ETRI/HBNU video codec patent likely invalid

On April 19, 2023, the Patent Trial and Appeal Board (PTAB) instituted trial on all challenged claims in an PGR filed by Unified against U.S. Patent 11,212,553, owned by the Electronics and Telecommunications Research Institute (ETRI) and Hanbat National University Industry-Academic Cooperation Foundation. The ‘553 patent is directed to decoding methods and apparatuses that use intra-prediction to reconstruct an image. The ‘553 patent is a recently issued patent that has been identified as potentially essential to the Versatile Video Coding (VVC) standard.

To read the petition and view the case record, see Unified's Portal.  Unified is represented by Raghav Bajaj, Jonathan Bowser, Destiny Stephenson, and Angela Oliver of Hayes Boone, and by in-house counsel, Jessica L.A. Marks and Roshan Mansinghani.

ETRI/HBNU patent challenged

On September 28, 2022, Unified filed a petition for post grant review (PGR) against U.S. Patent 11,212,553, owned by the Electronics and Telecommunications Research Institute (ETRI) and Hanbat National University Industry-Academic Cooperation Foundation.  The ‘553 patent is directed to decoding methods and apparatuses that use intra-prediction to reconstruct an image. The ‘553 patent is a recently issued patent that has been identified as potentially essential to the Versatile Video Coding (VVC) standard.

To read the petition and view the case record, see Unified's Portal.  Unified is represented by Raghav Bajaj, Jonathan Bowser, Destiny Stephenson, and Angela Oliver of Hayes Boone, and by in-house counsel, Jessica L.A. Marks and Roshan Mansinghani.

Unified Urges Federal Circuit to Reverse Western District's Prejudged Blanket Rule Denying Contested Stay Motions

On April 26, 2021, Unified, along with The Computer & Communications Industry Association (CCIA) and CableLabs, filed an amicus brief in re Vulcan Industrial Holdings, a petition for mandamus of a denial of a stay by Judge Albright in light of an instituted PGR (PGR2020-00065). In the brief, amicus argued Judge Albright has clearly abused his discretion by openly adopting a rule against stays that "smacks of prejudgment." Here, Vulcan diligently filed a PGR two and a half months after the patent grant and just one and a half months after the complaint was filed, but the Court found even that aggressively early filing was dilatory, ignored the certain simplification of issues that the USPTO instituted on all claims, and applied an erroneous legal test despite clear guidance from the Federal Circuit and myriad district court rulings.

A copy of Unified’s amicus brief is provided below.

15 Amicus Brief as Filed by Jennifer M Gallagher on Scribd

Pebble Tide, an IP Edge affiliate, loses PGR at Board

On April 13, 2021, the Board granted Pebble Tide's request for adverse judgment against itself and terminated PGR2020-00011, Unified Patents, LLC v. Pebble Tide LLC. After Unified filed the PGR petition, the claims in the challenged patent, U.S. Patent 10,303,411, were judged by the district court to be invalid and while Pebble Tide appealed the district court's decision, the Federal Circuit dismissed the appeal with prejudice. The Board instituted Unified's PGR in July 2020, before the Federal Circuit’s dismissal, and Pebble Tide attempted to file amended claims more than two months after the Federal Circuit's dismissal. However, Pebble Tide now agrees that its motion to amend is moot and requested adverse judgment.

The ‘411 patent had been asserted against over 25 companies, involving remote monitoring camera systems, mobile banking apps, online photo-sharing services, and auto insurance claims submission apps. All of the district court litigations have been terminated and the challenged patent is now owned by FlexiJet Technologies, Inc.

Unified is one of the top petitioners for inter partes review proceedings with over 200 petitions filed against bad NPE-controlled patents. This filing was the first occasion that Unified filed an early, post-grant review petition challenging a patent’s validity.

View Pebble Tide's district court litigation. To read the petition and view the case record, see Unified's Portal. Unified is represented by in-house counsel, Jung Hahm and Roshan Mansinghani, in this proceeding.