IBM Targets Data-Processing Patents in IPR Requests, Week of December 10, 2012

| December 17, 2012

IBM is the perennial winner in obtaining U.S. patents, but rarely appears in patent litigation. So it was noteworthy last year when Financial Systems Technology (Intellectual Property) Pty. Ltd. sued IBM in the Northern District of Illinois for infringement of two data-processing patents. IBM has now replied to that accusation by requesting inter partes review of those patents (see inter partes review Request Nos. (3) & (4)).

Chris Holman reports in his eponymous Holman’s Biotech IP Blog (http://holmansbiotechipblog.blogspot.com/2012/11/jury-finds-abis-sale-of-dna-sequencing.html) that Enzo Biochem won a $48,587,500 verdict last month against Applied Biosystems for infringement U.S. Patent No. 5,449,767. The ‘767 patent claims chemical compounds that are used in DNA analysis. An ex parte reexamination request (90/012,061) was filed against Enzo’s ‘767 patent at the end of last year. A non-final Action issued in July rejecting several of ‘767 claims as being anticipated by two prior art references. Enzo has replied to that rejection with a substantial expert declaration that challenges the PTO’s understanding of the prior art references. Last week a new reexamination request was filed against the ‘767 patent (see ex parte Request No. (4)). There is little detail yet available regarding the new request, but it might be an attempt by Enzo’s competitors to contradict Enzo’s arguments in the first reexamination.

Inter partes review was requested by Oracle against a Clouding IP patent for accessing data remotely (see inter partes review Request No. (1)). Oracle is just one of a number of Internet/software companies that has been sued for infringement of the Clouding IP patent.

The following inter partes review requests were filed:

(1) IPR2013-00075 (electronically filed) – U.S. Patent No. 6,925,481 entitled TECHNIQUE FOR ENABLING REMOTE DATA ACCESS AND MANIPULATION FROM A PERVASIVE DEVICE and owned by Clouding IP, LLC. Filed December 10, 2012 by Oracle. The ‘481 patent is currently the subject of a litigation styled Clouding IP, LLC v. Oracle, Corp. (Case No. 1:12-cv-00642 (D. Del.)); Clouding IP, LLC v. Dow Jones & Company Inc. (Case No. 1:12-cv-01640-UNA (D. Del.)); Clouding IP, LLC v. Motorola Mobility Holdings Inc. et al. (Case No. 1:12-cv-01078-UNA (D. Del.)); Clouding IP, LLC v. Rackspace Hosting (Case No. 1:12-cv-00675 (D. Del.)); Stec IP v. Microsoft (Case No. 1:12-cv-00640-UNA (D. Del.)); Stec IP v. Apple, Inc. (Case No. 1:12-cv-00638-UNA (D. Del.)).

(2) IPR2013-00074 (electronically filed) – U.S. Patent No. 8,073,557 entitled MOTION CONTROL SYSTEMS and owned by ROY-G-BIV Corporation. Filed December 12, 2012 by ABB Inc. The ‘557 patent is currently the subject of a litigation styled ROY-G-BIV Corporation v. ABB Inc. et al. (Case No. 6:11-cv-00622-LED (E.D. Tex.)). In early November, ABB requested inter partes review of another patent (U.S. Patent No. 6,516,236) that was asserted in the litigation.

(3) IPR2013-00078 (electronically filed) – U.S. Patent No. RE40,526 entitled DATA PROCESSING SYSTEM AND METHOD FOR RETRIEVING AND [SIC] ENTITY SPECIFIED IN A SEARCH PATH RECORD FROM A RELATIONAL DATABASE and owned by Financial Systems Technology (Intellectual Property) Pty. Ltd. Filed December 12, 2012 by IBM. The ‘526 patent is currently the subject of a litigation styled Financial Systems Technology (Intellectual Property) Pty. Ltd. et al. v. International Business Machines Corp. (Case No. 1:11-cv-08729 (N.D. Ill.)).

(4) IPR2013-00079 (electronically filed) – U.S. Patent No. RE40,520 entitled EASILY EXPANDABLE DATA PROCESSING SYSTEM AND METHOD and owned by Financial Systems Technology (Intellectual Property) Pty. Ltd. Filed December 13, 2012 by IBM. The ‘520 patent is currently the subject of a litigation styled Financial Systems Technology (Intellectual Property) Pty. Ltd. et al. v. International Business Machines Corp. (Case No. 1:11-cv-08729 (N.D. Ill.)).

The following ex parte requests were filed:

(1) 90/012,735 (electronically filed) – U.S. Patent No. 7,771,710 entitled NOVEL POWDERED POLYMER, METHOD FOR ITS PREPARATION, AND USE AS A THICKENER and owned by Societe D’Exploitation de Produits pour les Industries Chimiques. Filed December 10, 2012.

(2) 90/012,736 (electronically filed) – U.S. Patent No. 7,176,654 entitled METHOD AND SYSTEM OF CHARGING MULTI-CELL LITHIUM-BASED BATTERIES and owned by Milwaukee Electric Tool Corporation. Filed December 12, 2012.

(3) 90/012,737 (electronically filed) – U.S. Patent No. 7,323,847 entitled METHOD AND SYSTEM OF CHARGING MULTI-CELL LITHIUM-BASED BATTERIES and owned by Milwaukee Electric Tool Corporation. Filed December 12, 2012.

(4) 90/012,738 (electronically filed) – U.S. Patent No. 5,449,767 entitled MODIFIED POLYNUCLEOTIDES AND METHODS OF PREPARING SAME and owned by Yale University. Filed December 13, 2012. The ‘767 patent is the subject of an infringement action styled Enzo Bicohem v. Appelera (Case No. 04-cv-929 (D. Conn.)).

(5) 90/012,739 (electronically filed) – U.S. Patent No. 8,014,540 entitled REMOTE CONTROL INTERFACE FOR REPLACEMENT VEHICLE STEREOS and owned by AAMP of America. Filed December 14, 2012, likely by Metra Electronics. The ‘540 patent is the subject of an infringement action styled AAMP v. Metra Electronics (Case No. 8:11-cv-2439 (M.D. Fla.)).

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