On November 13, 2018, The USPTO registered the service mark Unified Patents® under Registration No. 5,605,486, recognizing that Unified Patents® has earned industry goodwill and developed a reputation distinguishable and protectable in the marketplace. The name Unified Patents® identifies the valuable services Unified provides the industry, as it seeks to use market solutions to encourage technology adoption, deter bad actors, and encourage strong patents and vigorous patentability requirements by highlighting those that never should have issued, through data, legal analyses, and more. Unified will continue to do what it can with the reputation and goodwill it has built up over the past six years, as it continues to strengthen the US patent system and help technologies thrive.
PTAB institutes IPR against Realtime Adaptive Streaming, Finding Unified is sole RPI
On October 19 the Patent Trial and Appeal Board (PTAB) instituted trial on all challenged claims in Unified Patents Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883, rejecting Realtime’s argument that Unified’s members were unnamed real-parties in interest. In its first Unified decision discussing Applications in Internet Time, LLC v. RPX (AIT), the Board rejected arguments that Unified’s Content Zone members were unnamed RPIs, finding that would overextend the AIT analysis and the common law:
[W]e do not find that membership in Petitioner’s Content Zone and the general benefits accruing from such membership to be sufficient under the principles espoused by AIT and the common law to require that all such members be identified as RPIs under § 312(a)(2).
Paper 36, at 19.
Unified provided discovery and the parties briefed the issue prior to institution. The Board distinguished Unified membership from the factors discussed in AIT, noting the lack of evidence that anyone: (1) controlled, directed or directly financed the proceeding, (2) communicated with Unified regarding the filing or (3) even knew beforehand of Unified’s intent to file the proceeding. Id. at 16. The Board noted that there was “no evidence that any member desires review of the patent but is time-barred from filing an IPR,” further distinguishing AIT. Id.
The Board determined that there is a reasonable likelihood Unified will be able to show that U.S. Patent 8,934,535 is unpatentable and therefore instituted trial. The ‘535 patent is owned by Realtime Adaptive Streaming, LLC, a Realtime Data affiliate and well-known NPE. The ‘535 patent, directed to selecting, compressing, and decompressing data, has been asserted in 26 district court cases, 8 of which were pending as of the decision.
View all of Realtime's District Court litigation here. To read the decision and to view the IPR proceeding’s record, visit our PTAB Portal.
CIPSC 2018 Legal Writing Competition Winner Announced
Unified Patents and the Santa Clara High Technology Law Journal are pleased to award the 2018 CIPSC Legal Writing Competition winner, Michael McLaughlin, a 3L at Washington School of Law at American University who received $1,500 for his essay, Computer-Generated Inventions, addressing the legal issues surrounding the patenting of computer-generated inventions.
Pictured (left to right): Kevin Jakel (Unified Patents, CEO), Jonathan Stroud (Unified Patents, Chief IP Counsel), Michael McLaughlin (American University), Troy Sanders (SCU High Tech Law Journal, Editor in Chief).
We would like to thank all of the participants for the dozens of other high-quality submissions received for this contest. The CIPSC Legal Writing Competition is one of the many initiatives offered by Unified to promote innovation and excellence in the IP legal community. For more opportunities to win cash prizes, visit Unified’s prior art crowdsourcing website (PATROLL).
Epic IP patent challenged as likely unpatentable
On November 16, 2018, Unified filed a petition for inter partes review (IPR) against U.S. Patent 6,434,599 owned and asserted by Epic IP, LLC, an IP Edge subsidiary and well-known NPE. The '599 patent, directed to a system and method for online chatting, has been asserted in district court litigation against Backblaze, Blue Jeans Network, AutoNation, Sharp Electronics, JAND, and Fareportal.
View Epic IP's district court litigation here. To read the petition and view the entire case proceeding, see our PTAB Portal.
Plectrum claims found unpatentable; Unified is sole RPI
On November 13, 2018, the Patent Trial and Appeal Board (PTAB) issued a final written decision in Unified Patents Inc. v. Plectrum, LLC, IPR2017-01430 holding claims 8 and 11 of U.S. Patent 5,978,951 unpatentable. The patent is owned and asserted by Plectrum, LLC, a new NPE formed after acquiring several patents formerly owned by Hewlett Packard. In doing so, the Board rejected Plectrum’s arguments that Unified’s members are real parties-in-interest:
[U]nlike [Applications in Internet Time v. RPX (AIT)] we have no evidence tying Petitioner’s NPE-deterrent activities to any particular member interested in the outcome of this proceeding, such as a member that has been accused previously of patent infringement.
Paper 30 at 14. Given the Board’s decision in Unified Patents Inc. v. Realtime Adaptive Streaming, LLC, two panels have concluded, under different facts, that Unified members are not real parties-in-interest after the recent AIT decision clarifying RPI inquiries.
The '951 patent, directed to providing a hardware network address cache, has been asserted in 15 district court cases all of which were filed in February 2017. To read the decision and view the proceeding, visit our PTAB Portal.