FOR PRODUCING THE SAME and owned by Knauf Insulation GmbH. Filed October 16, 2013, by Rockwool International A/S.

(5)               90/013,031 (electronically filed) – U.S. Patent No. 8,383,120 entitled CONCOMITANT TREATMENT OF RHEUMATOID ARTHRITIS WITH ANTI-TNF-ALPHA ANTIBODIES AND METHOTREXATE and owned by The Mathilda and Terence Kennedy Institute of Rheumatology Trust. Filed October 18, 2013.

(6)               90/013,032 (electronically filed) – U.S. Patent No. 7,404,593 entitled MODULAR ENERGY ABSORBER OF VARYING TOPOGRAPHY AND METHOD FOR CONFIGURING THE SAME and owned by Oakwood Energy Management, Inc. Filed October 18, 2013.

(7)               90/013,033 (electronically filed) – U.S. Patent No. 5,255,309 entitled TELEPHONIC-INTERFACE STATISTICAL ANALYSIS SYSTEM and owned by Ronald A. Katz Technology Licensing, L.P. Filed October 18, 2013.

(8)               90/013,034 (electronically filed) – U.S. Patent No. 7,069,240 entitled SYSTEM AND METHOD FOR CAPTURE, STORAGE AND PROCESSING OF RECEIPTS AND RELATED DATA and owned by The Neat Company, Inc. Filed October 18, 2013.

 

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