Microsoft Takes another Crack at VirnetX Patent, Among the Requests Week of January 27, 2014

Scott Daniels and Cindy Chen | February 5, 2014

In 2010 Microsoft paid VirnetX $200 million to settle a patent infringement action.  In 2012 VirnetX won a $368 million jury verdict against Apple for infringement of the same set of patents.   This past year, VirnetX again sued Microsoft, this time claiming that Microsoft’s Skype infringes those very same patents.  

 Last week Microsoft struck back, requesting inter partes review of one of the VirnetX patents-in-suit (see inter partes review Request No. (16)).  This week, Microsoft is filing further requests against other VirnetX patents. 

 Microsoft is only the latest in a series of companies that are attempting to invalidate the VirnetX patent portfolio through challenges at the Patent Office.  So far at least, VirnetX has been fairly successful at defending against those challenges. 

The following inter partes review requests were filed:

1.  IPR2014-00365 (electronically filed) – U.S. Patent No. 8,085,966 entitled COMBINED HEADPHONE SET AND PORTABLE SPEAKER ASSMBLY, which is owned by Infinite Engineering.  Filed by Headbox (d/b/a) BoomPhones on January 27, 2014.

 2.  IPR2014-00382 (electronically filed) – U.S. Patent No. 7,728,132 entitled COMPOSITIONS FOR STABILIZING CHLORINATED WATER TO SUNLIGHT DECOMPOSITION, AND METHODS OF PREPARATION THEREOF, which is owned by Enviro Tech Chemical Services, Inc.  Filed by Lenroc on January 27, 2014.

 3.  IPR2014-00383 (electronically filed) – U.S. Patent No. 7,543,318 entitled DELIVERY OF NAVIGATION DATA FOR PLAYBACK OF AUDIO AND VIDEO CONTENT which is owned by ClearPlay.  Filed by CustomPlay on January 27, 2014. A related patent, U.S. Patent No. 7,577,970, is the subject of IPR2013-00484.  

 4.  IPR2014-00384 (electronically filed) – U.S. Patent No. 6,823,269 entitled EDDY CURRENT DATA UNION, which is owned by Westinghouse Electric.  Filed by Zetec on January 28, 2014. The ‘269 patent is asserted in a patent infringement action styled Westinghouse LLC v. Zetec, Inc., (Case No.: 2:13-cv-01124) (W.D. Pa.)).

 5.  IPR2014-00386 (electronically filed) – U.S. Patent No. 5,505,788 entitled THERMALLY REGULATED PHOTOVOLTAIC ROOFING ASSEMBLY, which is owned by SunPower Corp.   Filed by PanelClaw on January 28, 2014. The ‘788 patent is asserted in a patent infringement action styled Sunpower Corporation v. Panel Claw, Inc., (Case No. 12-1633-GMS, (D. Del.)). 

 6.  IPR2014-00387 (electronically filed) – U.S. Patent Reissue No. 38,988 entitled LIGHTWEIGHT, SELF-BALLASTING PHOTOVOLTAIC ROOFING ASSEMBLY, which is owned by SunPower Corp.   Filed by PanelClaw on January 28, 2014. The ‘988 patent is asserted in a patent infringement action styled Sunpower Corporation v. Panel Claw, Inc., (Case No. 12-1633-GMS, (D. Del.)). 

 7.  IPR2014-00390 (electronically filed) – U.S. Patent No. 6,754,594 entitled DIGITAL FLOWMETER, which is owned by Invensys Systems.   Filed by Micro Motion on January 30, 2014. The ‘594 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.)).

 8.  IPR2014-00392 (electronically filed) – U.S. Patent No. 8,000,906 entitled DIGITAL FLOWMETER, which is owned by Invensys Systems.   Filed by Micro Motion on January 29, 2014. The ‘906 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.)).

 9.  IPR2014-00393 (electronically filed) – U.S. Patent No. 7,571,062 entitled DIGITAL FLOWMETER, which is owned by Invensys Systems.   Filed by Micro Motion on January 31, 2014. The ‘062 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.)).

 10. IPR2014-00394 (electronically filed) – U.S. Patent No. 6,476,858 entitled VIDEO MONITORING AND SECURITY SYSTEM, which is owned by Canatelo.  Filed by Axis Communications on January 30, 2014. The ‘858 patent is asserted in a patent infringement action styled Canatelo, LLC. v. AXIS Communications AB, et al., (Case No. 1:13-cv-01227-GMS (D. Del.).

 11. IPR2014-00395 (electronically filed) – U.S. Patent No. 6,482,228 entitled, which is owned by Dr. Troy Norred.  Filed by Medtronic on January 31, 2014. The ‘228 patent is asserted in a patent infringement action styled Troy R. Norred M.D. v. Medtronic, Inc., et al., (Case No. 2:13-cv-02061 (D. Kan.)). 

 12. IPR2014-00396 (electronically filed) – U.S. Patent No. 7,310,111 entitled VIDEO MONITORING AND SECURITY SYSTEM, which is owned by Canatelo.  Filed by Axis Communications on January 30, 2014. The ‘111 patent is asserted in a patent infringement action styled Canatelo, LLC. v. AXIS Communications AB, et al., (Case No. 1:13-cv-01227-GMS (D. Del.).

 13. IPR2014-00397 (electronically filed) – U.S. Patent No. 6,833,686 entitled CIRCUIT AND METHOD OF OPERATION FOR AN ADAPTIVE CHARGE RATE POWER SUPPLY, which is owned by Blackberry.  Filed by Cypress Semiconductor on January 30, 2014. The ‘686 patent is asserted in a patent infringement action styled BlackBerry Ltd. v. Cypress Semiconductor Corp., (Case No. 3:13-cv-04431 (N.D. Tex.)).

 14. IPR2014-00398 (electronically filed) – U.S. Patent No. 8,299,032 entitled SELF-ASSMBLING PEPTIDE AND GEL THEREFROM, which is owned by Menicon.  Filed by 3D-Matrix on January 31, 2014.

 15. IPR2014-00400 (electronically filed) – U.S. Patent No. 6,034,623 entitled AUTONOMOUS RADIO TELEMETRY, which is owned by Blackberry.  Filed by Cypress Semiconductor on January 30, 2014. The ‘623 patent is asserted in a patent infringement action styled BlackBerry Ltd. v. Cypress Semiconductor Corp., (Case No. 3:13-cv-04431 (N.D. Tex.)).

 16. IPR2014-00401 (electronically filed) – U.S. Patent No. 7,188,180 entitled METHOD FOR ESTABLISHING SECURE COMMUNICATION LINK BETWEEN COMPUTERS OF VIRTUAL PROVATE NETWORK, which is owned by VirnetX.  Filed by Microsoft on January 31, 2014. The ‘180 patent is asserted in a patent infringement action styled VirnetX Inc. et al. v. Microsoft Corporation, (Case No. 6:13cv351 (E.D. Tex.)); VirnetX Inc. v. Cisco Systems, Inc. et al., (Case No. 6:10cv417 (E.D. Tex.)); and VirnetX Inc. v. Apple Inc., (Case No. 6:13cv211 (E.D. Tex.)).

 17. IPR2014-00402 (electronically filed) – U.S. Patent No. 8,373,012 entitled RENEWABLE JET FUEL BLENDSTOCK FROM ISOBUTANOL, which is owned by Gevo.  Filed by Butamax Advanced Biofuels on January 31, 2014.

 18. IPR2014-00406 (electronically filed) – U.S. Patent No. 7,085,820 entitled SYSTEM AND METHOD FOR REPORTING TO A WEBSITE OWNER USER REACTIONS TO PARTICULAR WEB PAGES OF A WEBSITE which is owned by OpinionLab. Filed by Qualtrics on January 31, 2014.

 19. IPR2014-00407 (electronically filed) – U.S. Patent No. 8,359,007 entitled SYSTEM AND METHOD FOR COMMUNICATIONS MEDIA CENTER, which is owned by Affinity Labs of Texas.  Filed by Samsung, LG & HTC on January 31, 2014.

 20. IPR2014-00408 ((electronically filed) – U.S. Patent No. 8,359,007 entitled SYSTEM AND METHOD FOR COMMUNICATIONS MEDIA CENTER, which is owned by Affinity Labs of Texas.  Filed by Samsung, LG & HTC on January 31, 2014.  

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

 1.  CBM2014-00061 (electronically filed) – U.S. Patent No. 7,117,165 entitled OPERATING RESOURCE MANAGEMENT SYSTEM, which is owned by Ariba.  Filed by Coupa Software on January 28, 2014. 

 2.  CBM2014-00062 (electronically filed) – U.S. Patent No. 8,036,916 entitled METHOD OF OPTIMIZING HEALTHCARE SERVICES CONSUMPTION, which is owned by Quality Healthcare Intermediary.  Filed by CoreSource on January 28, 2014. 

 3.  CBM2014-00063 (electronically filed) – U.S. Patent No. 8,489,420 entitled METHOD OF OPTIMIZING HEALTHCARE SERVICES CONSUMPTION, which is owned by Quality Healthcare Intermediary.  Filed by CoreSource on January 28, 2014.

 4.  CBM2014-00064 (electronically filed) – U.S. Patent No. 8,161,104 entitled SYSTEM AND METHOD FOR VERIFYING DELIVERY AND INTEGRITY OF ELECTRONIC MESSAGES, which is owned by RPost Communications.  Filed by Experian Marketing Solutions on January 29, 2014. 

  The following ex parte reexamination requests were filed:

 1.  90/013,137 (electronically filed) – U.S. Patent No. 6,445,069 entitled ELECTROLESS NI/PD/AU METALLIZATION STRUCTURE FOR COPPER INTERCONNECT SUBSTRATE AND METHOD THEREFOR, which is owned by Flipchip International. Filed on January 27, 2014.

 2.  90/013,138 (electronically filed) – U.S. Patent No. 6,030,219 entitled DENTAL ATTACHMENT ASSEMBLY, which is owned by Zest IP Holdings. Filed on January 28, 2014.

 3.  90/013,139 (electronically filed) – U.S. Patent No. 6,299,447 entitled DENTAL ATTACHMENT ASSEMBLY, which is owned by Zest IP Holdings. Filed on January 28, 2014.

 4.  90/013,140 (electronically filed) – U.S. Patent No. 6,537,227 entitled METHOD AND EQUIPMENT FOR HUMAN-RELATED MEASURING, which is owned by Amer Sports Winter & Outdoor. Filed on January 29, 2014.  The ‘227 patent is asserted in two patent infringement actions.

 5.  90/013,141 (electronically filed) – U.S. Patent No. 8,323,737 entitled SEQUENTIAL CHEMICAL VAPOR DEPOSITION, which is owned by Asm International. Filed on January 30, 2014.

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