RPX Takes on Four VirnetX Patents, Week of November 18, 2013

Scott Daniels | November 25, 2013

Last Monday we reported that RPX had petitioned for inter partes review of MacroSolve patent that had been the basis for 67 infringement actions against a wide range of financial and retail concerns.  This past week, RPX filed seven inter partes review requests against four network protocol patents owned by VirnetX (see inter partes review Request Nos. (15), (16), (17) & (18)).  The patents have been the source of an enormous flow of licensing revenue for VirnetX, resulting from a series of highly successful infringement actions in the Easter District of Texas.

At the same time, the four VirnetX patents have been involved in various reexaminations in which the claims are under either non-final rejection or final rejection.  Apple and New Bay Capital LLC have also filed inter partes review petitions against the VirnetX patents.  RPX explains “that the grounds presented in this petition closely parallel the grounds presented in the petitions filed by Apple and New Bay Capital.”  RPX states that it “has established a Research & Development program (“RPX R&D”) through which it advances a variety of initiatives [with the goals of] increasing transparency by collecting information regarding enforcement activities of entities or patents, tracking patent sales, collecting and evaluating prior art, and compiling databases of this information, which RPX makes available to its clients. In addition, as part of its RPX R&D program, RPX contests patents of questionable validity by filing requests for post-issuance review with the PTO.”

Nintendo requested inter partes review of three patents related to methods for determining orientation in space of hand-held devices in video games (see inter partes review Request Nos (9), (10) & (11)).  The owner of the patents, Motion Games, has sued Nintendo and three other companies in the Eastern District of Texas for infringement of the patents.

General Electric Company requested inter partes review of three gas turbine patents owned by TAS Energy (see inter partes review Request Nos. (6), (7) & (8)).  The TAS patents are the subject of a pending infringement action in the Southern District of California.  GE is not involved in that litigation, but the case does involve equipment that GE had sold to San Diego Gas & Electric.

PNC Bank and JP Morgan Chase made their contribution to the PTO’s growing covered business method patent practice by seeking post-grant review of four patents owned by Maxim Integrated Products.  The patents claim systems for securely transferring information (see post-grant review Request Nos. (1), (2), (3) & (4)).  Maxim has sued quite a number of financial and retail institutions for infringement of the patents, notably Starbucks and Walmart.

The following inter partes review requests were filed:

(1)   IPR2014-00156 (electronically filed) – U.S. Patent No. 6,764,005 entitled UNIVERSAL CREDIT CARD APPARATUS AND METHOD, which is owned by eCharge Licensing, LLC. Filed by Square, Inc. on November 18, 2013. The ‘005 patent is asserted in patent infringement actions styled eCharge Licensing LLC v. Square, Inc. (Case No. 1:13-cv-06445 (N.D. Ill.)) and SCVNGR, Inc. v. eCharge Licensing, LLC (Case No. 1:13-cv-12418 (D. Mass.)).

(2)   IPR2014-00157 (electronically filed) – U.S. Patent No. 7,828,207 entitled UNIVERSAL CREDIT CARD APPARATUS AND METHOD, which is owned by eCharge Licensing, LLC.  Filed by Square, Inc. on November 18, 2013. The ‘207 patent is asserted in patent infringement actions styled eCharge Licensing LLC v. Square, Inc. (Case No. 1:13-cv-06445 (N.D. Ill.)) and SCVNGR, Inc. v. eCharge Licensing, LLC (Case No. 1:13-cv-12418 (D. Mass.)).

(3)   IPR2014-00158 (electronically filed) – U.S. Patent No. 8,490,875 entitled UNIVERSAL CREDIT CARD APPARATUS AND METHOD and owned by eCharge Licensing, LLC. Filed by Square, Inc. on November 18, 2013. The ‘875 patent is asserted in patent infringement actions styled eCharge Licensing LLC v. Square, Inc. (Case No. 1:13-cv-06445 (N.D. Ill.)) and SCVNGR, Inc. v. eCharge Licensing, LLC (Case No. 1:13-cv-12418 (D. Mass.)).

(4)   IPR2014-00159 (electronically filed) – U.S. Patent No. 7,343,165 entitled GPS PUBLICATION APPLICATION SERVER and owned by Silver State Intellectual Technologies, Inc. Filed by Foursquare Labs, Inc. on November 18, 2013. The ‘165 patent is asserted in a patent infringement action styled Silver State Intellectual Technologies, Inc. v. Foursquare Labs, Inc. (Case No. 2:12-cv-01308 (D. Nev.)).

(5)   IPR2014-00160 (electronically filed) – U.S. Patent No. 7,851,482 entitled METHOD FOR MAKING ANALGESICS and owned by Endo Pharmaceuticals, Inc. Filed by Amneal Pharmaceuticals, LLC. on November 18, 2013. The ‘482 patent is asserted in a patent infringement action styled Endo Pharmaceuticals Inc. and Grunenthal GmBH v. Amneal Pharmaceuticals, LLC and Amneal Pharmaceuticals of New York (Case No. 12-cv-8115 (S.D.N.Y.)).

(6)   IPR2014-00161 (electronically filed) – U.S. Patent No. 6,318,065 entitled SYSTEM FOR CHILLING INLET AIR FOR GAS TURBINES and owned by TAS Energy, Inc. Filed by General Electric Company on November 18, 2013. The ‘065 patent is asserted in a patent infringement action styled TAS Energy, Inc. v. San Diego Gas & Electric, Co. (Case No. 3:12-cv-2777-GPC (S.D. Cal.)). IPR2014-00162 (electronically filed) – U.S. Patent No. 6,470,686 entitled SYSTEM FOR CHILLING INLET AIR FOR GAS TURBINES and owned by TAS Energy, Inc. Filed by General Electric Company on November 18, 2013. The ‘686 patent is asserted in a patent infringement action styled TAS Energy, Inc. v. San Diego Gas & Electric, Co. (Case No. 3:12-cv-2777-GPC (S.D. Cal.)).

(7)   IPR2014-00163 (electronically filed) – U.S. Patent No. 6,769,258 entitled SYSTEM FOR STAGED CHILLING OF INLET AIR FOR GAS TURBINES and owned by TAS Energy, Inc. Filed by General Electric Company on November 18, 2013. The ‘258 patent is asserted in a patent infringement action styled TAS Energy, Inc. v. San Diego Gas & Electric, Co. (Case No. 3:12-cv-2777-GPC (S.D. Cal.)).

(8)   IPR2014-00164 (electronically filed) – U.S. Patent No. 6,167,607 entitled VISION TARGET BASED ASSEMBLY and owned by Motion Games, LLC. Filed by Nintendo of America, Inc. on November 19, 2013. The ‘607 patent is asserted in a patent infringement action styled Motion games, LLC v. Nintendo Co., Ltd., et al. (Case No. 6:12-cv-878 (E.D. Tex.)). Motion Games has also asserted the ‘607 patent against Retro Studios, Rent-A-Center, and Gamestop in the same litigation.

(9)   IPR2014-00165 (electronically filed) – U.S. Patent No. 7,756,297 entitled CAMERA BASED SENSING IN HANDHELD, MOBILE, GAMING, OR OTHER DEVICES and owned by Motion Games, LLC.  Filed by Nintendo of America, Inc. on November 19, 2013. The ‘297 patent is asserted in a patent infringement action styled Motion Games, LLC v. Nintendo Co., Ltd., et al. (Case No. 6:12-cv-878 (E.D. Tex.)).

(10)   IPR2014-00166 (electronically filed) – U.S. Patent No. 7,843,429 entitled INTERACTIVE VIDEO BASED GAMES USING OBJECTS SENSED BY TV CAMERAS and owned by Motion Games, LLC.  Filed by Nintendo of America, Inc. on November 19, 2013. The ‘429 patent is asserted in a patent infringement action styled Motion Games, LLC v. Nintendo Co., Ltd., et al. (Case No. 6:12-cv-878 (E.D. Tex.)).

(11)   IPR2014-00167 (electronically filed) – U.S. Patent No. 7,505,854 entitled STARTUP TECHNIQUES FOR A DIGITAL FLOWMETER and owned by Invensys Systems, Inc. Filed by Micro Motion, Inc. on November 19, 2013. The ‘854 patent is asserted in a patent infringement action styled Invensys Systems, Inc. v. Emerson Electric Co., et al. (Case No. 6:12-cv-00799-LED (E.D. Tex.)).

(12)   IPR2014-00169 (electronically filed) – U.S. Patent No. 8,579,876 entitled TUCKED FASTENER FOR IMPROVED FASTENER PERFORMANCE and owned by Kimberly-Clark Worldwide, Inc.  Filed by First Quality Baby Products, Inc. on November 19, 2013.

(13)   IPR2014-00170 (electronically filed) – U.S. Patent No. 6,311,136 entitled DIGITAL FLOWMETER and owned by Invensys Systems, Inc. Filed by Micro Motion, Inc. on November 19, 2013. The ‘136 patent is asserted in a patent infringement action styled Invensys Systems, Inc. v. Emerson Electric Co., et al. (Case No. 6:12-cv-00799-LED (E.D. Tex.)).

(14)   IPR2014-00171 & IPR2014-00172 (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 by RPX Corporation on November 20, 2013. The ‘135 patent is asserted in a number of patent infringement actions in the Eastern District of Texas, against alleged infringers, including Apple (Case Nos. 6:13-cv-00211-LED and 6:12-cv-00855-LED); Cisco (Case No. 6:10-cv-00417); and Microsoft (Case Nos. 6:13-cv-00351; 6:10-cv-00094-LED; and 6:07-cv-00080-LED). Apple and New Bay Capital have separately requested inter partes review of the ‘135 patent (see IPR2013-00349 and IPR2013-00375). RPX Corporation’s asserted grounds of unpatentability are similar to those presented by Apple and New Bay Capital.

(15)   IPR2014-00173 (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 by RPX Corporation on November 20, 2013. The ‘151 patent is asserted in a number of patent infringement actions in the Eastern District of Texas, against alleged infringers, including Apple (Case Nos. 6:13-cv-00211-LED and 6:12-cv-00855-LED); Cisco (Case No. 6:10-cv-00417); and Microsoft (Case No. 6:13-cv-00351).

(16)   IPR2014-00174 & IPR2014-00175 (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 by RPX Corporation on November 20, 2013. The ‘211 patent is asserted in a number of patent infringement actions in the Eastern District of Texas, against alleged infringers, including Apple (Case Nos. 6:13-cv-00211-LED and 6:12-cv-00855-LED); Cisco (Case No. 6:10-cv-00417); and Microsoft (Case No. 6:13-cv-00351).

(17)   IPR2014-00176 & IPR2014-00177 (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 by RPX Corporation on November 20, 2013. The ‘504 patent is asserted in a number of patent infringement actions in the Eastern District of Texas, against alleged infringers, including Apple (Case Nos. 6:13-cv-00211-LED and 6:12-cv-00855-LED); Cisco (Case No. 6:10-cv-00417); and Microsoft (Case No. 6:13-cv-00351).

(18)   IPR2014-00178 (electronically filed) – U.S. Patent No. 7,136,761 entitled DIGITAL FLOWMETER and owned by Invensys Systems, Inc. Filed by Micro Motion, Inc. on November 19, 2013. The ‘761 patent is asserted in a patent infringement action styled Invensys Systems, Inc. v. Emerson Electric Co., et al. (Case No. 6:12-cv-00799-LED (E.D. Tex.)).

(19)   IPR2014-00179 (electronically filed) – U.S. Patent No. 7,124,646 entitled CORRECTING FOR TWO-PHASE FLOW IN A DIGITAL FLOWMETER and owned by Invensys Systems, Inc. Filed by Micro Motion, Inc. on November 19, 2013. The ‘646 patent is asserted in a patent infringement action styled Invensys Systems, Inc. v. Emerson Electric Co., et al. (Case No. 6:12-cv-00799-LED (E.D. Tex.)).

(20)   IPR2014-00180 (electronically filed) – U.S. Patent No. 7,634,666 entitled CRYPTO-ENGINE FOR CRYPTOGRAPHIC PROCESSING OF DATA and owned by Intellectual Ventures II, LLC. Filed by IBM Corporation on November 20, 2013. Intellectual Ventures has asserted ‘666 patent in at least seven patent infringement actions against Huntington National Bank (Case No. 2:13-cv-00785 (S.D. Ohio); U.S. Bancorp (Case No. 0:13-cv-02071 (D. Minn.)); SunTrust Banks (Case No. 1:13-cv-02454 (N.D. Ga.)); Commerce Bank (Case No. 2:13-cv-04160 (W.D. Mo.)); BBVA Compass Bancshares (Case No. 2:13-cv-01106); JP Morgan Chase (Case No. 1:13-cv-03777 (S.D.N.Y.)); and First National Bank of Omaha (Case No. 8:13-cv-00167 (D. Neb.)).

(21)   IPR2014-00183 (electronically filed) – U.S. Patent No. 6,904,796 entitled REMOTE TIRE MONITORING SYSTEMS TOOL and owned by SPX Corporation. Filed by Autel US Inc. and Autel Intelligent Technology Co., Ltd. on November 21, 2013. The ‘796 patent is asserted in a patent infringement action styled Service Solutions U.S. LLC v. Autel U.S. Inc. and Autel Intelligent Technology Co., Ltd. (Case No. 4:15-10534-TGB-LJM (E.D. Mich.)).

(22)   IPR2014-00184 (electronically filed) – U.S. Patent No. 8,298,123 entitled METHOD AND APPARATUS FOR REMOTE INTERACTIVE EXERCISE AND HEALTH EQUIPMENT and owned by Icon Health & Fitness, Inc. Filed by Johnson Health Tech Co., Ltd. on November 21, 2013. The ‘123 patent is asserted in a patent infringement action styled Icon Health & Fitness, Inc. v. Johnson Health Tech North America, Inc. (Case No. 1:13-cv-112-DN (D. Utah)). Johnson Health has previously requested inter partes review of the ‘123 patent (see IPR2013-000464).

(23)   IPR2014-00185 (electronically filed) – U.S. Patent No. 6,020,435 entitled PROCESS FOR PREPARING POLYMER CORE SHELL TYPE EMULSIONS AND POLYMERS FORMED THEREFROM and owned by Rohm and Haas Company. Filed by Organik Kimya AS on November 21, 2013. The ‘435 patent is asserted in patent infringement actions styled Certain Opaque Polymers (Inv. No. 337-TA-883 (USITC)); Rohm and Haas Company and Rohm and Haas Chemicals LLC v. Organik Kimya San. ve Tic. AS, et al. (Case No. 13-cv-898 (D. Del.)). The Delaware litigation has been stayed.

(24)   IPR2014-00187 & IPR2014-00190 (electronically filed) – U.S. Patent No. 8,281,425 entitled LOAD SENSOR SAFETY VACUUM RELEASE SYSTEM and owned by Fail-Safe, LLC. Filed by Pentair Ltd. on November 22, 2013. The ‘425 patent is asserted in a patent infringement action styled Pentair Water Pool and Spa, Inc. v. Fail-Safe LLC (Case No. 2:13-cv-1321 (E.D. Wis.)).

(25)   IPR2014-00188 & IPR2014-00189 (electronically filed) – U.S. Patent No. 7,493,097 entitled HIGH DYNAMIC RANGE COMPACT MIXER OUTPUT STAGE FOR A WIRELESS RECEIVER and owned by Acacia Research Group, LLC. Filed by Broadcom Corporation on November 22, 2013. The ‘097 patent is asserted in a patent infringement action styled Signal Enhancement Technologies, LLC v. Broadcom Corporation (Case No. 8:12-cv-02072 (C.D. Cal.)).

(26)   IPR2014-00191 (electronically filed) – U.S. Patent No. 7,837,736 entitled MINIMALLY INVASIVE SURGICAL SYSTEMS AND METHODS and owned by Bonutti Skeletal Innovations, LLC. Filed by Zimmer Holdings, Inc. on November 22, 2013. The ‘736 patent is asserted in a patent infringement action styled Bonutti Skeletal Innovations LLC v. Zimmer Holdings, Inc. and Zimmer, Inc. (Case No. 1:12-cv-01107-GMS (D. Del.)).

(27)   IPR2014-00192 (electronically filed) – U.S. Patent No. 8,278,492 entitled PROCESS FOR THE MANUFACTURE OF DIESEL RANGE HYDROCARBONS and owned by Neste Oil OYJ. Filed by Syntroleum Corporation on November 22, 2013.

 

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

(1)   CBM2014-00038 (electronically filed) – U.S. Patent No. 5,940,510 entitled TRANSFER OF VALUABLE INFORMATION BETWEEN A SECURE MODULE AND ANOTHER MODULE and owned by Maxim Integrated Products, Inc. Filed by PNC Bank, N.A. and JP Morgan Chase on November 22, 2013. The ‘510 patent is asserted in a patent infringement action styled In re Maxim Integrated Products, Inc. (Case No. 2:12-mc-00244, MDL No. 2354 (W.D. Pa.)). Maxim Integrated Products has also asserted the ‘510 patent against a host of other alleged infringers, including PNC Financial Services Group (Case No. 2:12-cv-00089-JFC (W.D. Pa.)); Starbucks (Case No. 2:12-cv-00877-JFC (W.D. Pa.)); Groupon (Case No. 2:12-cv-00881-JFC (W.D. Pa.)); Bank of America (Case No. 2:12-cv-01640-JFC (W.D. Pa.)); and Walmart (Case No. 2:12-cv-01643-JFC (W.D. Pa.)).

(2)   CBM2014-00039 (electronically filed) – U.S. Patent No. 5,949,880 entitled TRANSFER OF VALUABLE INFORMATION BETWEEN A SECURE MODULE AND ANOTHER MODULE and owned by Maxim Integrated Products, Inc. Filed by PNC Bank, N.A. and JP Morgan Chase on November 22, 2013. The ‘880 patent is asserted against at least 17 different financial institutions in a number of patent infringement litigations, many of which have been consolidated into a multidistrict litigation styled In re Maxim Integrated Products, Inc. (Case No. 2:12-mc-00244, MDL No. 2354 (W.D. Pa.)).

(3)   CBM2014-00040 (electronically filed) – U.S. Patent No. 6,105,013 entitled METHOD, APPARATUS, SYSTEM AND FIRMWARE FOR SECURE TRANSACTIONS owned by Maxim Integrated Products, Inc. Filed by PNC Bank, N.A. and JP Morgan Chase on November 22, 2013. Maxim Integrated Products has asserted the ‘013 patent concurrently with the ‘510 patent and the ‘880 patent in the patent infringement actions enumerated above.

(4)   CBM2014-00041 (electronically filed) – U.S. Patent No. 6,237,095 entitled APPARATUS FOR TRANSFER OF SECURE INFORMATION BETWEEN A DATA CARRYING MODULE AND AN ELECTRONIC DEVICE owned by Maxim Integrated Products, Inc. Filed by PNC Bank, N.A. and JP Morgan Chase on November 22, 2013. Maxim Integrated Products has asserted the ‘095 patent concurrently with the ‘510 patent and the ‘880 patent in the patent infringement actions enumerated above.

 

The following ex parte reexamination requests were filed:

(1)   90/013,062 (electronically filed) – U.S. Patent No. 5,876,792 entitled METHOD AND APPARATUS FOR CONTROLLED PLACEMENT OF A POLYMER COMPOSITION INTO A WEB and owned by Nextec Applications, Inc. Filed on November 21, 2013.

(2)   90/013,063 (electronically filed) – U.S. Patent No. 5,940,510 entitled TRANSFER OF VALUABLE INFORMATION BETWEEN A SECURE MODULE AND ANOTHER MODULE and owned by Maxim Integrated Products, Inc. Filed on November 22, 2013. The ‘510 patent is asserted in a patent infringement action styled In re Maxim Integrated Products, Inc. (Case No. 2:12-mc-00244, MDL No. 2354 (W.D. Pa.)). Maxim Integrated Products has also asserted the ‘510 patent against a host of other alleged infringers, including PNC Financial Services Group (Case No. 2:12-cv-00089-JFC (W.D. Pa.)); Starbucks (Case No. 2:12-cv-00877-JFC (W.D. Pa.)); Groupon (Case No. 2:12-cv-00881-JFC (W.D. Pa.)); Bank of America (Case No. 2:12-cv-01640-JFC (W.D. Pa.)); and Walmart (Case No. 2:12-cv-01643-JFC (W.D. Pa.)).

(3)   90/013,064 (electronically filed) – U.S. Patent No. 7,544,206 entitled METHOD AND APPARATUS FOR RESECTING AND REPLACING AN AORTIC VALVE and owned by Medtronic, Inc. Filed on November 22, 2013.

(4)   90/013,065 (electronically filed) – U.S. Patent No. 8,455,194 entitled DIAGNOSTIC METHODS and owned by Isis Innovation Ltd. Filed by Health Diagnostic Laboratory, Inc. on November 22, 2013.

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