Apple Seeks Inter Partes Review of Two VirnetX Patents, Among the Requests Week of March 3, 2014

Scott Daniels and Cindy Chen | March 11, 2014

The war between Apple and VirnetX expanded yet again with Apple requesting inter partes review of two VirnetX (see inter partes review Request Nos. (8) to (11)). 

 We reported last week that Intel had filed five inter partes review petitions against a single Zond patent.  This past week Intel filed two more petitions against another Zond patent (see inter partes review Request Nos., (6) & (7)). 

 

The following inter partes review requests were filed:

1.   IPR2014-00470 (electronically filed) – U.S. Patent No. 7,811,421 entitled HIGH DEPOSITION RATE SPUTTERING, which is owned by Zond.  Filed by on March 7, 2014 by Intel. The ‘421patent is asserted in an infringement action styled  Zond v. Intel, (Case No. 1:13-cv-11570-RGS (D. Mass.)); Zond v. AMD, Inc., et al (Case No. 1:13-cv-11577-DPW (D. Mass.)); Zond v. Toshiba Am. Elec. Comp. Inc.(Case No. 1:13-cv-11581-DJC (D. Mass.)); Zond v. SK Hynix, Inc.(Case No. 1:13-cv-11591-RGS (D. Mass.)); Zond v. Renesas Elec. Corp. (Case No. 1:13-cv-11625-NMG)); Zond v. Fujitsu, et al. (Case No. Co.1:13-cv-11634-WGY (D. Mass.)); and Zond v. Gillette, (Case No. 1:13-cv-11567-DJC (D. Mass.)).

2.   IPR2014-00472 (electronically filed) – U.S. Patent No. 7,096,358 entitled ENCRYPTING FILE SYSTEM, which is owned by Maz Encryption.  Filed by Oracle on March 3, 2014. The ‘358 patent is asserted in an infringement action styled MAZ Encryption Technologies LLC v. Apple Inc., (Case No. 1:13-cv-00299-LPS (D. Del.)).   

3.   IPR2014-00473 (electronically filed) – U.S. Patent No. 7,811,421 entitled HIGH DEPOSITION RATE SPUTTERING, which is owned by Zond.  Filed by on March 7, 2014 by Intel. The ‘421patent is asserted in an infringement action styled  Zond v. Intel, (Case No. 1:13-cv-11570-RGS (D. Mass.)); Zond v. AMD, Inc., et al (Case No. 1:13-cv-11577-DPW (D. Mass.)); Zond v. Toshiba Am. Elec. Comp. Inc.(Case No. 1:13-cv-11581-DJC (D. Mass.)); Zond v. SK Hynix, Inc.(Case No. 1:13-cv-11591-RGS (D. Mass.)); Zond v. Renesas Elec. Corp. (Case No. 1:13-cv-11625-NMG)); Zond v. Fujitsu, et al. (Case No. Co.1:13-cv-11634-WGY (D. Mass.)); and Zond v. Gillette, (Case No. 1:13-cv-11567-DJC (D. Mass.)).

4.   IPR2014-00475 (electronically filed) – U.S. Patent No. 7,631,191 entitled SYSTEM AND METHOD FOR AUTHENTICATING A WEB PAGE, which is owned by Secure Axcess.  Filed by EMC on March 4, 2014. The ‘191 patent is asserted in 17 infringement actions in the eastern District of Texas.

5.   IPR2014-00476 (electronically filed) – U.S. Patent No. 5,602,524 entitled DEVICE FOR MEASURING AIR PRESSURE IN PNEUMATIC TIRES, which is owned by Wasica.  Filed by Schrader on March 4, 2014. The ‘524 patent is asserted in two infringement actions styled Wasica Fin. GmbH et al v. Schrader Int’l, Inc., (Case No.: 1:13-cv-01353 (D. Del.)); and Wasica Fin. GmbH et al v. Continental Auto. Sys. US, Inc., (Case No.: 1:13-cv-01356 (D. Del.)).

6.   IPR2014-00477 (electronically filed) – U.S. Patent No. 8,125,155 entitled METHODS AND APPARATUS FOR GENERATING STRONGLY IONIZED PLASMAS, which is owned by Zond.  Filed by Gillette on March 4, 2014. The ‘patent is asserted in a patent infringement action styled Zond, Inc. v. The Gillette Co. and The Procter & Gamble Co., (Case No. 1:13-CV-11567-DJC (D. Mass. 2013)).

7.   IPR2014-00479 (electronically filed) – U.S. Patent No. 8,125,155 entitled METHODS AND APPARATUS FOR GENERATING STRONGLY IONIZED PLASMAS, which is owned by Zond.  Filed by Gillette on March 4, 2014. The ‘patent is asserted in a patent infringement action styled Zond, Inc. v. The Gillette Co. and The Procter & Gamble Co., (Case No. 1:13-CV-11567-DJC (D. Mass. 2013)).

8.   IPR2014-00481 (electronically filed) – U.S. Patent No. 7,188,180 entitled METHOD FOR ESTABLISHING SECURE COMMUNICATION LINK BETWEEN COMPUTERS OF VIRTUAL PRIVATE NETWORK, which is owned by VirnetX.  Filed by Apple on March 7, 2014. The ‘180 patent is asserted in infringement actions styled VirnetX Inc. et al. v. Microsoft Corp., (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.)).

9.   IPR2014-00482 (electronically filed) – U.S. Patent No. 7,188,180 entitled METHOD FOR ESTABLISHING SECURE COMMUNICATION LINK BETWEEN COMPUTERS OF VIRTUAL PRIVATE NETWORK, which is owned by VirnetX.  Filed by Apple on March 7, 2014. The ‘180 patent is asserted in infringement actions styled VirnetX Inc. et al. v. Microsoft Corp., (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.)).

10.  IPR2014-00483 (electronically filed) – U.S. Patent No. 7,987,274 entitled METHOD FOR ESTABLISHING SECURE COMMUNICATION LINK BETWEEN COMPUTERS OF VIRTUAL PRIVATE NETWORK, which is owned by VirnetX.  Filed by Apple on March 7, 2014. The ‘274 patent is asserted in an infringement action styled VirnetX Inc. et al. v. Microsoft Corp., (Case No. 6:13cv351 (E.D. Tex)).

11.  IPR2014-00484 (electronically filed) – U.S. Patent No. 7,987,274 entitled METHOD FOR ESTABLISHING SECURE COMMUNICATION LINK BETWEEN COMPUTERS OF VIRTUAL PRIVATE NETWORK, which is owned by VirnetX.  Filed by Apple on March 7, 2014. The ‘274 patent is asserted in an infringement action styled VirnetX Inc. et al. v. Microsoft Corp., (Case No. 6:13cv351 (E.D. Tex)).

12.  IPR2014-00487 (electronically filed) – U.S. Patent No. 8,361,156 entitled SYSTEMS AND METHODS FOR SPINAL FUSION, which is owned by NuVasive.  Filed by Medtronic on March 7, 2014. The ‘156 patent is asserted in a patent infringement action styled Warsaw v. NuVasive, (Case No. 3:12-cv-02738-CABMDD (S.D. Cal.)).

13.  IPR2014-00488 (electronically filed) – U.S. Patent No. 7,769,605 entitled MULTIPLE PATIENT MONITORING SYSTEM, which is owned by Robert Bosch Healthcare Systems.  Filed by on March 6, 2014. The ‘605 patent is asserted in a patent infringement action styled Robert Bosch Healthcare Systems, Inc. v. Cardiocom, LLC, and Abbott Diabetes Care, Inc., (Case No. 2:13-cv-349 (E.D. Tex.)).

14.  IPR2014-00489 (electronically filed) – U.S. Patent No. 5,910,988 entitled REMOTE IMAGE CAPTURE WITH CENTRALIZED PROCESSING AND STORAGE, which is owned by DataTreasury.  Filed by Fidelity National Information Services on March 6, 2014. The ‘988 patent is asserted in approximately 25 infringement actions. 

15.  IPR2014-00490 (electronically filed) – U.S. Patent No. 6,032,137 entitled REMOTE IMAGE CAPTURE WITH CENTRALIZED PROCESSING AND STORAGE, which is owned by DataTreasury.  Filed by Fidelity National Information Services on March 6, 2014. The ‘137 patent is asserted in approximately 25 infringement actions. 

16.  IPR2014-00491 (electronically filed) – U.S. Patent No. 5,910,988 entitled REMOTE IMAGE CAPTURE WITH CENTRALIZED PROCESSING AND STORAGE, which is owned by DataTreasury.  Filed by Fidelity National Information Services on March 6, 2014. The ‘988 patent is asserted in approximately 25 infringement actions.

17.  IPR2014-00492 (electronically filed) – U.S. Patent No. 8,171,553 entitled HEURISTIC BASED CAPTURE WITH REPLAY TO VIRTUAL MACHINE, which is owned by Fireeye.  Filed by Finjan on March 7, 2014.

 

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

1.   CBM2014-00079 (electronically filed) – U.S. Patent No. 7,698,196 entitled METHOD AND SYSTEM FOR MODELING AND BENCHMARKING PRIVATE EQUITY AND APPLICATIONS OF SAME which is owned by Capital Dynamics.  Filed by Cambridge Associates on March 3, 2014.  The ‘196 patent is the subject of a patent infringement action styled Capital Dynamics AG and Capital Dynamics, Inc. v. Cambridge Associates, LLC, (Case No. 1:13-cv-07766 (S.D.N.Y.)). 

2.   CBM2014-00082 (electronically filed) – U.S. Patent No. 5,664,110 entitled REMOTE ORDERING SYSTEM WHICH IS OWNED BY Cronos Technology.  Filed by Travelocity on March 6, 2014. 

 

The following ex parte reexamination requests were filed:

1.   90/013,170 (electronically filed) – U.S. Patent No. 5,629,982 entitled, SIMULTANEOUS ELECTRONIC TRANSACTIONS WITH VISIBLE TRUSTED PARTIES which is owned by DocuSign. Filed on March 4, 2014.

2.   90/013,171 (electronically filed) – U.S. Patent No. 6,052,565 entitled MOBILE COMMUNICATION TERMINAL APPARATUS WITH DATA COMMUNICATION FUNCTION, which is owned by Toshiba. Filed on March 4, 2014.

3.   90/013,172 (electronically filed) – U.S. Patent No. 8,477,431 entitled IMAGE CAPTURING LENS ASSEMBLY, which is owned by Largan Prcision. Filed on March 21, 2014.

4.   90/013,173 (electronically filed) – U.S. Patent No. 7,522,992 entitled TECHNIQUE FOR EFFECTIVE NAVIGATION BASED ON USER PREFERENCES which is owned by Silver State Intellectual Technologies. Filed on March 6, 2014.

5.   90/013,174 (electronically filed) – U.S. Patent No. 5,790,530 entitled MESSAGE PARSING MULTI PROCESSOR SYSTEM, which is owned by Electronics and Telecommunications Research Institute.  Filed on March 7, 2014.

6.   90/013,175 (electronically filed) – U.S. Patent No. 7,587,469 entitled AUDIO INSTRUCTIONS FOR APPLIANCES, which is owned by Robert Bosch Healthcare Systems. Filed on March 7, 2014. The ‘469 patent is asserted in an infringement action styled Robert Bosch Healthcare Systems, Inc. v. Cardiocom, LLC, and Abbott Diabetes Care, Inc., (Case No. 2:13-cv-349 (E.D. Tex.)).

 

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