Another Velos Media patent determined to be likely unpatentable

On August 20, 2019, the Patent Trial and Appeal Board (PTAB) instituted trial in an IPR filed by Unified against the sole claim of US Patent 8,767,824, owned by Velos Media, LLC. Velos claims to have and seeks to license patents allegedly essential to the HEVC / H.265 standard (such as the ‘824 patent). Unified filed this challenge as part of its ongoing efforts in its SEP Video Codec Zone after independently determining that the allegedly standard essential ‘824 patent is likely unpatentable.

The ‘824 patent and its corresponding extended patent family represents approximately 3% of Velos' known U.S. assets. The ’824 patent, generally directed to techniques for video encoding and decoding, was originally assigned to Sharp before being transferred to Velos in 2017.

Unified is represented by David Cavanaugh and Theodoros Konstantakopoulos from Wilmer Hale in this proceeding. Visit Unified’s Portal for more information about its Video Codec landscape (OPAL) and standard submission repository (OPEN). To read the decision and review the case record, view IPR2019-00635 on the Portal.

Impact Sport Techs. abandons patent after PTAB institutes IPR

On August 12, 2019, the Patent Trial and Appeal Board (PTAB) terminated proceedings in Unified Patents Inc. v. Impact Sport Techs., Inc., after Impact Sport Technologies abandoned all claims of U.S. Patent 8,460,197 (previously owned and asserted by Health Watch, LLC, a Dominion Harbor subsidiary and well-known NPE). Patent Owner’s request for adverse judgment was filed shortly after the Board’s July 26th order instituting inter partes review for all claims. The ‘197 patent, directed to wearable sensors and electronic devices, has been asserted against Huawei and Samsung.

Unified was represented by Wilson Sonsini in this matter. View district court litigation for the ‘197 patent. To read the decision and view the entire case proceeding, see Unified’s Portal.

All claims of Uniloc patent held unpatentable by PTAB

On August 8, 2019, the Patent Trial and Appeal Board (PTAB) issued a public version of its final written decision in Unified Patents Inc. v. Uniloc USA, Inc. et al., holding as unpatentable all 16 claims of U.S. Patent 7,092,671 owned by Fortress Credit Co. LLC (a Softbank subsidiary) and asserted by Uniloc Luxembourg, SA, a well-known NPE. The '671 patent, directed to an automated telephone dialing system, has been asserted in multiple district court cases against such companies as Apple and Samsung.

The Board’s decision rejected Patent Owner's argument that Unified’s members should have been named as RPIs in this proceeding. This is the latest in a series of decisions that have consistently found Unified to be the sole RPI.

Unified was represented by Wilmer Hale in this matter. View all of Uniloc’s district court litigation here. To read the decision and to view the entire IPR proceeding, visit Unified’s Portal.

American Patents patent determined to be likely invalid; Unified determined to be sole RPI

On August 6, 2019, the Patent Trial and Appeal Board (PTAB) issued a public order instituting trial on all challenged claims in an IPR filed by Unified against U.S. Patent 7,373,655 owned by American Patents, LLC, an NPE. The ’655 patent, directed to a method for control of access to network resources, has been asserted in multiple district court cases against such companies as TCL, LG, Samsung, Sharp, Acer, Huawei and others.

The Board’s decision included a thorough analysis related to real party-in-interest (RPI) and rejected Patent Owner's argument that a Unified member should have been named as an RPI in this proceeding. For example, the Board held:

Petitioner’s evidence indicates that [the member] . . . had no involvement with or knowledge of the Petition before it was filed, did not and will not fund the proceeding, and cannot exercise control over the proceeding. [. . .] Furthermore, [the member] is a general beneficiary of the Petition because it has been accused of infringing the ’655 patent, but we are sufficiently persuaded that [the member] does not derive a specific benefit from the Petition. Finally, we are not persuaded at this stage by Patent Owner’s argument that Petitioner’s business model is designed to improperly circumvent RPI case law. On this record, we are sufficiently persuaded that the Petition was not filed at [the member’s] behest and that Petitioner cannot be said to be representing [the member’s] interest.

IPR2019-00482, Paper 36 at 20 (PTAB Aug. 6, 2019) (citations omitted). This is the latest in a series of decisions that have consistently found Unified to be the sole RPI.

Unified is represented by Haynes and Boone in this proceeding. View American Patent’s district court litigation here. To read the decision and view the entire case proceeding, see Unified’s Portal.

MobilePay patent determined to be likely invalid

On August 2, 2019, the Patent Trial and Appeal Board (PTAB) instituted trial on all challenged claims in an IPR filed by Unified against U.S. Patent 9,800,706 asserted by MobilePay, LLC (an IP Valuation Partners subsidiary and well-known NPE).  The ‘706 patent, directed to the use of the audio port on a mobile phone to communicate with a peripheral device (such as a keyboard), has been asserted in 5 district court cases against Bank of America, Mindbody, Intuit, and Paypal.

View MobilePay's district court litigation here.  To read the decision and view the entire case proceeding, see Unified’s Portal.