On August 6, 2013, the Board stayed Reexamination 90/012,669 on U.S. Patent No. 6,624,843, pending the completion of IPR2013-00432 on the same patent. See Lumondi Inc. v. Lennon Image Technologies LLC, IPR2013-00432, Paper 7 (August 6, 2013). Although the Board said that it will not ordinarily stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch, in fact the Board has routinely stayed rexamiantions in favor of IPRs where the same claims are at issue.
Author Archives: Bryan Wheelock
The First First-toFile Patent Issues
U,S, Patent No. D685,381 the first first-to-file patent to issue.
It didn’t take long, but as reported in Patently-O, the first first-to-file patent issued on July 2, 2013. U.S. Patent No. D685,381, which was filed on April 1, 2013, covers a Laptop Stand. Let the Post Grant Reviews begin!
July 10, 2013, Four New IPRs Filed
On July 10, 2013, TPK America, LLC filed IPR 2013-004333 on U.S. Patent No. 8294677 on Transparent capacitive touch panel and manufacturing method thereof, and IPR2013-00436 on U.S. Patent No. 8330738 on _Capacitive touch panel and electrode structure thereof; The Brinkmann Corporation filed IPR2013-00435 on U.S. Patent No. 8449289 on Multi-gas appliance; and Lumondi Inc. filed IPR 201300432 on U.S. Patent No. 6624843 on Customer image capture and use thereof in a retailing system.
On July 8, 2013, Six New IPRs Filed
Toyota Motor Corporation filed six new IPR’s: IPR2013-00412 and IPR2013-00413 on U.S. Patent No. 6738697 on Telematics system for vehicle diagnostics; IPR2013-00414 on U.S. Patent No. 7630802 on Information management and monitoring system and method; IPR2013-00415 on U.S. Patent No. 7650210 on Remote vehicle diagnostic management; IPR2013-00416 on U.S. Patent No. 8019501 on Vehicle diagnostic and prognostic methods and systems; and IPR2013-00417 on U.S. Patent No. 8036788 on Vehicle diagnostic or prognostic message transmission systems and methods.
On July 5, 2013, Three new IPRs were Filed
On July 5, 2013, Apotex Corp.filed IPR2013-00428 on U.S. Patent No. 8268299 on Self Preserved Aqueous Pharmaceutical Compositions; IPR2013-00429 on U.S. Patent No. 8323630 on Self Preserved Aqueous Pharmaceutical Compositions; and IPR2013-00430 on U.S. Patent No. 8388941 on Self Preserved Aqueous Pharmaceutical Compositions.
On July 3, 2013, Three New IPR were Filed, Including One a Against a Reissued Patent; Board Deals with Idle Free Fallout; and the Board Clarifies that all Agreements Must be Disclosed to Terminate an IPR
On July 3, 2013, Moore Rod & Pipe, LLC filed IPR2013-00418 against U.S. Patent No. RE36362 on Polymer Liners in Rod Pumping Wells; Sony Corporation filed IPR2013-00326 against U.S. Patent No. 6,665,003 on System and Method for Generating and Displaying Panoramic Images and Movies, and IPR2013-00327 against U.S. Patent No. 7,477,284 on System and Method for Capturing and Viewing Stereoscopic Panoramic Images.
In Nichia Corp. v. Emcore Corp., IPR2012-00005 (JYC), Paper 30 (July 3, 2013), the Board denied Emcore’s motion to file a second motion to amend in view of Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB, Jun. 11, 2013). The Board indicated that Emcore was free to argue that the Idle Free Systems decision should not be applied literally to its motion to amend, as it did not have the benefit of the guidance set forth in that decision before filing its motion to amend.
In Hyundai Motor America, Inc., v. Clear with Computers, LLC, IPR2013-00104, Paper 16, and IPR2013-00176, Paper 17 (July 23, 2013), before terminating the two IPRs broughat against U.S. Patent No. 8,121,904 the Board required the parties to certify in writing that there are no other written or oral agreements or understandings,including any collateral agreements, between them, including but not limited to, licenses, covenants not sue, confidentiality agreements, or other agreements of any kind, that are made in connection with, or in contemplation of, the termination of the IPR Proceedings. The Board also required the Patent Owner to indicate whether there were any other pending infringement suits involving the patent. In contrast the same day, the Board granted a motion to terminate in CBS Interactive, Inc. v. Helfrich Patent Licensing, LLC, IPR2013-00033 (JYC), Paper 60 (July 3, 2013), where the parties submitted their settlement agreement, and moved pursuant to 37 C.F.R. § 42.74(c), that the settlement agreement be treated as business confidential information and be kept separate from the files of the patent.
On July 2, 2013, One New IPR Filed; Board Approves Non-Electronic Filing of Exhibit
On July 2, 2013, General Growth Properties, Inc., filed IPR2013-00400 on U.S. Patent No. 6,397,143 on Layout Based Method for Map Navigation.
In McClinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR2013-00231 (SCM), Paper 13, (July 2, 2013) The Board allowed Petitioner to submit a video that it was unable to upload using the electronic system.
On July 1, 2013, Nine New IPRs were filed.
Apple Inc . filed IPR2013-00393 and IPR2013-00394 on U.S. Patent No. 7,418,504 on Agile Network Protocol for Secure Communications Using Secure Domain Names; Apple Inc filed IPR2013-00397 and IPR2013-00398 on U.S. Patent No. 7,921,211 on Agile Network Protocol for Secure Communications Using Secure Domain Names; Federal Reserve Bank of Boston filed IPR2013-00406 on U.S. Patent No. 5,936,541, on Method for Securing Information Relevant to a Transaction and IPR2013-00409 on U.S. Patent No. 5,793,302 on Method for Securing Information Relevant to a Transaction; Permobil, Inc., filed IPR2013-00407 on U.S. Patent No. 8,408,598 on Anti-tip System for a Power Wheelchair, and filed IPR2013-00411 on U.S. Patent No. 8,408,343; Hitachi Cable America Inc., filed IPR2013-00408 on U.S. Patent No. 5,563,377 Telecommunications Cable.
June 23, 2013, Four New IPR’s Filed
On June 23, 2013, New Bay Capital, LLC filed IPR 2013-00375 on U.S. Patent No. 6,502,135, on Agile Network Protocol for Secure Communications with Assured System Availability; IPR 2013-00376 on U.S. Patent No. 7,490,151 on Establishment of a Secure Communication Link Based on a Domain Name Service (DNS) Request; IPR 2013-00377 on U.S. Patent No. 7,418,504 on Agile Network Protocol for Secure Communications using Secure Domain Names; and IPR 2013-000378 on U.S. Patent No. 7,921,211 on Agile Network Protocol for Secure Communications using Secure Domain Names.
June 22, 2013, One New IPR Filed
On June 22, 2013, Samsung Electronics Co., Ltd., filed IPR2013-00384 on U.S. Patent No. 5,530,874 on Network Adapter with an Indication Signal Mask and an Interrupt Signal Mask.