Unified Patents Adopts Earlier Inter Partes Review Requests, Week of September 16, 2013

| September 23, 2013

An interesting inter partes review request was filed by Unified Patents last week against Clouding IP’s U.S. Patent No. 6,738,799 (see inter partes review Request No. (2)).  Oracle had filed two inter partes review petitions against the ‘799 patent, that were later terminated by the Patent Office on the basis of a settlement agreement Oracle and Clouding IP.  On Monday Unified essentially refiled Oracle’s petitions against the ‘799 patent.  Unified explained that the “instant petition challenges the same claims under the same grounds on which the PTAB instituted trial in the IPR-073 petition.  The instant petition also includes an additional ground from the IPR-261 petition that directly refutes the arguments that the Patent Owner made to distinguish its claims in the IPR-073 petition.”  (Emphasis in original).

Clouding IP has sued a number of Internet companies for infringement of the ‘799 patent, including EMC, Verizon, Amazon.com, and Google.  Unified’s tactic of copying Oracle’s petitions is similar to the recent approach of major companies that have replied to infringement lawsuits by joining together in inter partes reviews of those patents.  We expect to see this trend – of one company stepping into the shoes of another company in an inter partes review proceeding – to accelerate.

Unified Patents describes itself as existing

to address the NPE (Non-Practicing Entity) litigation problem that is plaguing both large and small operating companies in various technology sectors. Unified Patents employs a unique, multi-faceted NPE-deterrent solution that is deployed on a technology-by-technology basis. Unified groups startups, small and medium-sized businesses, and large companies in protected technologies, called Micro-Pools and then fiercely defends those Micro-Pools from NPE encroachment. 

Samsung petitioned for inter partes review of a semiconductor patent owned by Boston University (see inter partes review Request No. (6)). BU has sued 11 companies for infringement of the patent, including Apple whose iPhone5, iPad and MacBook are accused of containing infringing components.

Yamaha requested inter partes review of four Internet patents owned by Black Hills Media (see inter partes review Request Nos. (7), (8), (11) & (12)).  The patents are currently the subject matter of a number of District Court infringement actions, including Black Hills Media, LLC v. Yamaha Corp. of America (Case No. 2:13-cv-06054 (C.D. Cal.)); Black Hills Media, LLC v. LG Electronics, Inc., et al. (Case No. 1:13-cv-00803 (D. Del.)); and Black Hills Media, LLC v. Samsung Electronics Co., Ltd., et al. (Case No. 2:13-cv-00379 (E.D. Tex.)). The ‘952 patent is also asserted in a Section 337 action at the U.S. International Trade Commission against LG, Sharp, Toshiba, Panasonic, and Samsung (see In re Certain Digital Media Devices, Including Telecisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (Inv. No. 337-TA-882 (USITC))).

An anonymous ex parte reexamination request was filed against a Pragmatus patent that claims ways of accessing media files (see ex parte Request No. (2)).  Pragmatus, who obtained the patent from Intellectual Ventures Fund 61 LLC, is pursuing an infringement action in the Northern District of California against Facebook and others.

Finally, last week saw three new covered business method petitions filed.

The following inter partes review requests were filed:

(1)               IPR2013-00582 & IPR2013-00583 (electronically filed) – U.S. Patent No. RE41,251 entitled SYNTHETIC BIOMATERIAL COMPOUND OF CALCIUM PHOSPHATE PHASES PARTICULARLY ADAPTED FOR SUPPORTING BONE CELL ACTIVITY and owned by Warsaw Orthopedic, Inc. Filed September 16, 2013, by Baxter Healthcare Corp. The ‘251 patent is currently the subject matter of a litigation styled Millenium Biologix, LLC v. Baxter Healthcare Corp., et al. (Case No. 1:13-cv-03084 (N.D. Ill.)).

(2)               IPR2013-00586 (electronically filed) – U.S. Patent No. 6,738,799 entitled METHODS AND APPARATUSES FOR FILE SYNCHRONIZATION AND UPDATING USING A SIGNATURE LIST and owned by Clouding IP, LLC. Filed September 16, 2013, by Unified Patents, Inc. The ‘799 patent is currently the subject matter of several district court litigations, including Clouding IP, LLC v. EMC Corp., et al. (Case No. 1:13-cv-01455 (D. Del.)); Clouding IP, LLC v. Verizon, Inc. (Case No. 1:13-cv-01458 (D. Del.)); Clouding IP, LLC v. Amazon.com, Inc. (Case No. 1:12-cv-00641 (D. Del.)); and Clouding IP, LLC v. Google, Inc. (Case No. 1:12-cv-00639 (D. Del.)).

(3)               IPR2013-00587 (electronically filed) – U.S. Patent No. 6,542,673 entitled IDENTIFIER SYSTEM AND COMPONENTS FOR OPTICAL ASSEMBLIES and owned by Cirrex Systems, LLC. Filed September 18, 2013, by Illumina, Inc. The ‘673 patent is currently the subject matter of a litigation styled Cirrex Systems, LLC v. Illumina, Inc. (Case No. 1:13-cv-00336-MPT (D. Del.)).

(4)               IPR2013-00588 (electronically filed) – U.S. Patent No. 8,135,250 entitled FACILE PRODUCTION OF OPTICAL COMMUNICATION ASSEMBLIES AND COMPONENTS and owned by Cirrex Systems, LLC. Filed September 18, 2013, by Illumina, Inc. The ‘250 patent is currently the subject matter of a litigation styled Cirrex Systems, LLC v. Illumina, Inc. (Case No. 1:13-cv-00336-MPT (D. Del.)).

(5)               IPR2013-00589 (electronically filed) – U.S. Patent No. 8,363,992 entitled FACILE OPTICAL ASSEMBLIES AND COMPONENTS and owned by Cirrex Systems, LLC. Filed September 18, 2013, by Illumina, Inc. The ‘992 patent is currently the subject matter of a litigation styled Cirrex Systems, LLC v. Illumina, Inc. (Case No. 1:13-cv-00336-MPT (D. Del.)).

(6)               IPR2013-00592 (electronically filed) – U.S. Patent No. 5,686,738 entitled HIGHLY INSULATING MONOCRYSTALLINE GALLIUM NITRIDE THIN FILMS and owned by Trustees of Boston University. Filed September 18, 2013, by Samsung. The ‘738 patent is currently the subject matter of at least eleven litigations, including Trustees of Boston University v. Samsung Electronics, Co., Ltd. (Case No. 1:13-CV-10659 (D. Mass.)); Trustees of Boston University v. Apple, Inc. (Case No. 1:13-CV-1575 (D. Mass.)); Trustees of Boston University v. LG Innotek USA, Inc. (Case No. 1:13-CV-11831 (D. Mass.)); Trustees of Boston University v. Amazon.com, Inc. (Case No. 1:13-CV-11097 (D. Mass.)) Trustees of Boston University v. Canon. (Case No. 1:13-CV-12321 (D. Mass.)); Trustees of Boston University v. Acer (Case No. 1:13-CV-12325 (D. Mass.)); Trustees of Boston University v. AOC (Case No. 1:13-CV-12326 (D. Mass.)); Trustees of Boston University v. ASUSTek (Case No. 1:13-CV-12327 (D. Mass.)); Trustees of Boston University v. BenQ (Case No. 1:13-CV-12328 (D. Mass.)); and Trustees of Boston University v. Blackberry (Case No. 1:13-CV-12329 (D. Mass.)).

(7)               IPR2013-00593 (electronically filed) – U.S. Patent No. 8,045,952 entitled METHOD AND DEVICE FOR OBTAINING PLAYLIST CONTENT OVER A NETWORK and owned by Black Hills Media, LLC. Filed September 18, 2013, by Yamaha Corporation of America. The ‘952 patent is currently the subject matter of a number of district court litigations, including Black Hills Media, LLC v. Yamaha Corp. of America (Case No. 2:13-cv-06054 (C.D. Cal.)); Black Hills Media, LLC v. LG Electronics, Inc., et al. (Case No. 1:13-cv-00803 (D. Del.)); and Black Hills Media, LLC v. Samsung Electronics Co., Ltd., et al. (Case No. 2:13-cv-00379 (E.D. Tex.)). The ‘952 patent is also asserted in a Section 337 action at the U.S. International Trade Commission against LG, Sharp, Toshiba, Panasonic, and Samsung (see In re Certain Digital Media Devices, Including Telecisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (Inv. No. 337-TA-882 (USITC))).

(8)               IPR2013-00594 (electronically filed) – U.S. Patent No. 8,050,652 entitled METHOD AND DEVICE FOR AN INTERNET RADIO CAPABLE OF OBTAINING PLAYLIST CONTENT FROM A CONTENT SERVER and owned by Black Hills Media, LLC. Filed September 18, 2013, by Yamaha Corporation of America.  (See Request No. (7) above).

(9)               IPR2013-00595 (electronically filed) – U.S. Patent No. 7,568,628 entitled BAR CODE READING DEVICE WITH GLOBAL ELECTRONIC SHUTTER CONTROL and owned by Hand Held Products, Inc. Filed September 20, 2013, by Fujian Newland Computer, Co., Ltd.

(10)           IPR2013-00596 (electronically filed) – U.S. Patent No. 7,802,310 entitled CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM and owned by PersonalWeb Technologies, LLC. Filed September 18, 2013, by Apple. The ‘310 patent is currently the subject matter of a litigation styled PersonalWeb Technologies, LLC and  Level 3 Communications., LLC v. Apple Inc. (Case No. 6:12-cv-00660-LED (E.D. Tex.)). PersonalWeb Technologies has also asserted the ‘310 patent against other defendants, including Google, NetApp, Amazon.com, and Facebook, in a host of litigations in the district courts of Texas and California.

(11)           IPR2013-00597 (electronically filed) – U.S. Patent No. 8,230,099 entitled SYSTEM AND METHOD FOR SHARING PLAYLISTS and owned by Black Hills Media, LLC. Filed September 19, 2013, by Yamaha Corporation of America. (See Request No. (7) above).

(12)           IPR2013-00598 (electronically filed) – U.S. Patent No. 8,214,873 entitled METHOD, SYSTEM, AND COMPUTER-READABLE MEDIUM FOR EMPLOYING A FIRST DEVICE TO DIRECT A NETWORKED AUDIO DEVICE TO RENDER A PLAYLIST and owned by Black Hills Media, LLC. Filed September 19, 2013, by Yamaha Corporation of America. (See Request No. (7) above).

(13)           IPR2013-00599 & IPR2013-00600 (electronically filed) – U.S. Patent No. 8,374,461 entitled DIGITAL RADIOGRAPHY PLATE IDENTIFICATION SYSTEM and owned by Smart Plates, LLC. Filed September 20, 2013, by Carestream Health, Inc. The ‘461 patent is currently the subject matter of a litigation styled Smart Plates, LLC v. Carestream Health, Inc., et al. (Case No. 2:13-cv-00540 (E.D. La.)).

(14)           IPR2013-00601 (electronically filed) – U.S. Patent No. 6,772,215 entitled METHOD FOR MINIMIZING FEEDBACK RESPONSES IN ARQ PROTOCOLS and owned by Telefonaktiebolaget Lm Ericsson (more manageably known as Ericsson). Filed September 20, 2013, by Broadcom Corporation. The ‘215 patent is currently the subject matter of a litigation styled In re Certain Electronic Devices, Including Wireless Communication Devices, Tablet Computers, Media Players, and Televisions, and Components Thereof  (Inv. No. 337-TA-862 (USITC)). The USITC Staff Attorney had recommended that certain claims of the ‘215 patent be found invalid under the references cited in Broadcom’s petition. The ‘215 patent was previously the subject matter of a litigation styled Ericsson Inc., et al. v. D‑LINK Corp., et al. (Case No. 6:10-CV-473-LED-KGF (E.D. Tex.)). In June of 2013, a jury returned a verdict finding infringement of claim 1 of the ‘215 patent, and awarded Ericsson approximately $8 million in damages. Other named defendants in the litigation included Dell, Toshiba, and Acer. Broadcom was not among the named defendants. Broadcom’s petition noted that having been allowed only 15 hours to present their case on the infringement issue of the ‘215 patent, as well as four other patents-in-suit, the defendants in the litigation could not address the invalidity of the ‘215 patent.

(15)           IPR2013-00602 (electronically filed) – U.S. Patent No. 6,466,568 entitled MULTI-RATE RADIOCOMMUNICATION SYSTEMS AND TERMINALS and owned by Ericsson. Filed September 20, 2013, by Broadcom Corporation. The ‘568 patent was  the subject matter of a litigation styled Ericsson Inc., et al. v. D-LINK Corp., et al. (Case No. 6:10-CV-473-LED-KGF (E.D. Tex.)). As was the case with the ‘215 patent, the jury also found that the defendants infringed claim 1 of the ‘568 patent.

The following covered business method requests were filed:

(1)               CBM2013-00057 (electronically filed) – U.S. Patent No. 8,036,988 entitled SYSTEM AND METHOD FOR PERFORMING SECURE CREDIT CARD TRANSACTIONS and owned by John D’Agostino. Filed September 17, 2013, by MasterCard. The ‘988 patent is currently the subject matter of a litigation styled John D’Agostino v. MasterCard, Inc., et al. (Case No. 1:13-cv-00738 (D. Del.)).

(2)               CBM2013-00058 (electronically filed) – U.S. Patent No. 7,840,486 entitled SYSTEM AND METHOD FOR PERFORMING SECURE CREDIT CARD TRANSACTIONS and owned by John D’Agostino.  Filed September 17, 2013, by MasterCard. The ‘486 patent is currently the subject matter of a litigation styled John D’Agostino v. MasterCard, Inc., et al. (Case No. 1:13-cv-00738 (D. Del.)).

(3)               CBM2013-00059 (electronically filed) – U.S. Patent No. 5,949,880 entitled TRANSFER OF VALUABLE INFORMATION BETWEEN A SECURE MODULE AND ANOTHER MODULE and owned by Maxim Integrated Products, Inc. Filed September 16, 2013, by Branch Banking and Trust. The ‘880 patent is currently the subject matter of a multidistrict litigation styled In re Maxim Integrated Products, Inc. (MDL No. 2354 (W. D. Pa.)).

The following ex parte reexamination request was filed:

(1)               90/020,059 (electronically filed) – U.S. Patent No. 7,844,547 entitled UNCLE GEM IV, UNIVERSAL AUTOMATIC INSTANT MONEY, DATA AND PREVIOUS METAL AND STONE TRANSFER MACHINE and owned by C.A. Transfer LLC.  Filed September 12, 2013 by Carl Raymond Amos.

(2)               90/013,000 (electronically filed) – U.S. Patent No. 7,730,132 entitled STORING AND ACCESSING MEDIA FILES and owned by Pragmatus AV Ltd.  Filed September 18, 2013 perhaps by Facebook.  The ‘132 patent is the subject of an infringement action styled Pragmatus AV LLC v. Facebook, Inc. et al., (Case No. 5:11-cv-00494 (N. D. Cal.)).

 

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