Webinar Materials - The Results Are In: The USPTO’s Request for Comments on Discretionary Denials

Speakers:

Ashraf Fawzy – Legal Head - SEP, Unified Patents

Joshua Landau — Patent Counsel - Computer & Communications Industry Association (CCIA)

Joe Matal — Partner, Haynes and Boone, LLP

We reviewed one of the most closely monitored rule changes in the AIA's history. The USPTO recently issued a request for comments regarding policy-based discretionary denials of PTAB proceedings. Such policy-based discretion included the PTAB's recent rise in considering: (a) parallel litigation (Fintiv Factors/NHK Spring); (b) parallel petitions; and (c) serial petitions when deciding whether to institute. We spoke about the proposed rule, the policy and practical considerations involved, and the competing interests which resulted in over 800 comments being submitted from stakeholders.

Thank you to our panelists for leading a great discussion!

To listen to the recorded webinar, click here: https://vimeo.com/492542852

The slide presentation from this webinar can be seen below, along with some accompanying materials — the collection of submitted comments that were mentioned; Apple's Arthrex Brief; and the request for comments.

https://www.unifiedpatents.com/insights/2020/5/13/ptab-procedural-denial-and-the-rise-of-314

Please join us at our next webinar, The Trial Before the Trial — Eliminating Presumptions and Other Recent USPTO Rule Changes on January 28th at 12p ET. For more information, visit our website.

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NavBlazer (Joao) patent determined likely invalid

On December 16, 2020, the Patent Trial and Appeal Board (PTAB) instituted trial on all challenged claims in an IPR filed by Unified against U.S. Patent 9,885,782, owned by NavBlazer LLC, an NPE. NavBlazer is associated with patent attorney and prolific inventor, Raymond Anthony Joao. Along with Caselas, GreatGigz Solutions, Joao Control and Monitoring Systems, and Joao Bock Transaction Systems, his companies have launched dozens of lawsuits against technologies ranging from streaming video to financial transactions. The ’782 patent is directed to vehicle navigation systems that provide information about a route and has been asserted against TomTom, Apple, Samsung, LG, Motorola Mobility, and Hyundai for their devices that provide vehicle navigation.

View NavBlazer’s district court litigation. To read the petition and view the case record, see Unified's Portal. Unified is represented by in-house counsel, Jessica L.A. Marks and Ashraf Fawzy, and James Stein from Lee & Hayes in this proceeding.

Breaking the 5G Curve by Looking Beyond the U.S. Patent System

Unified’s Shawn Ambwani and Sam Jaffna published an article in IPWatchdog.com analyzing the growth in 5G Self-Declared Standard Essential Patents (SD-SEPs) and the idea that strategic oppositions and invalidity proceedings filed outside the U.S. could prove useful to manufactures/equipment makers of 5G technology. There are 94,000 active grants and applications (25,700 families) 5G SD-SEPs as of September 2020.

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While successful validity challenges of a patent in foreign countries do not conclusively prove the invalidity of the U.S. counterpart, the successful arguments used in these challenges have been effective in the U.S. and used to argue lower portfolio values.

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“Manufacturers of equipment implementing 5G technologies should consider strategic oppositions and invalidity proceedings outside the United States against SEPs held by major licensees. These challenges cost a tenth or more less than typical U.S. challenges and could impact the licensing value of up to 50% of the self-declared families of the major SEP holders.”

Click HERE to read the entire article posted on IPWatchdog.com.

$3,000 for Texas Secure Authentication Prior Art

On December 15, 2020, Unified Patents added a new PATROLL contest, with a $3,000 cash prize, seeking prior art on at least Claim 1, 6, and 7 of U.S. Patent 7,873,682. This patent is owed by Texas Secure Authentication, LLC, an NPE. The '682 patent generally relates to determining identification information through a plurality of container registers using multi-factor authentication methods in online banking and internet services. It is being asserted against FCT Bancshares, Inc. and its subsidiary, First National Bank of Central Texas, in the Western District of Texas. The complaint acknowledges that the '682 patent expired on February 25, 2019.

The contest will expire on February 1, 2021. Please visit PATROLL for more information and to submit an entry for this contest.

Prior Art ProviderClaim Chart Link
Apex StandardsPseudo Claim Charting
Techson IPLimestone|Report
Amplified Invalidity Report
Traindex Prior Art Report
InQuartik Semantic Prior Art

$3,500 for Trust & Verify Data Protection Prior Art

Unified Patents has a PATROLL contest, with a $3,500 cash prize, seeking prior art on all of the limitations of dependent Claim 10, and including all of the limitations of independent Claim 4, of U.S. Patent 7,162,735. The patent is owned by Trust & Verify Data Protection, LLC, an NPE. The '735 patent generally relates to an arrangement with a protected code that comprises incomplete executable code and a call instruction to a security code such that when the security code is executed, it replaces the call instruction such that the executable code of the protected code is complete.

The ‘735 patent is currently being asserted against Best Buy, McAfee, and Buzzfeed.

The contest will expire on January 15, 2021. Please visit PATROLL for more information and to submit an entry for this contest.

Prior Art ProviderClaim Chart Link
Apex StandardsCorresponding Claim Chart
Techson IPLimestone|Report
AmplifiedCorresponding Claim Chart
TraindexCorresponding Claim Chart