Anonymous Ex Parte Reexamination Sought against Carnegie Mellon Signal Patents, Among the Requests Week of January 21, 2014

Scott Daniels and Cindy Chen | January 27, 2014

An undisclosed party requested ex parte reexamination of Carnegie Mellon’s U.S. Patent Nos. 6,438,180 and 6,201,839 last Tuesday (see ex parte reexamination Request Nos. (1) & (2)).  The ‘180 and ‘839 patents claim methods and receivers related to “signal detectors in magnetic recordings.”  In 2012, a jury found the patents to be valid and willfully infringed by Marvell Technology, and awarded Carnegie $1.169 billion in damages.

Post-trial motions, of course, were filed, and earlier this month the trial judge denied a motion by Marvell based on a laches defense.  The judge agreed with Marvell that Carnegie had waited too long to sue, but also found that the inequity of Marvell’s willful infringement offset the inequity of Carnegie’s nearly six-year delay in suing .  The judge therefore denied Marvell’s motion, concluding with everyone’s favorite bromide from law school: “He who seeks equity must do equity.”

Marvell has promised to appeal the validity finding at the trial court level – and since a final judgment may be years away, Marvell may yet be saved from the billion dollar verdict by the reexamination requests.  

The following inter partes review requests were filed:

1.   IPR2014-00375 (electronically filed) – U.S. Patent No. 8,528,778 entitled RESEALABLE MOISTURE TIGHT CONTAINER ASSEMBLY FOR STRIPS AND THE LIKE HAVING A LIP SNAP SEAL, which is owned by CSP Technologies, Inc.  Filed by Clariant Corporation on January 21, 2014. The ‘778 patent is asserted in a patent infringement action styled CSP Technologies, Inc. v. Sud-Chemie AG, et al. (Case No. 4:11-cv-0029-RLY-WGH (S.D. Ind.)).

2.   IPR2014-00369 (electronically filed) – U.S. Patent No. 6,317,039 entitled WIRELESS VIDEO AUDIO DATA REMOTE SYSTEM, which is owned by Wireless Remote System, LLC.  Filed by Librestream Technologies, Inc. on January 21, 2014. The ‘039 patent is asserted in a patent infringement action styled Wireless Remote System LLC v. Librestream Technologies, Inc. (Case No. 6:12-cv-00899 (E.D. Tex.)).

3.   IPR2014-00368 (electronically filed) – U.S. Patent No. 6,690,273 entitled WIRELESS VIDEO AUDIO DATA REMOTE SYSTEM, which is owned by Wireless Remote System, LLC.  Filed by Librestream Technologies, Inc. on January 21, 2014. The ‘273 patent is asserted in a patent infringement action styled Wireless Remote System LLC v. Librestream Technologies, Inc. (Case No. 6:12-cv-00899 (E.D. Tex.)).

4.   IPR2014-00376 (electronically filed) – U.S. Patent No. 7,579,019 entitled PHARMACEUTICAL CARRIER DEVICE SUITABLE FOR DELIVERY OF PHARMACEUTICAL COMPOUNDS TO MUCOSAL SURFACES, which is owned by Arius Two, Inc.  Filed by MonoSol Rx, LLC. on January 22, 2014.

5.   IPR2014-00378 & IPR2014-00379 (electronically filed) – U.S. Patent No. 6,340,475 entitled EXTENDING THE DURATION OF DRUG RELEASE WITHIN THE STOMACH DURING THE FED MODE, which is owned by Depomed, Inc.  Filed by Purdue Pharma LP. on January 24, 2014. The ‘475 patent is involved in a patent infringement action styled Depomed, Inc. v. Purdue Pharma LP, et al. (Case No. 3:13-cv-00571-JAP-TJB (D.N.J.)).

6.   IPR2014-00377(electronically filed) – U.S. Patent No. 6,635,280 entitled EXTENDING THE DURATION OF DRUG RELEASE WITHIN THE STOMACH DURING THE FED MODE which is owned by Depomed, Inc.  Filed by Purdue Pharma LP. on January 24, 2014. The ‘280 patent is involved in a patent infringement action styled Depomed, Inc. v. Purdue Pharma LP, et al. (Case No. 3:13-cv-00571-JAP-TJB (D.N.J.)).

 

The following request for covered business method post-grant review was filed:

1.   CBM2014-00060 (electronically filed) – U.S. Patent No. 6,857,022 entitled TRANSLATION ORDERING SYSTEM, which is owned by TransPerfect Global.  Filed by Motion Point Corporation. on January 23, 2014.  The ‘022 patent is the subject of a patent infringement action styled TransPerfect Global v. Motion Point Corporation (Case No. 10-cv-02590 (N.D. Cal.)). The ‘022 patent is also the subject of an earlier filed inter partes request (see Reexamination Control No. 95/002,372)).

 

The following ex parte reexamination requests were filed:

1.   90/013,124 (electronically filed) – U.S. Patent No. 6,438,180 entitled SOFT AND HARD SEQUENCE DETECTION IN ISI MEMORY CHANNELS, which is owned by Carnegie Mellon University. Filed on January 21, 2014. The ‘180 patent is asserted in a patent infringement action styled Carnegie Mellon University v. Marvell Technology Group, Ltd. (Case No. 2:09-00290-NBF (W.D. Pa.)).

2.   90/013,125 (electronically filed) – U.S. Patent No. 6,201,839 entitled METHOD AND APPARATUS FOR CORRELATION-SENSITIVE ADAPTIVE SEQUENCE DETECTION, which is owned by Carnegie Mellon University. Filed on January 21, 2014. The ‘180 patent is asserted in a patent infringement action styled Carnegie Mellon University v. Marvell Technology Group, Ltd. (Case No. 2:09-00290-NBF (W.D. Pa.)).

3.   90/013,126 (electronically filed) – U.S. Patent No. 6,239,909 entitled IMAGE-FORMING METHOD AND IMAGE-FORMING APPARATUS, which is owned by Olympus Optical Co., Ltd. Filed on January 21, 2014.

4.   90/013,127 (electronically filed) – U.S. Patent No. 6,098,203 entitled DISPOSABLE GARMENT AND RELATED MANUFACTURING EQUIPMENT AND METHODS, which is owned by Kimberly-Clark Worldwide, Inc. Filed on January 22, 2014. The ‘203 patent is asserted in a patent infringement action styled Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC, et al. (Case No. 1:09-cv-1685 (WWC) (M.D. Pa.)).

5.   90/013,128 (electronically filed) – U.S. Patent No. D683,497 entitled CONTAINER FOR POUCHES OF SMOKELESS TOBACCO, which is owned by Azionaria Costruzioni Macchine Automatiche A.C.M.A. S.p.a. Filed on January 22, 2014.

6.   90/013,129 (electronically filed) – U.S. Patent No. 7,000,260 entitled DISPOSABLE GARMENT AND RELATED MANUFACTURING EQUIPMENT AND METHODS, which is owned by Kimberly-Clark Worldwide, Inc. Filed on January 22, 2014. The ‘260 patent is asserted in a patent infringement action styled Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC, et al. (Case No. 1:09-cv-1685 (WWC) (M.D. Pa.)).

7.   90/013,130 (electronically filed) – U.S. Patent No. 5,745,922 entitled DISPOSABLE GARMENT AND RELATED MANUFACTURING EQUIPMENT AND METHODS, which is owned by Kimberly-Clark Worldwide, Inc. Filed on January 22, 2014. The ‘922 patent is asserted in a patent infringement action styled Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC, et al. (Case No. 1:09-cv-1685 (WWC) (M.D. Pa.)).

8.   90/013,131 (electronically filed) – U.S. Patent No. 6,260,211 entitled DISPOSABLE GARMENT AND RELATED MANUFACTURING EQUIPMENT AND METHODS, which is owned by Kimberly-Clark Worldwide, Inc. Filed on January 22, 2014. The ‘211 patent is asserted in a patent infringement action styled Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC, et al. (Case No. 1:09-cv-1685 (WWC) (M.D. Pa.)).

9.   90/013,132 (electronically filed) – U.S. Patent No. 5,905,442 entitled METHOD AND APPARATUS FOR CONTROLLING AND DETERMINING THE STATUS OF ELECTRICAL DEVICES FROM REMOTE LOCATIONS, which is owned by Lutron Electronics Co., Inc. Filed on January 23, 2014, by Crestron Electronics, Inc. The ‘442 patent is asserted in a patent infringement action styled Lutron Electronics Co., Inc. v. Crestron Electronics, Inc. (Case No. 2:09-cv-707 (D. Utah)).

10.  90/013,133 (electronically filed) – U.S. Patent No. 5,351,285 entitled MULTIPLE FORMAT TELEPHONIC INTERFACE CONTROL SYSTEM, which is owned by Ronald A. Katz Technology Licensing LP. Filed on January 24, 2014.

11.  90/013,134 (electronically filed) – U.S. Patent No. 7,870,585 entitled CLIENT-SERVER BASED INTERACTIVE TELEVISION PROGRAM GUIDE SYSTEM WITH REMOTE SERVER RECORDING, which is owned by United Video Properties, Inc. Filed on January 24, 2014.

12.  90/013,135 (electronically filed) – U.S. Patent No. 5,676,146 entitled SURGICAL IMPLANT CONTAINING A RESORBABLE RADIOPAQUE MARKER AND METHOD OF LOCATING SUCH WITHIN A BODY, which is owned by Medtronic, Inc. Filed on January 24, 2014. The ‘146 patent is involved in a patent infringement action styled Warsaw Orthopedia Inc., et al. v. Nuvasive, Inc. (Case No. 3:12-cv-02738-CAB-MDD (S.D. Cal.)).

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