Aprese '924 app management patent successfully challenged

On November 28, 2022, the USPTO issued a final rejection of claims of U.S. Patent 9,207,924, owned by Aprese Systems Texas. The ‘924 patent relates generally to management of applications and/or services based on contextual information. It had been asserted against Toyota, Nissan, and Audi.

View district court litigations by Aprese. Unified was represented by Cono Carrano and Ryan Stronczer of Akin Gump and by in-house counsel, Roshan Mansinghani and Michelle Aspen.

To view any documents for the reexamination proceedings on Unified's Portal, go to https://portal.unifiedpatents.com/exparte/90014711.

Unified Patents and the Linux Foundation Announce Patcepta, an Open Source Rules Engine for Patent Prosecution

Original article from THE LINUX FOUNDATION | 30 NOVEMBER 2022

Patcepta is a new open source rules engine for improving patent prosecution and management through automation.  Any interested party can join to help foster a new generation of IP management practices using open source software.

Unified Patents decided to work with The Linux Foundation in making the Patcepta project open source to remove critical barriers to entry that attorneys and entrepreneurs face in managing their patent portfolio. This project is the first of its kind in that it provides an open, understandable, and auditable ruleset and toolkit for enabling more efficient and innovative processes and tools for managing IP portfolios.

“We are excited to see this fundamental capability become an open source project for collaboration and shared dependency'' said Mike Dolan, Senior Vice President of Projects at the Linux Foundation. “Jurisdiction rules and a common rules engine are shared challenges faced by in-house and outside counsel trying to manage patent portfolios - a perfect opportunity to develop collaboratively and maintain in an open source community.”

“A key barrier to entry was made very clear in the beginning around docketing rules, which just in the US are over 500, while only about 80 represent almost 80% of the ones used,” said Shawn Ambwani, Co-Founder and COO of Unified Patents. “The number of rules is one of the reasons why the market is so fragmented and why the software is mainly provided as a loss leader to lock in services contracts for paying patent annuities. Another issue IP managers face is concerns associated with bad rules or missing a deadline – now the rules data and code will be transparent and open for any IP manager to see or update.  Finally, integrating such docketing software into larger processes and accounting systems makes switching costs high.  

Software providers, law firms, and even some corporations develop their code and maintain it as the rules change, which can be expensive and repetitive. 

After talking to The Linux Foundation (TLF) and a few members to gauge interest, we decided a potential course would be to help make the rules / code open source so anyone can build on top of it.  In addition, having open source allows for collaboration and updates and, most importantly, allows everyone to see the code to get confidence that it is safe to rely upon.

Ultimately, the goal is to foster better and more innovative patent management processes by eliminating a major barrier.  

Patcepta is now an official project hosted by the Linux Foundation. You can view the project here or go to www.patcepta.org. It is the first legal industry codebase, open rules data, and project ever hosted by the foundation. We hope it will not only complete publishing all the United States rules and code, but there are opportunities for the open source community to add international jurisdictions and perhaps an interface down the road.”

We hope all parties interested in making patent and IP management easier evaluate and contribute to this project and help remove docketing rules as a barrier to managing their portfolio.

An initial kickoff meeting is scheduled for early January so participants can join and help in moving this project forward or getting access to the repository.  Please contact info@patcepta.org for any questions.

Access Advance Patents Continue to Lose Validity Challenges all Over the World

Patent pools are designed to create a one-stop shop for licensing technology. Consumer products may be more successful if patent owners and implementers are able to come together and agree on licensing rates to avoid unnecessary litigation.  That is, when it works.  When it doesn't, it complicates the picture, results in unnecessary litigation and waste, quite possibly results in an unfair or unnecessary distribution of revenue, and slows adoption. 

The present-day video codec landscape is the latter.  It currently offers, at best, a fractured approach to patent licensing for multiple generations of video streaming codecs—first with HEVC (H.265), and now with VVC (H.266) & AV1.  Companies and licensors have had to navigate multiple pools and NPEs, all offering differing licensing options, rates, and portfolios—some even with overlapping licensors.  This Venn diagram shows how complicated things have become, and how no one currently offers a solution that can defray substantial risk and settle the licensing picture for would-be adopters. 

For example, Access Advance (Advance) has been one of the major pools for two successive generations of video codecs, HEVC and VVC.  Advance states that for HEVC, they offer a license to over 17,000 patents—or, by their estimation, 75%—of the total HEVC landscape. While the sheer number of patents may be impressive on its face, the validity and essentiality of their many patents are simply not up to par when those patents are critically analyzed or challenged in various jurisdictions. 

Unified Patents (“Unified”) has filed numerous challenges and written detailed analyses addressing both validity and essentiality of dozens of the patents promoted by the Advance pool all over the world, including the US, Europe, China, and Japan, and demonstrated their questionable nature. The patents below have either been directly declared to Advance or are part of a family that other members have been declared.  For instance: 

United States:

Europe:

China:

Japan:

In addition to the challenges, Unified has analyzed various Advance patents for essentiality.  The patents analyzed often fail in the most straightforward application to the standard.  Let’s look at 3 examples which Advance lists as essential on their website but seem to not be when analyzed further.

  1. ETRI  U.S. 9,838,714 (“714” ) is listed by Advance as essential to H.265 (HEVC) and is part of a family of at least 29 applications globally. But our analysis shows it is very unlikely to be.  The ‘714 patent requires that the first row or column is scanned first.  In contrast, the HEVC standard requires the opposite. See HEVC, § 7.3.8.11. 

  2. ETRI U.S. 10,575,014 (“014”) also seems to be not essential based on our analysis. The ‘014 patent creates a dependency between the prediction mode and the residual flag designating whether or not residual information was transmitted.  HEVC, in contrast, does not have such a dependency.  See HEVC, §§ 7.4.9.5, 7.3.8.8, 7.4.9.8, 9.3.3, 9.3.3.8. 

  3. GE U.S.10,250,913 (“913”), almost certainly is not essential in our analysis to implement HEVC.  During the prediction and transform encoding steps, the ’913 Patent claims dividing a picture into four using a technique called quadtrees.   HEVC does not specify quadtrees, nor any relationship between quadtree regions and sub-regions, as required by ’913. See HEVC 6.3.2, 7.3.2.2.1, 7.3.8.2, 7.3.8.4, 7.3.8.5, 7.3.8.8, 7.4.3.2.1, 7.4.9.4, 7.4.9.8,8.5.3.1, 8.6.7.

We believe this ongoing analysis reveals serious and legitimate concerns about the validity, essentiality, and even potential infringement.  Given Unified’s ongoing success in revoking or canceling Advanced patents, entities should seriously consider the true percentage of their patents that are both valid and essential.


Copyright © 2022, Unified Patents, LLC. All rights reserved.

Dolby Labs Access Advance patent challenged

On November 21, 2022, Unified filed a petition for inter partes review (IPR) against U.S. Patent 11,176,711 as part of its ongoing efforts in its SEP Video Codec Zone. Formerly owned by Intellectual Discovery Co. Ltd., the ‘711 patent is currently owned by Dolby Laboratories. The patent is a part of the Access Advance patent pool and Access Advance claims that certain claims of the '711 patent are essential to the HEVC standard.

Unified is represented by David Cavanaugh, Daniel Williams, and Jonathan Knight of WilmerHale and by in-house counsel, Roshan Mansinghani and Michelle Aspen, in this proceeding. Visit Unified’s Portal for more information about its Video Codec landscape (OPAL) and standard submission repository (OPEN). To read the petition and review the case record, view IPR2022-01508 on Unified’s Portal.

IP Edge sub, Orbit Licensing, communications patent successfully challenged

On November 18, 2022, the USPTO issued a final rejection of claims 1, 4-6, and 9-11 of U.S. Patent 9,578,040, owned and asserted by Orbit Licensing, an IP Edge entity. The '040 patent is generally directed to packet communications, including determining whether a service request is authorized or not. The '040 patent has been asserted 10 times, including against the SPF protocol (an open standard of the IETF) of several companies such as EidosMedia, Red Hat, OnApp, Akamai, Tencent, Limelight Networks, Wowza Media, CodePen, Velocix, and The MathWorks.

View district court litigation by Orbit Licensing. Unified is represented by James Stein of Lee & Hayes and by in-house counsel, Kelly Hughes and Roshan Mansinghani.

To view any documents for the reexamination proceedings on Unified's Portal, go to https://portal.unifiedpatents.com/exparte/90014897.