Page limits, believe it or not, continue to be an important issue for validity challenges at the Patent Office – how does a petitioner, that has lots of prior art to assert, deal with the 60-page limit on inter partes review requests? For Ford, Honda, BMW and Nissan, it was to file five separate IPR requests against a single car-display patent owned by Vehicle Operation Technologies (see inter partes review request No. (7)). For Motorola it was to rely on the old stand-by, ex parte reexamination. Last Monday it filed a 330-page request against an Intellectual Ventures patent (see ex parte request No. (4)). For good measure, Motorola filed ex parte requests against two other IV patents (see ex parte request Nos. (5) & (6)).
An unknown party requested ex parte reexamination of AbbVie’s recently issued U.S. Patent No. 8,674,112 that claims a crystalline polymorph of ritonavir (see ex parte reexamination request No. (13). Ritonavir is known for inhibiting of HIV protease. IPRs continue to be popular, but only ex parte reexamination affords anonymity to the requester.
Automobile patents ranked highly in terms of the number of new IPR filings last week. Ford requested inter partes review of three hybrid vehicle patents owned by Paice and Abell (see inter partes review Request Nos. (9), (10) & (11)). Paice has sued Ford and Hyundai for infringement of the patents in Maryland. And Chrysler and Nissan teamed up to attack three Norman IP Holdings patents (see inter partes review Request Nos. (3), (6) & (7)).
Apple filed eleven post-grant review petitions against six Smartflash data storage and access patents (see covered business method review Request Nos. (1) through (6)).
More IPR Requests Filed against Intellectual Ventures’ Patents, Among the Requests Week of March 24, 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)).
Mitsubishi Plastics Seeks Inter Partes Review of Lithium Battery Separator Patent, Among the Requests Week of March 17, 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 SK. Mitsubishi 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)).
Motorola Mobility Attacks Five Intellectual Ventures Patents, Among the Requests Week of March 10, 2014
Intellectual Ventures has at least two infringement actions pending against Google subsidiary Motorola Mobility, one in Florida and one in Delaware. This past week Motorola struck back by requesting inter partes review of three of the IV patents-in-suit (see inter partes review Requests (3), (4) & (5)) and post-grant review of two other IV business method patents (see covered business method post-grant review Request Nos. (2) & (3)).
Intel continues to go after Zond, filing five inter partes review requests against a single Zond patent plasma generation patent (see inter partes review Request Nos. (2)).
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)).
Intel Files Five IPR Requests against Single Zond Patent, Among the Requests the Weeks of February 17 & 24, 2014
The 60-page limit for IPR petitions continues to plague filers. This difficulty is increased greatly by the rigorous detail with which the challenged patent claims must be applied to the asserted prior art, particularly where the proposed ground is one of obviousness. A few filers are now resorting to multiple petitions to accommodate their arguments – most notable among these is Intel which filed five petitions last week against a single patent owned by Zond and claiming a vapor phase deposition device for making semiconductors (see inter partes Review Request No. (5)). Zond has sued Intel, Toshiba and Fujitsu for infringement of the patent.
Despite the wide enthusiasm for inter partes review, ex parte reexamination continues to be popular in some quarters. For instance, Volkswagen filed requests against four Cloud Farm Associates patents claiming tilt control for cars (see ex parte Request Nos. (3), (5), (6) & (7)). VW clearly chose ex parte reexamination to take advantage of the unlimited page-length for such requests – one request ran to 260 pages. And an undisclosed party took advantage of the anonymity of ex parte reexamination by filing requests against two Apple instant messaging patents (see ex parte Request Nos. (1) & (11)).
Last year Polliwalks, Inc. sued Crocs and Kohl’s for infringing two patents – U.S. Patent Nos. 8,371,043 & 8,371,044 – by selling “Crocs Crocskin Clogs.” Those patents claim shoes in which “the sole, and the upper which includes the sides, toe portion and the three-dimensional animal or character figure having the one or more features are a single piece substantially formed from a molded material,” and having the following exemplary embodiment:
Crocs has now replied by petitioning for inter partes review of the ‘043 patent, plus review of a third patent, U.S. Patent No. 8,613,148 (see inter partes review Request Nos. (2) & (3)). No request has yet been filed against the ‘044 patent.
Post-grant review petitions continue to be filed against “covered business method” patents with some asserted link to financial services. Last week saw petitions filed by Indeed, Inc. and Monster Worldwide against three Career Destination Development patents (see post-grant review Request Nos. (1), (2) & (3)). The petitions take advantage of the broad scope of post-grant review: two patents were challenged for failing to claim patentable subject matter under 35 U.S.C. § 101, and one patent, for failing to comply with the requirements of 35 U.S.C. § 112.
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.
Anonymous Ex Parte Reexamination Sought against Carnegie Mellon Signal Patents, Among the Requests Week of January 21, 2014
An undisclosed party requested ex parte reexamination of Carnegie Mellon’s U.S. Patent Nos. 6,438,180 and 6,201,839 last Tuesday (see ex parte reexamination Request Nos. (1) & (2)). The ‘180 and ‘839 patents claim methods and receivers related to “signal detectors in magnetic recordings.” In 2012, a jury found the patents to be valid and willfully infringed by Marvell Technology, and awarded Carnegie $1.169 billion in damages.
Post-trial motions, of course, were filed, and earlier this month the trial judge denied a motion by Marvell based on a laches defense. The judge agreed with Marvell that Carnegie had waited too long to sue, but also found that the inequity of Marvell’s willful infringement offset the inequity of Carnegie’s nearly six-year delay in suing . The judge therefore denied Marvell’s motion, concluding with everyone’s favorite bromide from law school: “He who seeks equity must do equity.”
Marvell has promised to appeal the validity finding at the trial court level – and since a final judgment may be years away, Marvell may yet be saved from the billion dollar verdict by the reexamination requests.