Mitsubishi Plastics Seeks Inter Partes Review of Lithium Battery Separator Patent, Among the Requests Week of March 17, 2014

| March 24, 2014

In January Celgard – a subsidiary of Polypore International – sued LG for infringement of U.S. Patent No. 6,432,586. The ‘586 patent broadly claims a separator for lithium batteries, that includes “a ceramic layer is adapted … to block dendrite growth and to prevent electronic shorting … .”  This case follows earlier infringement actions against Sumitomo and SKMitsubishi Plastics has now filed for inter partes review of Celgard’s ‘586 patent (see inter partes review Request No. (5)). 

Ericsson requested review of an Intellectual Ventures wireless patent, U.S. Patent No. 7,496,674, that IV has asserted against four telephone companies (see inter partes review Request No. (8)). The ‘674 patent has an unusually long and complex assignment history at the Patent Office. 

ZTE asserted a novel legal theory against a wireless device patent owned by InterDigital: the challenged claims are invalid, in part, because the claims of a related patent were found by the U.S. ITC to be invalid over similar art, see In the Matter of Certain Wireless Devices with 3GCapability and Components Thereof, USITC Inv. No. 337-TA-800, Comm’n Op. (Dec. 20, 2013) (see inter partes review Request No. (6)). 

And Oxford Nanopore won the Alacrity Prize last week by filing two inter partes review requests against nanopore patent, U.S. Patent No. 8,673,550, on the very day it issued (see inter partes review Request No. (3)). 

The following inter partes review requests were filed:

1.   IPR2014-00510 (electronically filed) – U.S. Patent No. 6,725,107 entitled LECTRONIC SCOREKEEPING DEVICE AND SYSTEM THEREFOR, which is owned by Hockeyline.   Filed by Stats LLC on March 17, 2014. The ‘107 patent is asserted in a patent infringement action styled Hockeyline Inc. v. STATS LLC, (Case No. 1:13-cv-1446 (S.D.N.Y.)).

2.   IPR2014-00511 (electronically filed) – U.S. Patent No. 8,534,497 entitled DISPENSING METHOD AND APPARATUS UTILIZING A SENSOR TO DETERMINE A TIME THAT A DISPENSING VALVE IS OPEN, which is owned by Prince Castle LLC. Filed by A.C. Dispensing Co. on March 17, 2014.

3.   IPR2014-00512, 00513 (electronically filed) – U.S. Patent No. 8,673,550 entitled MSP NANOPORES AND RELATED METHODS, which is owned by UAB Research Foundation and University of Washington, licensed to Illumina.  Filed by Oxford Nanopore on March 18, 2014.  

4.   IPR2014-00514, 00515, 00518, 00519 (electronically filed) – U.S. Patent No. 8,023,580 entitled, SYSTEM AND METHOD OF COMMUNICATION USING AT LEAST TWO MODULATION METHODS which is owned by Rembrandt Wireless.  Filed by Samsung on March 20, 2014. The ‘580 patent is asserted in a patent infringement action styled Rembrandt v. Samsung (Case No. 2:13-cv-00213 (E.D. Tex.)). 

5.   IPR2014-00524 (electronically filed) – U.S. Patent No. 6,432,586 entitled SEPARATOR FOR A HIGH ENERGY RECHARGEABLE LITHIUM BATTERY, which is owned by Celgard.  Filed by Mitsubishi Plastics on March 20, 2014. The ‘586 patent is asserted in three patent infringement actions styled Celgard, LLC v. Sumitomo Chemical Co., LTD, Case No. 3:13-cv-00122 (W.D.N.C.); Celgard, LLC v. SK Innovation Co., LTD, Case No. 3:13-cv-00254 (W.D.N.C.); and Celgard, LLC v. LG Chem, LTD at al., Case No. 3:14-cv-00043 (W.D.N.C.)). 

6.   IPR2014-00525 (electronically filed) – U.S. Patent No. 8,380,244 entitled DUAL MODE UNIT FOR SHORT RANGE, HIGH RATE AND LONG RANGE, LOWER RATE DATA COMMUNICATIONS, which is owned by InterDigital Technology. Filed by ZTE on March 21, 2014.  The ‘244 patent is asserted in three patent infringement actions styled InterDigital Commc’ns Inc. v. ZTE Corp., (Case No. 13-cv-00009-RGA (D. Del.)); InterDigital Commc’ns Inc. v. Nokia Corp., (Case No. 13-cv-00010-RGA (D. Del.)); and InterDigital Commc’ns Inc. v. Samsung Elec. Co. Ltd., (Case No. 13-cv-00011-RGA (D. Del.)).

7.   IPR2014-00526 (electronically filed) – U.S. Patent No. 8,156,236 entitled AUDIO-VIDEO DATA SWITCHING AND VIEWING SYSTEM, which is owned by Cascades Ventures.   Filed by NeuLion on March 20, 2014. The ‘236 patent is asserted in a patent infringement action styled Cascades Streaming Technologies v. Big Ten Network (Case No. 13-cv-21455 (N.D. Ill.)). 

8.   IPR2014-00527 (electronically filed) – U.S. Patent No. 7,496,674 entitled SYSTEM, METHOD, AND BASE STATION USING DIFFERENT SECURITY PROTOCOLS ON WIRED AND WIRELESS PORTIONS OF NETWORK, which is owned by Intellectual Ventures.  Filed by Ericsson on March 21, 2014. The ‘674 patent is asserted in four patent infringement actions styled Intellectual Ventures I LLC v. AT&T Mobility LLC et al., (Case No. 12-cv-193-LPS (D. Del.));  Intellectual Ventures I LLC v. Nextel Operations, Inc. et al., (Case No. 13-cv-1634-LPS (D. Del.));  Intellectual Ventures I LLC v. TMobile USA, Inc. et al., (Case No. 13-cv-1632-LPS (D. Del.)); and Intellectual Ventures I LLC v. United States Cellular Corp., (Case No. 13-cv-1636-LPS D. Del.)).

9.   IPR2014-00529, 00530 (electronically filed) – U.S. Patent No. 7,921,320 entitled, which is owned by Skyworks Solutions.  Filed by Kinetic Technologies on March 21, 2014. The ‘320 patent is asserted in two patent infringement actions styled in Skyworks Solutions, Inc. v. Kinetic Technologies, Inc. et al., (Case No. 1:13-cv-10655, (N.D. Cal.)); and Skyworks Solutions, Inc. v. Kinetic Technologies, Inc., (Case No. 3:14-cv-00010 (N.D. Cal.)).

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

1.   CBM2014-00095 (electronically filed) – U.S. Patent No. 8,313,023 entitled EXCHANGE OF NON-NEGOTIABLE CREDITS OF AN ENTITY’S REWARDS program for entity independent funds, which is owned by Loyalty Conversion Systems Corporation.  Filed by Delta Air on March 17, 2014.  The ‘023 patent is the subject of nine patent infringement actions in the Eastern District of Texas.

2.   CBM2014-00096 (electronically filed) – U.S. Patent No. 8,511,550 entitled GRAPHICAL USER INTERFACE FOR THE CONVERSION OF LOYALTY POINTS VIA A LOYALTY POINT WEBSITE, which is owned by Loyalty Conversion Systems Corporation.  Filed by Delta Air on March 17, 2014.  The ‘550 patent is the subject of seven patent infringement actions in the Eastern District of Texas. 

The following ex parte reexamination requests were filed:

1.   90/013,180 (electronically filed) – U.S. Patent No. 7,330,817 entitled SYSTEM AND METHODS FOR EMPLOYMENT LAW COMPLIANCE, ESTABLISHMENT, EVALUATION AND REVIEW, which is owned by Employment Law Compliance. Filed on March 13, 2014.

2.   90/013,182 (electronically filed) – U.S. Patent No. 6,292,547 entitled TELEPHONIC-INTERFACE STATISTICAL ANALYSIS SYSTEM, which is owned by GE. Filed on March 18, 2014.

3.   90/013,183 (electronically filed) – U.S. Patent No. 5,592,555 entitled WIRELESS COMMUNICATIONS PRIVACY METHOD AND SYSTEM, which is owned by Advanced Micro Devices. Filed on March 19, 2014.

4.   90/013,184 (electronically filed) – U.S. Patent No. 6,381,211 entitled PROCESSING DATA TRANSMITTED AND RECEIVED OVER A WIRELESS LINK CONNECTING A CENTRAL TERMINAL AND A SUBSCRIBER TERMINAL OF A WIRELESS TELECOMMUNICATIONS SYSTEM, which is owned by Wi-Lan. Filed on March 19, 2014.

5.   90/013,185 (electronically filed) – U.S. Patent No. D556,007 entitled HANDLE FOR ROTARY RATCHET TOOL, which is owned by Hung. Filed on March 20, 2014.

6.   90/013,187 (electronically filed) – U.S. Patent No. 6,374,180 entitled POINTS OF INTEREST FOR A NAVIGATION SYSTEM, which is owned by Beacon Navigation. Filed by BMW on March 21, 2014. The ‘180 patent is asserted in a patent infringement action styled Beacon Navigation v. BMW (Case No. 2:13-cv-11410 (E.D. Mich.)). 

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