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- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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“$1,000 Per Employee” Scanning Patents Hit with Inter Partes Review Requests, Week of May 20, 2013
| May 28, 2013
The Vermont Attorney General made quite a splash last week when it filed a “Consumer Protection Complaint” against MPHJ Technology Investments, a patent assertion entity, accusing it of “unfair and deceptive acts” – specifically addressing misleading patent litigation warning letters to numerous small businesses in Vermont. The Patent Office will also play a role in this controversy, in view of an inter partes review request filed by Ricoh and Xerox against one of the MPHJ patents (see inter partes review Request No. (5)) and an inter partes review request filed by HP against a second MPHJ patent (see inter partes review Request No. (11)) Requests against the other two MPHJ patents in question are likely to be in the works.
According to the Attorney General’s Complaint, MPHJ sent the letters “through forty wholly-owned shell subsidiary companies,” each located at the same UPS store in Newark Delaware. The letters state that “[w]e have identified your company as one that appears to be using the patented technology” of four specific patents and one pending patent application. The letters summarize the technology as permitting “the scanning of a document directly to [an] employee email address as a pdf document.” Then comes the threat” “[a]s your organization almost certainly uses in its day-to-day operations digital copier/scanner/multifunction equipment which is interfaced to a separate central office computer (an office network), so that digital images may be scanned and transmitted to one or more destinations such as email accounts and other applications, you should enter into a license agreement with us at this time.” Finally, the punch-line: settlement without court action will require “a payment of $1,000 per employee.” (emphasis added; the per employee fees requested ranged from $900 to $1,200). This initial letter was typically followed by two, more threatening letters from the shell company’s legal counsel.
Norman IP Privacy Patent Challenged, Week of May 13, 2013
| May 20, 2013
Norman IP Holdings has filed many lawsuits alleging infringement of U.S. Patent No. 5,592,555, most recently in a case filed in Texas last Monday against ADTRAN, Inc. On Wednesday Creston Electronics requested inter partes review of the ‘555 patent (see inter partes review Request No. (1)) The patent, which claims methods for “privately communicating signals over a wireless communications network,” is already the subject of a reexamination (90/012,783) filed by Volkswagen.
The following inter partes review requests were filed:
(1) IPR2013-00278 (electronically filed) – U.S. Patent No. 5,592,555 entitled WIRELESS COMMUNICATIONS PRIVACY METHOD AND SYSTEM and owned by Norman IP Holdings, LLC. Filed May 15, 2013 by Creston Electronics, Inc. The ‘555 patent is currently the subject matter of a plethora of litigations initiated by Norman IP Holdings and Saxon Innovations LLC, including Norman IP Holdings, LLC v. Creston Electronics, Inc. (Case no. 6:20cv-00394 (E.D. Tex.)); Norman IP Holdings, LLC v. BMW North America, LLC (Case No. 6:12-cv-00510 (E.D. Tex.)); Norman IP Holdings, LLC v. Lexmark International, Inc. (Case No. 6:11-cv-00495 (E.D. Tex.)); and Saxon Innovations LLC v. Gateway Companies, Inc. (Case No. 6:08-cv-00464 (E.D. Tex.); to name a few.
(2) IPR2013-00285 (electronically filed) – U.S. Patent No. 8,019,479 entitled CONTROL ALGORITHM OF VARIABLE SPEED PUMPING SYSTEM and owned by Pentair Water Pool and Spa, Inc. Filed May 17, 2013 by Hayward Industries, Inc. The ‘479 patent is currently the subject matter of a litigation styled Pentair Water Pool and Spa, Inc. and Danfoss Drives A/S v. Hayward Industries, Inc. and Hayward Pool Products, Inc. (Case No. 5:11-cv-459 (E.D.N.C.)).
Ariosa Diagnostics Attacks Verinata Fetal Testing Patent, Week of May 6, 2013
| May 13, 2013
Ariosa Diagnostics filed two requests for inter partes review of U.S. Patent Nos. 8,318,430 owned by Verinata Health, one challenging claims 1-18 and the second, claims 19-30 (see inter partes review Request Nos. (11) & (12)). The ‘430 patent claims methods for detecting fetal abnormalities by testing a maternal blood sample for the number of DNA fragments to determine whether there is an abnormal level of DNA associated with the chromosome suspected of being “aneuploid.” Verinata has sued Ariosa for infringement of the ‘430 patent.
Oracle “completed,” in essence, earlier inter partes requests against two Clouding IP patents, this time attacking the claims that had not been attacked in the earlier petitions (see inter partes review Request Nos. (6) & (8)).
And Sprint Communications requested ex parte reexamination of three Comcast IP Holdings patents (see ex parte Request Nos. (3), (6) & (7)). The two companies are involved in an infringement action in Delaware regarding the patents.
Sprint Requests Reexamination for Three More Comcast Patents, Week of April 29, 2013
| May 6, 2013
Last Monday we reported that Sprint had requested ex parte reexamination of two telecommunications data accessing patents owned by Comcast IP Holdings. Sprint has since requested reexamination of three more Comcast patents (see ex parte Request Nos. (2), (3) & (8)). The two companies are involved in an infringement action in Delaware, related to the patents.
Motorola Mobility has filed inter partes review petitions against two Internet content display patents owned by SoftView (see inter partes review Request Nos. (1) & (2)). Softview has sued Apple and AT&T Mobility for infringement of the patents.
Oracle has requested inter partes review of two Clouding IP patents (see inter partes review Request Nos. (5) & (6)). Oracle had previously filed a petition for inter partes review of the ‘799 patent, challenging a number of claims of the ‘799 patent (see IPR2013-00073). In the instant petition, Oracle is now seeking review of the remaining three independent claims of the ‘799 patent that were not addressed in the earlier petition. The second petition follows an earlier request for inter partes review of the ‘891 patent, in which Oracle requested review of claims 1 to 8 of the patent (see IPR2013-00100). In the instant petition, Oracle seeks review of independent claim 9.
Sprint Challenges Two Comcast Patents, Week of April 22, 2013
| April 29, 2013
Last Wednesday Sprint requested ex parte reexamination of two Comcast patents that claim methods for accessing telecommunications data (see ex parte Request Nos. (3) & (4)). Comcast has sued Sprint in Delaware for infringement of the patents. Sprint’s choice of ex parte reexamination over inter partes review is noteworthy.
Also on Wednesday, InvenSense requested inter partes review of a tungsten-contact semiconductor patent owned by STMicroelectronics (see inter partes review Request No. (2)). The latter recently sued InvenSense for infringement of the patent, both in California and at the U.S. International Trade Commission.
Volkswagen Challenges Cruise Control Tech. Patent, Week of April 15, 2013
| April 22, 2013
Volkswagen has requested ex parte reexamination of U.S. Patent No. 6,324,463 that is owned by Cruise Control Technologies and claims cruise control indicators (see ex parte Request No. (3)). Cruise Control has sued VW, as well as BMW and Audi, for infringement of the ‘463 patent.
Ariosa Diagnostics requested a second inter partes review of Isis’ U.S. Patent No. 6,258,540 (see inter partes review Request No. (2)). The ‘540 patent claims methods that “enable[] non-invasive prenatal diagnosis including for example sex determination, blood typing and other genotyping, and detection of pre-eclampsia in the mother.” This request seeks review of claims that are not the subject of the earlier inter partes review.
Esoterix DNA Amplification Patents Challenged, Week of April 8, 2013
| April 15, 2013
On Friday Life Technologies requested ex parte reexamination of two Esoterix Genetic Labs patents, both entitled “Universal Primer Sequence For Multiplex DNA Amplification” (see ex parte Request Nos. (7) & (8)). An infringement action involving those patents is currently pending in North Carolina. Esoterix’ patents were originally owned by Genzyme Corporation.
Volkswagen seeks inter partes review of a luminaire patent owned by Light Transformation Technologies (see inter partes review Request No. (1)). Light Transformation has sued quite a number of lighting device manufacturers for infringement of that patent, among them General Electric.
A Tessera patent is the target of an inter partes review requested by Amkor Technologies (see inter partes review Request No. (5)). Tessera has sued Amkor in Delaware for infringement of that patent.
Samsung Seeks Inter Partes Review of Unifi Scientific Battery Charger Patent, Week of April 1, 2013
| April 8, 2013
Last year, Unifi Scientific Batteries (USB) sued a number of companies in the Eastern District of Texas for infringement of its U.S. Patent No. 6,791,298 that claims a battery charger. Among those sued by USB, whose principal place of business is in Longview Texas, are Amazon, RIM, HTC, Samsung, Sony and Texas Instruments. The accused products include the Kindle Fire and Samsung’s Galaxy Nexus.
Last month Texas Instruments also requested inter partes review of the ‘298 patent (see IPR 2013-00213), and on Thursday Samsung filed its own inter partes review request against the ‘298 patent (see inter partes review Request Nos. (8)).
On Wednesday Geico field a 391-page request for ex parte reexamination of MacroSolve’s U.S. Patent No. 7,822,816 (see ex parte Request No. (8)). According to MacroSolve, the ‘816 patent covers a wide variety of “mobile information collection systems.” MacroSolve has sued Geico, as well as ten other retail companies, in the Eastern District of Texas for infringement of the ‘816 patent.
Eighteen Inter Partes Review Requests Filed, Week of March 25, 2013
| April 1, 2013
The initial sticker shock, caused by the high filing fees for inter partes review requests, appears to be easing – last week, requests were filed against 18 patents, a weekly number quite comparable to the number of inter partes reexamination requests filed in the pre-AIA Era. Notable requesters included Dell (see inter partes Request No. (1)), NuVasive (see inter partes Request No. (3)), Covidien (see inter partes Request No. (4)), Texas Instruments (see inter partes Request No. (5)), Butamax (see inter partes Request Nos. (6) & (7)), Hewlett-Packard (see inter partes Request No. (10)), and Sony (see inter partes Requests Nos. (11) & (12)).
The following inter partes review requests were filed:
(1) IPR2013-00202 (electronically filed) – U.S. Patent No. 5,434,562 entitled METHOD FOR LIMITING COMPUTER ACCESS TO PERIHPERAL DEVICES and owned by NovelPoint Security, LLC. Filed March 25, 2013 by Dell, Inc. The patent owner has asserted the ‘562 patent in at least 31 litigations against a host of defendants, including Dell (Case No. 2:2012-cv-105 (E.D. Tex.)); Samsung (Case Nos. 2:2012-cv-100, 2:2013-cv-079 (E.D. Tex.)); Hewlett-Packard Co. (Case Nos. 2:2012-cv-104, 2:2013-cv-083 (E.D. Tex.)); and Hitachi (Case No. 2:2013-cv-081 (E.D. Tex.)).
Ricoh Seeks Reexamination of Four Facsimile Circuit Patents
| March 25, 2013
Infinity Computer Products has sued 13 computer/printer companies – Toshiba, Oki, Samsung, Lexmark, Canon, Konica, Panasonic, Xerox, HP, Epson, Dell, Brother and Ricoh – for infringement of four patents related to interface circuits for linking operation of a facsimile device to a computer, and now latter company, Ricoh, has requested reexamination of each of those four patents (see ex parte reexamination Nos. (9) to (12)).
SAP America has requested inter partes review of two patents owned by Pi-Net International. Inc., (see inter partes review Nos. (1) & (2)). Both patents relate to “methods and apparatus for providing real-time, two-way transactional capabilities on the Web.” Pi-Net has sued quite a number of financial and auto-rental companies, presumably SAP customers, for infringement of the two patents.
Kimberly-Clark diaper wars against First Quality opened a new front on Friday, when ex parte reexamination requests were filed against the former’s U.S. Patent No. 5,745,922 and 6,098,203 (see ex parte Request Nos. (7) & (8).
