Unified advocates for “reasonable likelihood” standard to determine printed publication status

On May 1, 2019, Unified filed an amicus brief in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, urging the PTAB to clarify the standard used by PTAB panels to determine whether an asserted reference qualifies as a printed publication when deciding whether to institute trial in a post-grant proceeding.  Different panels have approached the question inconsistently, leading to a lack of certainty in what a petitioner must present in its petition to show that an asserted reference qualifies as a printed publication.

In IPR2018-01039, a PTAB panel declined to institute Hulu’s petition for inter partes review based on a finding that the copyright notice and a supporting affidavit submitted by Hulu were insufficient to demonstrate that a textbook reference qualified as a printed publication. Subsequently, the Board’s Precedential Opinion Panel authorized review, permitting the parties and interested third parties to address: “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage?”

Amicus briefs addressing the issue were submitted by (1) Unified, (2) AIPLA, (3) Canon Inc., (4) Google, Microsoft, Arista and Uber, and (5) Sandoz. All of the parties (with the exception of Sound View) generally advanced the same position as Unified, namely that the reasonable likelihood standard of 35 U.S.C. § 314(a) should apply to factual disputes at institution, including whether an asserted reference qualifies as a printed publication.

For more information about this proceeding and to view the briefing on this issue, visit Unified’s Portal. A copy of Unified’s amicus brief is provided below.

Brief of Amicus Curiae Unified Patents Inc. in Support of Neither Party

Multiple claims of Uniloc patent held unpatentable

On April 26, 2019, the Patent Trial and Appeal Board (PTAB) issued a final written decision in Unified Patents Inc. v. Uniloc Luxembourg, LLC, IPR2017-02148 holding as unpatentable claims 1-5 and 7-9 of U.S. Patent 6,564,229 owned by NPE Fortress Credit Co. LLC and asserted by Uniloc Luxembourg, S.A., another notorious NPE and exclusive licensee of the '229 patent. The '229 patent, generally directed to pausing move or copy operations within a data processing system, has been widely asserted against such companies as Square Enix, Nexon America, Big Fish Games, Ubisoft, Kaspersky Lab, and Akamai Technologies. 

View all of Uniloc’s district court litigation here. To read the decision and to view the entire proceeding, visit our PTAB Portal.

2019’s biggest patent case has nothing to do with patents

In a report published by IAM, Unified’s Chief Patent Counsel Jonathan Stroud explains that the US Supreme Court’s biggest patent law case of the year may in fact have nothing to do with patents. Most patent lawyers have probably never heard of Kisor v. Wilkie (argued in March 2019), a sleepy veteran’s appeal that—at first blush—appears to have little relation to patent law.

But they should take note, as Stroud points out that the Court in Kisor stands poised to overturn 64 years of precedent by abolishing a type of deference known as Auer (or Seminole Rock) deference which requires courts to defer to an agency’s interpretation of its own rules. This would have significant repercussions on the amount of deference given to almost any action taken by the USPTO and could even go so far as to end the presumption of patent validity, which is premised on deference to the expertise of the USPTO examination.

The case has already drawn dozens of amicus briefs and law review articles, however all indications thus far seems to suggest that Auer deference is on the way out. For more information, view the complete report at IAM.

All challenged claims for Vilox Techs patent held unpatentable; Motion to Amend denied

On April 18, 2019, the Patent Trial and Appeal Board (PTAB) issued a final written decision in Unified Patents Inc. v. Vilox Technologies, LLC, IPR2018-00044 holding as unpatentable all challenged claims of U.S. Patent 7,302,423 owned by Vilox Technologies, LLC (an NPE). The '423 patent, was directed to a "search-on-the-fly" system and had previously been asserted against dozens of retail companies such as Orbitz, Expedia, Priceline, Neiman Marcus, Buy.com, Costco and Walmart, among others. 

Haynes and Boone served as Unified’s lead counsel in this proceeding. View all of Vilox’s district court litigation here. To read the decision, visit Unified’s PTAB Portal.

MOAEC Techs. patent determined to be likely unpatentable

On April 17, 2019, the Patent Trial and Appeal Board (PTAB) instituted trial on all challenged claims in an IPR filed by Unified against U.S. Patent 6,232,539, owned and asserted by MOAEC Technologies, a General Patent Corporation subsidiary and well-known NPE. The ’539 patent, directed to a music organizer and entertainment center, was recently determined to cover ineligible subject matter by the Delaware District Court in three cases involving Spotify, SoundCloud, and Deezer. Those cases are currently pending appeal.

Lionel Lavenue, Trenton Ward, and Nathan North at Finnegan are serving as Unified’s lead counsel in this proceeding. View all of MOAEC Technologies’ District Court litigation here. To read the decision and to view the entire IPR proceeding, visit our PTAB Portal.