On Monday, February 5th, Finnish enterprise cybersecurity solutions firm SSH Communications Security announced that it had entered into a patent cross-license and settlement agreement with Japanese electronics conglomerate Sony Corporation (NYSE:SNE). The agreement reportedly resolves all patent disputes between the two companies after Sony successfully challenged the validity of two U.S. patents owned by SSH Communications at the Patent Trial and Appeal Board (PTAB).
SSH Communication’s patent enforcement campaign against Sony began in May 2015 when SSH filed a patent infringement action in a German district court, asserting a European patent covering Internet communications technology for use in mobile devices and certain network equipment. Although SSH did not file any patent infringement actions against Sony or any other entity in U.S. district court, Sony challenged the validity of two U.S. patents held by SSH by filing petitions for inter partes review (IPR) proceedings at the PTAB. Those patents include:
- U.S. Patent No. 8544079, titled Method and Arrangement for Providing Security Through Network Address Translations Using Tunneling and Compensations. Issued in September 2013, it covered a method of maintaining communication of datagrams by communicating those datagrams to a device via a network address translator device and maintaining mapping for the network address translation by sending a keepalive packet from the device to the network address translator device.
- U.S. Patent No. 9071578, titled Maintaining Network Address Translations. Issued in June 2015, it claimed a method of maintaining network address translations which is designed to improve the conversion of packets which are transmitted between devices utilizing different protocols, such as IPv4 and IPv6.
Sony filed an IPR petition in September 2015 to challenge the validity of the ‘079 patent on grounds of 35 U.S.C. § 103 for obviousness. The IPR was instituted in April 2016 and in April 2017, the panel of administrative patent judges (APJs) issued a final written decision finding that claims 1 through 32 of the ‘079 patent were invalid under Section 103. SSH’s ‘578 patent was targeted in an IPR petition filed by Sony in June 2016, again challenging validity on Section 103 obviousness grounds, and the PTAB panel on the case instituted the IPR in December 2016. The case was terminated in September 2017 after SSH disclaimed on claims 1 through 15 of the ‘578 patent. Thus, without ever once asserting a patent claim in U.S. district court, SSH Communication lost each of the 47 patent claims of the two challenged patents covering technologies closely related to SSH’s patent infringement case in Europe.
“We are pleased to finally end this dispute with Sony” SSH VP of Intellectual Property Erkki Yli-Juuti is quoted as saying in a news release regarding the agreement. “We can now fully concentrate and move forward with our other licensing efforts. SSH is aiming to enter into licensing arrangements with other companies using our patented technology.” SSH forecasts that the license agreement with Sony should have a moderate positive impact on SSH’s net profits in the first quarter of 2018.