Last Week at the PTAB: Apple Loses Joinder Motion, Comcast and Flywheel Succeed on Petitions, IBM Escapes Expedia Challenge

Last week, the Patent Trial and Appeal Board (PTAB) issued 51 institution decisions, with denials narrowly edging out institutions by a 26-25 margin. In a decision on six Apple petitions, the PTAB terminated the consumer electronics giant’s challenges as time-barred; Apple had sought joinder to an already-terminated proceeding brought by Samsung. Elsewhere, Apple did successfully team up with Samsung and LG Electronics to challenge two patents owned by non-practicing entity Uniloc. Comcast had five petitions challenging a Rovi patent denied, but succeeded on one petition, which included seven obviousness challenges on that same Rovi patent. Expedia and various Internet travel booking websites lost out on a challenge to an IBM patent based on arguments already considered by the PTAB. Peloton Interactive also faces the potential invalidation of claims of three patents after a trio of successful institutions for Flywheel Sports.

Apple Inc. v. IXI IP, LLC

On June 3, a panel of PTAB administrative patent judges (APJs) denied institution to six petitions for inter partes review (IPR) proceedings that were filed by Apple Inc. Each of the six IPR petitions challenged the validity of claims from IXI IP’s U.S. Patent No. 7039033, System, Device and Computer Readable Medium for Providing a Managed Wireless Network Using Short-Range Radio Signals. IXI IP had asserted the ‘033 patent against Apple in a district court case first filed in October 2014. Apple had sought to join all six of its IPR petitions with a previous IPR proceeding on the ‘033 patent that was petitioned by Samsung in June 2015. The Samsung IPR led to a final decision in December 2016 holding all challenged claims unpatentable, a ruling affirmed by the Court of Appeals for the Federal Circuit this April.

The APJs denied Apple’s IPR petitions as time-barred. Although IXI IP petitioned the USPTO for ex parte reexamination of the ‘033 patent and received a reexamination certificate in February 2018, Apple’s petitions were filed more than 34 months after the Samsung IPR was instituted. Even giving Apple the benefit of the date on which the reexamination certificate was issued, the APJ panel still found that Apple’s motion for joinder on its IPR petitions was time-barred. Apple had argued that the Federal Circuit’s 2018 decision in Click-to-Call Technologies v. Ingenio provided a framework for the PTAB to institute IPRs within one year of the issue of a reexamination certificate. However, the PTAB found that Click-to-Call didn’t apply the one-year time-bar because the district court case was voluntarily dismissed without prejudice, not because a reexamination certificate was issued.

Comcast Cable Communications, LLC v. Rovi Technologies Corporation

Also on June 3, the PTAB issued institution decisions on six IPR petitions filed by Comcast, each of which challenged claims of Rovi’s U.S. Patent No. 7827585, Electronic Program Guide With Digital Storage. Rovi has asserted the ‘585 patent against Comcast both in U.S. district court and at the U.S. International Trade Commission (ITC). In one decision , the APJ panel voted to deny institution to five of the IPR petitions on the ‘585 patent pursuant to its discretion under 35 U.S.C. § 314. The denial of those five IPRs was due in large part to the APJ panel deciding to institute IPR2019-00224 , which includes seven obviousness challenges for each independent claim of the ‘585 patent. In the instituted IPR, Comcast primarily relied upon prior art reference U.S. Patent No. 6177931, Systems and Methods for Displaying and Recording Control Interface With Television Programs, Video, Advertising Information and Program Scheduling Information (“Alexander”). Comcast’s validity challenges relied on Alexander alone or in combination with UK Patent Application No. 2298544, Multi-Lingual Television; Recording a Plurality of Television Programmes Simultaneously; Dial-Up Television (“Malik”); U.S. Patent No. 5887115, Method and Apparatus for Implementing a Video Tape Recorder for Recording Digital Video Signals Having Either a Fixed or Variable Data Transmission Rate (“Boyce”); U.S. Patent No. 6252834, Optical Disc Device and Optical Disc Discriminating Method (“Kumagai”); or WO Patent Application 1992022983, Large Capacity, Random Access, Multi-Source Recorder Player (“Browne”).

Then on June 7, a different panel of APJs instituted IPR2019-00284 , which was brought by Comcast to challenge claims of Rovi’s U.S. Patent No. 9578363, Content Access. The ‘363 patent was also asserted by Rovi against Comcast in district court and at the ITC, although Rovi has since moved to terminate the portion of the ITC proceedings related to the ‘363 patent. Comcast’s validity challenge in this IPR primarily relies on prior art reference U.S. Patent Application No. 20080141317, Systems and Methods for Media Source Selection and Toggling (“Radloff”). Comcast’s challenges are based on Radloff alone or Radloff in combination with a 2007 publication on optimizing channel switching for digital television through low quality streams (“Wachter”); U.S. Patent Application No. 20080301749, Selection of Electronic Content and Services (“Harrar”); or U.S. Patent Application No. 20070101370, Television Program Selection (“Calderwood”).

Apple Inc., LG Electronics Inc., Samsung Electronics Co. Ltd. v. Uniloc 2017 LLC

On June 4, the PTAB instituted two IPR proceedings petitioned by Apple, LG Electronics and Samsung to challenge Uniloc’s U.S. Patent No. 7167487, Network With Logic Channels and Transport Channels. Uniloc has asserted the ‘487 patent against the petitioners and several other defendants in U.S. district court. Both IPR petitions assert the same series of prior art references, including two technical medium access control (MAC) specifications made effective in 2000 by the 3rd Generation Partnership Project (3GPP), a discussion paper on MAC channel prioritization from a January 2001 3GPP meeting, and U.S. Patent No. 6850540, Packet Scheduling in a Communications System (“Peisa”). In IPR2019-00222 , petitioners challenged claims 1 through 6 of the ‘487 patent, and in IPR2019-00252 , petitioners challenged claims 11 through 13 of the ‘487 patent.

Flywheel Sports, Inc. v. Peloton Interactive, Inc.

On June 5, the PTAB instituted three IPR proceedings filed by Flywheel Sports to challenge claims from patents that have been asserted against it in district court by Peloton Interactive. In IPR2019-00294 , Flywheel is challenging U.S. Patent No. 6850540, Packet Scheduling in a Communication System. In IPR2019-00295 , Flywheel is challenging U.S. Patent No. 9233276, Exercise System and Method. In IPR2019-00564 , Flywheel is challenging U.S. Patent No. 9861855, same title as the ‘276 patent. In all three IPRs, Flywheel’s validity challenges primarily rely upon U.S. Patent No. 7628730, Methods and Systems for Controlling an Exercise Apparatus Using a USB Compatible Portable Remote Device (“Watterson”) and U.S. Patent Application No. 20090233769, Motivation and Enhancement of Physical and Mental Exercise, Rehabilitation, Health and Social Interaction (“Pryor”). Flywheel relies on Pryor alone, Watterson alone or Watterson in combination with U.S. Patent No. 7874957, Apparatus for Measuring Exercise Performance (“Hurwitz”) or WO Patent Application No. 2005087323, Sports Training Equipment (“Elshout”).

Toyota Motor Corporation v. General Electric Company

On June 4, an PTAB panel decided to institute IPR2019-00011 , petitioned by Toyota to challenge GE’s U.S. Patent No. 7723932, Propulsion System. There are no district court proceedings between these parties related to the ‘932 patent. Toyota’s validity challenges rely primarily upon prior art references U.S. Patent Application No. 20040069548, Hybrid Vehicle (“Kira”) and Japan Patent Application No. 2004260904, Front and Rear Wheel Driver, Method for Driving Motor in the Same and Computer Readable Recording Medium Stored With Program for Making Computer Perform Drive of Motor (“Yamada”). Toyota’s challenges based on Kira rely on Kira alone or in combination with U.S. Patent Application No. 20030150352, Hybrid Energy Off Highway Vehicle Electric Power Storage System and Method (“Kumar”); U.S. Patent Application No. 20060164034, Hybrid Vehicle Equipped With a Variable Voltage Battery (“Hanyu”); or Japan Patent Application No. H11-176487 , Electric Automobile Battery Temperature Regulation Device and Regulation Method (“Masahiko”). Toyota’s challenges based on Yamada rely on Yamada alone or in combination with Hanyu; Japan Patent Application No. 2003134606 , Drive Device for Hybrid Vehicle and Control Method for Same (“Katsuta”); or Japan Patent Application No. 2006115693, Battery-Driven Railroad Train (“Suzuki”).

Expedia, Homeaway.com, Hotels.com et. al. v. International Business Machines Corporation

On June 5, an APJ panel denied institution in IPR2019-00404 , which sought to challenge the validity of IBM’s U.S. Patent No. 7631346, Method and System for a Runtime User Account Creation Operation Within a Single-Sign-On Process in a Federated Computing Environment. The ‘346 patent had been previously asserted by IBM against Expedia in the District of Delaware and several petitioners had already challenged the patent through an IPR petition that was denied institution this April. Petitioners’ validity challenge primarily relies upon prior art reference U.S. Patent Application No. 20030163733, System, Method and Apparatus for Federated Single Sign-On Services (“Barriga-Caceres”) in combination with either Japan Patent Application No. 2004302907, Network Device and Authentication Server (“Sunada”) or U.S. Patent No. 7680819, Managing Digital Identity Information (“Mellmer”). The PTAB denied institution through its discretion under 35 U.S.C. § 325(d) as the PTAB had previously considered the same challenges to claim 1 of the ‘346 patent by the same petitioners in a separate IPR proceeding.

Listed below are the remaining PTAB Institutions and Denials from last week.

IPRs Instituted Week Ending Friday, June 7

IPR2019-00125: 3Shape A/S v. Align Technology, Inc. – U.S. Patent No. 7112065, Method for Defining a Finish Line of a Dental Prosthesis

IPR2019-00153: 3Shape A/S v. Align Technology, Inc. – U.S. Patent No. 6334853, Method for Obtaining a Dental Occlusion Map

IPR2019-00154 and IPR2019-00157: 3Shape A/S v. Align Technology, Inc. – U.S. Patent No. 8363228, Method and Apparatus for Colour Imaging a Three-Dimensional Structure

IPR2019-00155 and IPR2019-00159: 3Shape A/S v. Align Technology, Inc. – U.S. Patent No. 8451456, same title as ‘228 patent

IPR2019-00271: Agilent Technologies, Inc. v. Bio-Rad Laboratories, Inc. – U.S. Patent No. 7148043, Systems and Methods for Fluorescence Detection With a Movable Detection Module

IPR2019-00329: Dr. Reddy’s Laboratories S.A. v. Indivior UK Limited – U.S. Patent No. 9687454, Sublingual and Buccal Film Compositions

IPR2019-00346: Lornic Design Inc. v. Humboldt B.V. – U.S. Patent No. 9433225, Brush Element, Assembly, Brushing Device and Methods of Coupling and Uncoupling

IPR2019-00205 and IPR2019-00206: Cook Incorporated v. Medtronic Vascular, Inc. – U.S. Patent No. 7264632, Controlled Deployment Delivery System

IPR2019-00144: Cooler Master Co., LTD v. Aavid Thermalloy LLC – U.S. Patent No. 7066240, Integrated Circuit Heat Pipe Heat Spreader With Through Mounting Holes

IPR2019-00146: Cooler Master Co., LTD v. Aavid Thermalloy LLC – U.S. Patent No. 7100679, same title as ‘240 patent

IPR2019-00334 and IPR2019-00338: Cooler Master Co., LTD v. Aavid Thermalloy LLC – U.S. Patent No. 7100680, same title as ‘240 patent

IPR2019-00208: C. R. Bard, Inc. v. Medline Industries, Inc. – U.S. Patent No. 9808400, Catheter Tray, Packaging Systems, and Associated Methods

IPR2019-00223: C. R. Bard, Inc. v. Medline Industries, Inc. – U.S. Patent No. 9808596, same title as ‘400 patent

IPRs Denied Week Ending Friday, June 7

IPR2019-00328: Dr. Reddy’s Laboratories S.A. v. Indivior UK Limited – U.S. Patent No. 9687454, Sublingual and Buccal Film Compositions

IPR2019-00385: Health Care Logistics, Inc. v. Kit Check, Inc. – U.S. Patent No. 9058412, Management of Pharmacy Kits

IPR2019-00388: Health Care Logistics, Inc. v. Kit Check, Inc. – U.S. Patent No. 9805169, same title as ‘412 patent

IPR2019-00376: Health Care Logistics, Inc. v. Kit Check, Inc. – U.S. Patent No. 8990099, same title as ‘412 patent

IPR2019-00387: Health Care Logistics, Inc. v. Kit Check, Inc. – U.S. Patent No. 9058413, same title as ‘412 patent

IPR2019-00235 and IPR2019-00236: Axis Communications AB v. Avigilon Fortress Corporation – U.S. Patent No. 7868912, Video Surveillance System Employing Video Primitives

IPR2019-00130: Foundation Medicine, Inc. v. Guardant Health, Inc. – U.S. Patent No. 9598731, Systems and Methods to Detect Rare Mutations and Copy Number Variation

IPR2019-00162: E-One, Inc. v. Oshkosh Corporation – U.S. Patent No. 9814915, Quint Configuration Fire Apparatus

IPR2019-00419: LinkedIn Corporation v. DiStefano Patent Trust III, LLC – U.S. Patent No. 8768760, Reciprocal Linking Arrangement Between Web Pages

IPR2019-00333: Cooler Master Co., LTD v. Aavid Thermalloy LLC – U.S. Patent No. 7100679, Integrated Circuit Heat Pipe Heat Spreader With Through Mounting Holes

IPR2019-00367: Neology, Inc. v. STAR Systems International, Ltd. – U.S. Patent No. 9842233, Switchable Radio-Frequency Identification Tag Device

IPR2019-00460: ZTE (USA) Inc. v. SEVEN Networks LLC – U.S. Patent No. 9516127, Intelligent Alarm Manipulator and Resource Tracker

IPR2019-00169: Live Power Intelligence v. Genscape Intangible – U.S. Patent No. 7088090, Apparatus and Method for Monitoring Power and Current Flow

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