Toshiba Attack on Intellectual Ventures IC Patents, Among the Requests Week of December 30, 2013

Scott Daniels, Cindy Chen and Jerome Bushnell | January 6, 2014

This past March, Intellectual Ventures I and II sued Toshiba for infringement of ten circuits patents, most of them related to memory.  This past week, Toshiba requested inter partes review of two of those ten patents, U.S. Patent Nos. 5,687,132 and 7,836,371 (see inter partes review Requests No. (2) & (9)).  The ‘132 patent claims “multiple-bank memories and systems” and the ‘371 patent claims an integrated circuit for “testing and debugging of electronic systems, and, in particular, to on-chip circuits for the test and diagnosis of problems in an integrated circuit.” Toshiba has previously requested inter partes review of two other IV patents (IPR2014-00113, and -00201), and will likely be filing further requests against the other six remaining patents, as well.

Apple filed two petitions for inter partes review of a Rensselaer Polytechnic Institute patent (see inter partes review Request No. (10)). RPI’s patent relates “to user interfaces … that recognize natural language.”  Apple asks that these new requests be joined with previously filed request IPR2014-00077. RPI has sued Apple for infringement of the patent. 

Medical devices and related surgical methods continue to be the subject of validity challenges at the Patent Office, with Zimmer Holdings filing two inter partes review requests against Bonutti Skeletal Innovations patents related to joint replacement techniques and knee arthroplasty (see inter partes review Requests No. (4) & (11)).  The two companies are involved in a related infringement action in Delaware regarding these patents.

The following inter partes review requests were filed:

1. IPR2014-00275 (electronically filed) – U.S. Patent No. 7,941,151 entitled METHOD AND SYSTEM FOR PROVIDING CHANNEL ASSIGNMENT INFORMATION USED TO SUPPORT UPLINK AND DOWNLINK CHANNELS, which is owned by InterDigital Technology Corporation.  Filed by ZTE Corporation and ZTE (USA) Inc. on December 30, 2013.  The ‘151 patent is the subject of an ITC investigation, Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof (ITC Inv. No. 337-TA-868); and the following infringement actions in the U.S. District Court for the District of Delaware: InterDigital Commc’ns Inc. v. Huawei Techs, Co., Ltd. (Case No. 13-cv-00008-RGA); InterDigital Commc’ns Inc. v. ZTE Corp. (Case No. 13-cv-00009-RGA); InterDigital Commc’ns Inc. v. Nokia Corp. (Case No. 13-cv-00010-RGA); and InterDigital Commc’ns Inc. v. Samsung Elec. Co. Ltd. (Case No. 13-cv-00011-RGA). 

2. IPR2014-00310 (electronically filed) – U.S. Patent No. 7,836,371 entitled ON-CHIP SERVICE PROCESSOR, which is owned by Intellectual Ventures I, LLC  and Intellectual Ventures II, LLC.  Filed by Toshiba Corporation on December 30, 2013.  The ‘371 patent is the subject of an infringement action styled Intellectual Ventures I LLC et al. v. Toshiba Corporation, et al. (Case no. 1:13-cv-00453 (D. Del.)).

3. IPR2014-00295 (electronically filed) – U.S. Patent No. 5,602,524 entitled DEVICE FOR MONITORING THE AIR-PRESSURE IN PNEUMATIC TIRES FITTED ON VEHICLE WHEELS, which is owned by Wasica Finance GmbH and BlueArc Finance AG.  Filed by Continental Automotive Systems, Inc. on December 31, 2013.  The ‘524 patent is the subject of two infringement actions: Wasica Fin. GmbH et al. v. Continental Auto. Sys. US, Inc. (Case No. 1:13-cv-01356 (D. Del.)); and Wasica Fin. GmbH et al. v. Schrader Int’l, Inc. (Case No. 1:13-cv-01353 (D. Del.)).

4. IPR2014-00311 (electronically filed) – U.S. Patent No. 7,959,635 entitled LIMITED INCISION TOTAL JOINT REPLACEMENT METHODS, which is owned by Bonutti Skeletal Innovations LLC.  Filed by Zimmer Holdings, Inc. on December 31, 2013.  The ‘635 patent is the subject of an infringement action styled Bonutti Skeletal Innovations LLC v. Zimmer Holdings, Inc. (Case No. 1:12-cv-01107-GMS (D. Del.)).

5. IPR2014-00312 (electronically filed) – U.S. Patent No. 8,584,946 entitled CARD READER DEVICE FOR A CELL PHONE AND METHOD OF USE, which is owned by REM Holdings 3, LLC.  Filed by Square, Inc. on December 31, 2013.  The ‘946 patent is related to the patent infringement action styled Square, Inc. and James McKelvey v. REM HOLDINGS 3, LLC (Case No. 4:10-cv-02243-SNLF (E.D.Mo.)).

6. IPR2014-00313 (electronically filed) – U.S. Patent No. 8,573,666 entitled RETRACTABLE ROOM ACTUATION ASSEMBLY FOR RECREATIONAL VEHICLE, which is owned by Lippert Components Manufacturing, Inc.  Filed by AL-KO Kober, LLC. on December 31, 2013.  The ‘666 patent is asserted in the infringement action styled Lippert Components Manufacturing, Inc. v. AL-KO Kober LLC (Case No. 3:13-cv-00697 (N.D. Ind.)).

7. IPR2014-00314 (electronically filed) – U.S. Patent No. 6,421,724 entitled SYSTEM AND METHOD FOR MEASURING USER REACTIONS CONCERNING ONE OR MORE PARTICULAR WEB PAGES OF A WEBSITE, which is owned by OpinionLab, Inc.  Filed by Qualtrics, LLC on December 31, 2013.  The ‘724 patent is the subject of two related infringement actions: OpinionLab, Inc. v. Qualtrics Labs, Inc., et al. (Case No. 1:13-cv-01574 (ND Ill.)); and OpinionLab, Inc. v. iPerceptions Inc. et al. (Case No. 1:12-cv-05662 (N.D. Ill.)).

8. IPR2014-00315 (electronically filed) – U.S. Patent No. 8,318,738 entitled REVERSE-TURN MIMETICS AND METHOD RELATING THERETO, which is owned by Choongwae Pharma Corporation.  Filed by PRISM Pharma Co., Ltd. on December 31, 2013.

9. IPR2014-00317 (electronically filed) – U.S. Patent No. 5,687,132 entitled MULTIPLE-BANK MEMORY ARCHITECTURE AND SYSTEMS AND METHODS USING THE SAME, which is owned by Intellectual Ventures I, LLC and Intellectual Ventures II, LLC.  Filed by Toshiba Corporation on December 31, 2013.  The ‘132 patent is asserted in the infringement action styled Intellectual Ventures I LLC et al. v. Toshiba Corporation, et al. (Case no. 1:13-cv-00453 (D Del.)).

10. IPR2014-00319 and IPR2014-00320 (electronically filed) – U.S. Patent No. 7,177,798 entitled NATURAL LANGUAGE INTERFACE USING CONSTRAINED INTERMEDIATE DICTIONARY OF RESULTS, which is owned by Rensselaer Polytechnic Institute.  Filed by Apple, Inc. on January 3, 2014.  The ‘798 patent is the subject of an infringement action styled Rensselaer Polytechnic Institute et al. v. Apple Inc. (Case No. 1:12-cv-00633 (N.D.N.Y.)).

11. IPR2014-00321 (electronically filed) – U.S. Patent No. 7,806,896 entitled KNEE ARTHROPLASTY METHOD, which is owned by Bonutti Skeletal Innovations LLC.   Filed by Zimmer Holdings, Inc. on January 3, 2014.  The ‘896 patent is the subject of an infringement action styled Bonutti Skeletal Innovations LLC v. Zimmer Holdings, Inc. (Case No. 1:12-cv-01107-GMS (D. Del.)).

No Covered Business Method Post-Grant Review requests were filed.

The following ex parte reexamination requests were filed:

1. 90/013,108 (electronically filed) – U.S. Patent No. 6,460,386 entitled ELECTRONIC KEY STRUCTURE, which is owned by Nissan Motor Co., Ltd.  Filed by the Owner on December 31, 2013.

2. 90/013,109 (electronically filed) – U.S. Patent No. 7,584,717 entitled PORTABLE TOILET, which is owned by Pup Pee Solutions Pty Ltd.  Filed on January 2, 2014, likely by Bluekube Technologies, Inc.  The ‘717 patent is the subject of an infringement action styled Radio Systems Corporation et al. v. Bluekube Technologies (Case No. 3:13-cv-00716 (ED Tenn.)).

3. 90/013,110 (electronically filed) – U.S. Patent No. 6,305,649 entitled RETAINING DEVICE, which is owned by BSW Limited.  Filed by Gerald Todd Gray/Mary Terry on January 2, 2014.

4. 90/013,111 (electronically filed) – U.S. patent No. 7,523,935 entitled CARD SHUFFLING APPARATUS WITH INTEGRAL CARD DELIVERY, which is owned by SHFL Entertainment, Inc.  Filed by DigiDeal Corporation on January 2, 2014.  The ‘935 patent is asserted in the infringement action styled SHFL Entertainment, Inc. v. DigiDeal Corporation (Case No. 2:12-cv-01782-GMC-VCF (D. Nev.)).

5. 90/013,112 (electronically filed) – U.S. patent No. 6,651,982 entitled CARD SHUFFLING APPARATUS WITH INTEGRAL CARD DELIVERY, which is owned by SHFL Entertainment, Inc.  Filed by DigiDeal Corporation on January 2, 2014.  The ‘982 patent is asserted in the infringement action styled SHFL Entertainment, Inc. v. DigiDeal Corporation (Case No. 2:12-cv-01782-GMC-VCF (D. Nev.)).

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