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.

GE Video Compression patent determined to be likely unpatentable

On August 1, 2019, the Patent Trial and Appeal Board (PTAB) instituted trial on all challenged claims in an IPR filed by Unified against US Patent 9,729,891, owned by GE Video Compression, LLC (GEVC), which is participating in the HEVC Advance patent pool (HEVC Advance patent list). Unified filed this challenge as part of its ongoing efforts in its SEP Video Codec Zone after independently determining that the allegedly standard essential ‘891 patent is likely unpatentable.

The ‘891 patent and its corresponding extended patent family is one of the largest families known to be owned by GEVC, representing approximately 8.7% of GEVC's known U.S. assets. The ’891 patent, originally assigned to Fraunhofer-Gesellschaft, was transferred to GEVC in 2015.

Unified is represented by Erise IP 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 IPR2019-00617 on the Portal.

Pure Data Systems (Dominion Harbor) patent determined to be likely invalid

On August 1, 2019, the Patent Trial and Appeal Board (PTAB) instituted trial on all challenged claims in an IPR filed by Unified against US Patent 5,999,947 owned by Pure Data Systems, LLC (a Dominion Harbor subsidiary and well-known NPE). The ‘947 patent, directed to distributing database changes to one or more client computers, has been asserted in 16 district court cases against such companies as Electronic Arts, Spotify, CNN, CBS, Pinterest, LinkedIn and others.

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

Health Watch patent determined to be likely invalid

On July 26, 2019, the Patent Trial and Appeal Board (PTAB) instituted trial on all claims in an IPR filed by Unified against U.S. Patent 8,460,197 owned by Health Watch, LLC (a Dominion Harbor subsidiary and well-known NPE). The ‘197 patent, directed to wearable sensors and electronic devices, has been asserted against Huawei and Samsung.

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