Uncategorized : US PTO Litigation Alert™

Inter Partes Review Requested for Two Planet Blue Lip Sync Patents, Week of November 25, 2013

Scott Daniels and Cindy Chen | December 2, 2013

Video game-maker Naught Dog, Inc., a wholly owned subsidiary of Sony Computer Entertainment, has requested inter partes review of U.S. Patent Nos. 6,611,278 and 6,307,576 that claim methods for lip synching sound with the facial expressions of animated characters (see inter partes review Request Nos. (3) & (4)).  The owner of the patents, Planet Blue, has sued Naughty Dog for infringement.  Planet Blue’s infringement action has been consolidated, along with fourteen other cases, into McRO, Inc. v. Namco Bandai Games America, Inc. (Case No. 2:12-cv-10322-GW-FFMx (C.D. Cal.)). Planet Blue has also asserted the ‘278 and ‘576 patents against Sony Computer Entertainment in a patent infringement action styled McRO, Inc. d/b/a Planet Blue v. Sony Computer Entertainment America, LLC and SCE Santa Monica Studio, Inc. (Case No. 1:12-cv-01514-LPS (D. Del.)); and against Sucker Punch Productions in an action styled McRO, Inc. d/b/a Planet Blue v. Sucker Punch Productions, LLC (Case No. 1:12-cv-01515-LPS (D. Del.)).  These infringement actions have not made much progress, and Respondents’ motions to stay pending completion of the inter partes reviews seem likely to be granted.


Inter partes review was also requested for another Intellectual Ventures II patent, this time by Toshiba (see inter partes review Request No. (7)).  This past March, Intellectual Ventures I & II sued Toshiba for infringement of the patent, plus nine other patents, related to computer bus interfaces for use in hard disk drives.
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IPO Hosts Two Post-Grant Webinars, this Wednesday and Next

Scott Daniels | August 26, 2013

Pamela Sherrid, who hosts Intellectual Property Owners Association’s excellent series of legal webinars, is offering a session this week and one next week on post-grant proceedings and parallel infringement litigation.  The fee is $120 per user per webinar and requires registration at ipo.org/IPChatChannel.

I will let her description of the events speak for itself:

Wednesday August 28 – 2 PM ET

Versata v. SAP and Fresenius v. Baxter:
Res Judicata and Estoppel in Post-grant Proceedings and Concurrent Litigation


Bernard Knight, USPTO 

Jeffrey Kushan, Sidley Austin 

Scott Daniels, Westerman Hattori Daniels & Adrian

The panel on August 28 in Versata v. SAP and Fresenius v. Baxter: Res Judicata and Estoppel in Post-grant Proceedings and Concurrent Litigation, will examine what happens when the PTAB and the Federal Circuit come to different conclusions about the same patent at different times. Our panel will consider the procedural stance of the two named cases, enumerate other conflicting situations that are likely to emerge, and discuss what legal principles will prevail to solve the resulting conundrums.

Wednesday September 4 – 2 PM ET

Filing a Post-grant Proceeding

 with Concurrent Litigation:
Strategic Considerations


Erika Arner, Finnegan 

Dion Bregman, Morgan Lewis 

Juliana Mirabilio, Oracle 

Figuring out all implications of Filing a Post-grant Proceeding with Concurrent Litigation, is no easy task, and being surprised by a twist or turn could result in a litigation disaster. For instance, claim construction arguments must be coordinated between the two venues. The panel of the September 4 webinar on Strategic Considerations will consider the key issues of stays, estoppel, claim construction and settlement.

Announcing WHDA’s free app for iPhone, iPad and iPod touch

WHDA Blogging Team | April 3, 2012

We interrupt our normal posting to make an exciting announcement!  WHDA has just released “WHDA Connect”—a free app for iPhone, iPad and iPod touch.  With it you can:

*Read our blogs about the latest patent and trademark news, with optional push notifications. Non-native English speakers will find the built-in dictionary helpful – activated when you tap-and-hold a word (requires iOS 5.0+).

*Get simple access to the most powerful IP resources on the web, such as databases of major world patent offices.

*Learn more about our services and skill sets.

*Access our directory of professionals.

*Call or email our professionals with just a tap.

*Simplify visits to our offices with GPS-guided directions.

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