More IPR Requests Filed against Intellectual Ventures’ Patents, Among the Requests Week of March 24, 2014

Scott Daniels and Cindy Chen | March 31, 2014

As Intellectual Ventures has begun to enforce its vast patent portfolio in court, more and more of IV’s targets are looking to the Patent Office for help.  This past week, Canon filed three IPR requests against a single IV patent (see inter partes review Request No. (6)). And Marvell Semiconductor attacked three IV patents that are the subject of infringement actions against Canon, Ricoh and Sendai Nikon (see inter partes review Request Nos. (15), (16) & (18)).

Ricoh, Xerox, and Lexmark International have requested inter partes review of two computer architecture-document management patents owned by MPHJ (see inter partes review Request Nos. (7) & (8)).  Several state attorneys general, including the New York Attorney General, the Minnesota Attorney General and the Vermont Attorney General have taken action against MPHJ’s alleged deceptive practices in asserting its patents. The two patents are the subject of five patent infringement actions in the Eastern District of Texas and the District of Delaware. MPHJ has also filed a complaint against the Federal Trade Commission (FTC) in response to FTC’s investigation of MPHJ for unfair or deceptive commercial acts or practices (MPHJ Technology Investments, LLC v. Federal Trade Commission (Case No. 6:13-cv-00011 (W.D. Tex.)).

We are also seeing a growing number IPR requests being filed jointly by multiple companies.  Last week, Google and Samsung teamed up to file requests against three Micrografx patents (see inter partes review Request Nos. (3), (4) & (5)).

The following inter partes review requests were filed:

1.   IPR2014-00520, IPR2014-00521, IPR2014-00522 and IPR2014-00523 (electronically filed) – U.S. Patent No. 7,604,716 entitled METHODS AND APPARATUS FOR GENERATING HIGH-DENSITY PLASMA, which is owned by Zond, Inc.  Filed by Intel Corporation on March 27, 2014. The ‘716 patent is involved in patent infringement actions styled Zond, Inc. v. Intel Corporation (Case No. 1:13-cv-11570-RGS (D. Mass.)); Zond, Inc. v. Toshiba Am. Elec. Comp., Inc. (Case No. 1:13-cv-11581-DJC (D. Mass.)); Zond, Inc. v. SK Hynix, Inc. (Case No. 1:13-cv-11591-RGS (D. Mass.)); Zond, Inc. v. Renesas Elec. Corp. (Case No. 1:13-cv-11625-NMG (D. Mass.)); and Zond, Inc. v. Gillette, Co. (Case No. 1:13-cv-11567-DJC (D. Mass.)).

2.   IPR2014-00531 (electronically filed) – U.S. Patent No. 8,484,741 entitled SOFTWARE SERVICE TO FACILITATE ORGANIZATIONAL TESTING OF EMPLOYEES TO DETERMINE THEIR POTENTIAL SUSCEPTIBILITY TO PHISHING SCAMS, which is owned by Chapman Technology Group, Inc.  Filed by PhishMe, Inc. on March 24, 2014.

3.   IPR2014-00532 (electronically filed) – U.S. Patent No. 5,959,633 entitled METHOD AND SYSTEM FOR PRODUCING GRAPHICAL IMAGES, which is owned by Micrografx, LLC.  Filed by Google, Inc. and Samsung Electronics Co., Ltd. on March 24, 2014. The ‘633 patent is involved in patent infringement actions styled Micrografx, LLC v. Google, Inc. and Motorola Mobility, LLC (Case No. 3:13-cv-03595-N (N.D. Tex.)); and Micrografx, LLC v. Samsung Telecommunications America, LLC, et al. (Case No. 3:13-cv-03599-N (N.D. Tex.)).

4.   IPR2014-00533 (electronically filed) – U.S. Patent No. 6,057,854 entitled SYSTEM AND METHOD OF PROVIDING INTERACTIVE VECTOR GRAPHICS OVER A NETWORK, which is owned by Micrografx, LLC.  Filed by Google, Inc. and Samsung Electronics Co., Ltd. on March 24, 2014.  The ‘854 patent is involved in patent infringement actions styled Micrografx, LLC v. Google, Inc. and Motorola Mobility, LLC (Case No. 3:13-cv-03595-N (N.D. Tex.)); and Micrografx, LLC v. Samsung Telecommunications America, LLC, et al. (Case No. 3:13-cv-03599-N (N.D. Tex.)).

5.   IPR2014-00534 (electronically filed) – U.S. Patent No. 6,552,732 entitled SYSTEM AND METHOD OF PROVIDING INTERACTIVE VECTOR GRAPHICS OVER A NETWORK, which is owned by Micrografx, LLC.  Filed by Google, Inc. and Samsung Electronics Co., Ltd. on March 24, 2014. The ‘732 patent is involved in patent infringement actions styled Micrografx, LLC v. Google, Inc. and Motorola Mobility, LLC (Case No. 3:13-cv-03595-N (N.D. Tex.)); and Micrografx, LLC v. Samsung Telecommunications America, LLC, et al. (Case No. 3:13-cv-03599-N (N.D. Tex.)).

6.   IPR2014-00535, IPR2014-00536, and IPR2014-00537 (electronically filed) – U.S. Patent No. 7,315,406 entitled SCANNING CIRCUIT STRUCTURE, which is owned by Intellectual Ventures I, LLC.  Filed by Canon, Inc. on March 25, 2014. The ‘406 patent is currently asserted in a patent infringement action styled Intellectual Ventures I, LLC and Intellectual Ventures II, LLC v. Canon, Inc. (Case No. 13-cv-473-SLR (D. Del.)).

7.   IPR2014-00538 (electronically filed) – U.S. Patent No. 8,488,173 entitled DISTRIBUTED COMPUTER ARCHITECTURE AND PROCESS FOR DOCUMENT MANAGEMENT, which is owned by MPHJ Technology Investments, LLC.  Filed by Ricoh Americas Corporation, Xerox Corporation, and Lexmark International, Inc. on March 25, 2014. The ‘173 patent is involved in five patent infringement litigations in the Eastern District of Texas and the District of Delaware.

8.   IPR2014-00539 (electronically filed) – U.S. Patent No. 7,477,410 entitled DISTRIBUTED COMPUTER ARCHITECTURE AND PROCESS FOR VIRTUAL COPYING, which is owned by MPHJ Technology Investments, LLC.  Filed by Ricoh Americas Corporation, Xerox Corporation, and Lexmark International, Inc. on March 25, 2014.  The ‘173 patent is involved in five patent infringement litigations in the Eastern District of Texas and the District of Delaware.

9.   IPR2014-00541 (electronically filed) – U.S. Patent No. 8,217,902 entitled CONDUCTOR PATTERN STRUCTURE OF CAPACITIVE TOUCH PANEL, which is owned by TPK Touch Solutions, Inc.  Filed by Wintek Corporation on March 26, 2014. The ‘902 patent is asserted in a patent infringement action styled TPK Touch Solutions, Inc. v. Wintek Corporation (Case No. 3:13-cv-2218 (N.D. Cal.)).

10.  IPR2014-00542 (electronically filed) – U.S. Patent No. D525,731 entitled TRUCK HEADLAMP, which is owned by Paccar, Inc.  Filed by Dorman Products, Inc. on March 26, 2014. The ‘731 design patent is involved in a patent infringement action styled Dorman Products, Inc. v. Paccar, Inc. (Case No. 2:13-cv-06383-JD (E.D. Pa.)).

11.   IPR2014-00543 (electronically filed) – U.S. Patent No. 8,036,988 entitled SYSTEM AND METHOD FOR PERFORMING SECURE CREDIT CARD TRANSACTIONS, which is owned by D’Agostino.  Filed by MasterCard International Incorporated on March 28, 2014. The ‘988 patent is asserted in a patent infringement action styled John D’Agostino v. MasterCard, Inc., et al. (Case No. 1:13-cv-00738 (D. Del.)).

12.  IPR2014-00544 (electronically filed) – U.S. Patent No. 7,840,486 entitled SYSTEM AND METHOD FOR PERFORMING SECURE CREDIT CARD PURCHASES, which is owned by D’Agostino.  Filed by MasterCard International Incorporated on March 28, 2014. The ‘486 patent is involved in a patent infringement action styled John D’Agostino v. MasterCard, Inc., et al. (Case No. 1:13-cv-00738 (D. Del.)).

13.  IPR2014-00545 (electronically filed) – U.S. Patent No. 7,916,906 entitled SYSTEM AND METHOD FOR PROVIDING A REAL-TIME, ONLINE BIOMETRIC SIGNATURE, which is owned by Signaturelink, Inc.  Filed by Cardinal Commerce Corp. on March 26, 2014.

14.  IPR2014-00546 (electronically filed) – U.S. Patent No. 8,405,147 entitled METHOD AND APPARATUS FOR USE IN IMPROVING LINEARITY OF MOSFETS USING AN ACCUMULATED CHARGE SINK, which is owned by RF Micro Devices, Inc.  Filed by Peregrine Semiconductor Corporation on March 28, 2014. The ‘147 patent is involved in a patent infringement action styled Peregrine Semiconductor Corporation v. RF Micro Devices, Inc. (Case No. 13-cv-0725-LAB-KSC (S.D. Cal.)).

15.  IPR2014-00547 (electronically filed) – U.S. Patent No. 6,977,944 entitled TRANSMISSION PROTECTION FOR COMMUNICATIONS NETWORKS HAVING STATIONS OPERATING WITH DIFFERENT MODULATION FORMATS, which is owned by Intellectual Ventures I, LLC.  Filed by Marvell Semiconductor on March 27, 2014. The ‘944 patent is involved in patent infringement litigations styled Intellectual Ventures I, LLC, et al. v. Canon, Inc., et al. (Case No. 1:13-cv-00473 (D. Del.)); Intellectual Ventures I, LLC, et al. v. Ricoh Company Ltd., et al. (Case No. 1:13-cv-00474 (D. Del.)); and Intellectual Ventures I, LLC, et al. v. AT&T Mobility, LLC, et al. (Case No. 1:12-cv-00193 (D. Del.)).

 16.  IPR2014-00548 (electronically filed) – U.S. Patent No. 5,712,870 entitled PACKET HEADER GENERATION AND DETECTION CIRCUITRY, which is owned by Intellectual Ventures I, LLC.  Filed by Marvell Semiconductor on March 27, 2014. The ‘870 patent is involved in patent infringement litigations styled Intellectual Ventures I, LLC, et al. v. Canon, Inc., et al. (Case No. 1:13-cv-00473 (D. Del.)); Intellectual Ventures I, LLC, et al. v. Ricoh Company Ltd., et al. (Case No. 1:13-cv-00474 (D. Del.)); and Intellectual Ventures I, LLC, et al. v. Sendai Nikon Corporation, et al. (Case No. 1:11-cv-01025 (D. Del.)).

17.  IPR2014-00551 (electronically filed) – U.S. Patent No. RE44,453 entitled HUMIDIFIER WITH STRUCTURE TO PREVENT BACKFLOW OF LIQUID THROUGH THE HUMIDIFIER INLET, which is owned by Resmed Limited.  Filed by APEX Medical Corp. on March 27, 2014. The ‘453 patent is asserted in patent infringement actions styled Resmed, Inc. v. APEX Medical Corporation (Case No. 8:13-cv-00498 (C.D. Cal.)); and Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof (Inv. No. 337-TA-879 (USITC)).

18.  IPR2014-00552 & IPR2014-00553 (electronically filed) – U.S. Patent No. 6,754,195 entitled WIRELESS COMMUNICATION SYSTEM CONFIGURED TO COMMUNICATE USING A MIXED WAVEFORM CONFIGURATION, which is owned by Intellectual Ventures I, LLC.  Filed by Marvell Semiconductor on March 27, 2014. The ‘195 patent is involved in patent infringement litigations styled Intellectual Ventures I, LLC, et al. v. Canon, Inc., et al. (Case No. 1:13-cv-00473 (D. Del.)); Intellectual Ventures I, LLC, et al. v. Ricoh Company Ltd., et al. (Case No. 1:13-cv-00474 (D. Del.)); and Intellectual Ventures I, LLC, et al. v. Sendai Nikon Corporation, et al. (Case No. 1:11-cv-01025 (D. Del.)).

19.  IPR2014-00555 (electronically filed) – U.S. Patent No. D526,429 entitled SURFACE CONFIGURATION OF TRUCK HEADLAMP, which is owned by Paccar, Inc.  Filed by Dorman Products, Inc. on March 28, 2014. The ‘429 design patent is involved in a patent infringement action styled Dorman Products, Inc. v. Paccar, Inc. (Case No. 2:13-cv-06383-JD (E.D. Pa.)).

20.  IPR2014-00557 (electronically filed) – U.S. Patent No. 8,135,398 entitled METHOD AND APPARATUS FOR MULTIMEDIA COMMUNICATIONS WITH DIFFERENT USER TERMINALS, which is owned by Sellerbid, Inc.  Filed by Samsung Electronics Co., Ltd. on March 28, 2014. The ‘398 patent is involved in a patent infringement action styled Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., et al. (Case No. 2:12-cv-00538-MSD-DEM (E.D. Va.)). The ‘398 patent is also involved in an inter partes review proceeding directed to a different combination of the claims (see IPR2013-00571). That inter partes review has been instituted.

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

1.   CBM2014-00097 (electronically filed) – U.S. Patent No. 8,346,894 entitled REAL-TIME WEB TRANSACTIONS FROM WEB APPLICATIONS, which is owned by Pi-Net International, Inc.  Filed by Home Depot USA, Inc., Staples, Inc., and Edible Arrangements International, LLC on March 26, 2014. The ‘894 patent is involved in at least 29 patent infringement actions in the Eastern District of Texas and the District of Delaware.

2.   CBM2014-00100 (electronically filed) – U.S. Patent No. 7,631,191 entitled SYSTEM AND METHOD FOR AUTHENTICATING A WEB PAGE, which is owned by Secure Axcess, LLC.  Filed by PNC Bank, N.A. on March 28, 2014. The ‘191 patent is asserted in 18 patent infringement actions in the Eastern District of Texas.

3.   CBM2014-001-2 (electronically filed) – U.S. Patent No. 8,118,221 entitled DATA STORAGE AND ACCESS SYSTEMS, which is owned by SmartFlash, LLC.  Filed by Apple, Inc. on March 28, 2014. The ‘221 patent is asserted in a patent infringement action styled Smartflash, LLC v. Apple, Inc., et al. (Case No. 6:13-cv-00447 (E.D. Tex.)).

The following ex parte reexamination requests were filed:

1.   90/013,188 (electronically filed) – U.S. Patent No. 7,406,955 entitled METHOD AND SYSTEM FOR LIQUID FUEL CONDITIONING, which is owned by Ultimate Combustion Company. Filed on March 27, 2014.

2.   90/013,189 (electronically filed) – U.S. Patent No. 8,300,863 entitled HEARING DEVICE AND METHOD FOR A WIRELESS RECEIVING AND/OR SENDING OF DATA, which is owned by Oticon A/S. Filed on March 25, 2014.

3.   90/013,190 (electronically filed) – U.S. Patent No. 7,913,526 entitled MULTIPLE FUNCTION LOCK, which is owned by Stanton Concepts, LLC. Filed on March 28, 2014. The ‘526 patent is currently asserted in patent infringement actions styled Stanton Concepts, LLC v. Brookstone, Inc., et al. (Case No. 3:13-cv-03670-MLC-LHG (D.N.J.)); and Fullyear Brother Enterprise Co., Ltd. v. Stanton Concepts, LLC (Case No. 1:13-cv-01364-ABJ (D.N.J.)).

4.   90/013,191 (electronically filed) – U.S. Patent No. 6,579,899 entitled COMPOSITION FOR TREATMENT OF STRESS, which is owned by Massachusetts Institute of Technology, and licensed to National Institute of Health. Filed by Massachusetts Institute of Technology on March 26, 2014.

5.   90/013,192 (electronically filed) – U.S. Patent No. 8,479,946 entitled PORTABLE DRIP CONTAINMENT DEVICE APPARATUS AND METHOD, which is owned by Matson, Inc. Filed by Cowboy Containments, Inc. on March 26, 2014. The ‘946 patent is involved in a patent infringement action styled Matson, Inc. v. Cowboy Containments, Inc. (Case No. 3:13-cv-03957 (N.D. Tex.)).

6.   90/013,193 (electronically filed) – U.S. Patent No. 7,043,450 entitled PAID SEARCH ENGINE BID MANAGEMENT, which is owned by Paid Search Engine Tools, LLC. Filed on March 28, 2014.

 

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