Last Week at the PTAB: Comcast Denied Petitions Against Rovi; Priceline.com Wins Six Joinder Motions

During the week of June 10, the Patent Trial and Appeal Board (PTAB) issued institution decisions for 21 petitions seeking inter partes review (IPR) proceedings to challenge the validity of patents. In all, the PTAB instituted seven IPRs, denied eight, and terminated another six after granting motions for joinder. That latter group of IPRs were petitioned by Priceline.com and Booking.com, both of whom were successful in joining Shopify IPRs challenging the validity of three patents owned by DDR Holdings. The most IPR denials last week were issued to Comcast, but those petitions were denied in large part because they all challenged a patent which already had a pending IPR proceeding instituted against it. Other successful petitions at the PTAB included three IPRs instituted for 3Shape A/S, two IPRS instituted for ASM IP Holding, and one instituted for Cook Incorporated.

Comcast Cable Communications, LLC v. Rovi Technologies Corp.

On June 10, a panel of PTAB administrative patent judges (APJs) denied institution to a series of five petitions for IPR proceedings filed by Comcast to challenge Rovi’s U.S. Patent No. 9578363, Content Access. This patent has been asserted by Rovi against Comcast both in the Central District of California as well as in a Section 337 investigation at the U.S. International Trade Commission (ITC). However, far from escaping a validity challenge, these five IPRs were denied because another IPR on the ‘363 patent was instituted by the same APJ panel the previous week.

In denying these five IPRs via the panel’s authority to exercise discretion under 35 U.S.C. § 314, the APJ panel noted that claims 1 through 20 of the ‘363 patent were challenged by the five terminated IPRs and the IPR that was instituted. In early April, the panel asked Comcast to provide a notice ranking the six IPR petitions in the order they should be considered and the IPR instituted last week was ranked first by Comcast’s response. Because of the overlap in the claims challenged as well as the prior art references used to challenge the claims, the PTAB denied the five IPR petitions because of the inefficiencies and costs associated with the extra IPR proceedings.

Priceline.com LLC and Booking.com B.V. v. DDR Holdings, LLC

On June 10, an APJ panel terminated a series of six petitions for IPR filed by Priceline.com and Booking.com after granting motions to join those petitions with already instituted IPR proceedings that were filed by Shopify. Each of the three patents challenged have been asserted by DDR Holdings in pending litigation ongoing in the District of Delaware.

In IPR2019-00435 , petitioners challenged claims of U.S. Patent No. 9639876, Method and Computer System for Serving Commerce Information of an Outsource Provider in Connection With Host Web Pages Offering Commercial Opportunities. Claims have been challenged for Section 102(a) novelty based on a 1996 publication on electronic commerce (“Loshin”) and Section 103(a) obviousness based on Loshin in combination with either a collection of e-commerce web pages (“InfoHaus Documents”) or U.S. Patent No. 6330575, Web Commerce Tool Kit for Distributed Payment Processing (“Moore”). The same prior art references are also asserted in IPR2019-00436 , which challenges claims of DDR’s U.S. Patent No. 9043228, Specially Programmed Computer Server Serving Pages Offering Commercial Opportunities for Merchants Through Coordinated Offsite Marketing, as well as IPR 2019-00437 , which challenges claims of U.S. Patent No. 8515825, Method of Expanding Commercial Opportunities for Internet Websites Through Coordinated Offsite Marketing.

The other IPRs filed by petitioners challenge the same three DDR patents from the earlier IPRs. In IPR2019-00438 , petitioners challenged claims of the ‘876 patent, IPR2019-00439 challenges claims of the ‘228 patent and IPR2019-00440 challenges claims of the ‘825 patent. In each IPR, claims are challenged for novelty by Moore, for obviousness by a collection of web pages from global ecommerce firm Digital River (“Digital River Publications”) or for obviousness by the combination of Moore with either the Digital River Publications or U.S. Patent No. 6016504, Method and System for Tracking the Purchase of a Product and Services Over the Internet (“Arnold”).

3Shape A/S and 3Shape Inc. v. Align Technology, Inc.

On June 11, the PTAB instituted three IPR proceedings challenging claims from two patents held by Align Technology. Both patents have been asserted by Align Technology in litigation ongoing at the ITC as well as in the District of Delaware.

Two of 3Shape’s instituted IPRs target U.S. Patent No. 8675207, Method and Apparatus for Colour Imaging a Three-Dimensional Structure. In IPR2019-00156, all 21 claims of the ‘207 patent are challenged for obviousness in light of U.S. Patent Application No. 20060001793, same title as the ‘207 patent (“Babayoff”) in combination with either WO Patent Application No. 2002056756, Hand-Held Digital Imaging Diagnostic and Operational Instrument With Wireless Transmission Data of Image (“Petersen”), WO Patent Application No. 2010145669, Focus Scanning Apparatus (“Fisker”) or U.S. Patent No. 6263234, Confocal Surface-Measuring Device (“Englehardt”). In IPR2019-00160 , 3Shape challenged claims of the ‘207 patent for obviousness based on combinations of Babayoff, Englehardt and Japanese Patent Application No. 2001-82935, Three-Dimensional Measurement Device (“Okamoto”), as well as Babayoff, Englehardt, Okamoto and U.S. Patent Application No. 20040197727, Method and System for Comprehensive Evaluation of Orthodontic Treatment Using Unified Workstation (“Sachdeva”).

3Shape’s IPR2019-00163 challenges claims 12 and 14 of Align Technology’s U.S. Patent No. 9101433, same title as the ‘207 patent. These claims are challenged for obviousness based on either Babayoff in view of Okamoto or Okamoto in view of Babayoff. Including IPRs instituted last week for 3Shape challenging the validity of Align’s patents, the PTAB has instituted a total of seven IPRs filed against claims of six Align patents.

ASM IP Holding B.V. v. Kokusai Electric Corporation 

On June 12, the PTAB instituted two IPRs filed by ASM IP Holding that challenge a pair of patents owned by Kokusai that have been asserted against ASM International in patent infringement proceedings ongoing in the Northern District of California. In IPR2019-00364, ASM IP challenged the validity of all 18 claims of U.S. Patent No. 7033937, Apparatus and Method for Use in Manufacturing a Semiconductor Device. Claims are challenged as being anticipated by Japanese Patent Application No. H-251391 , Plasma Processing Device for Semiconductor Wafers (“Shimada”) or for obviousness based on the combination of Shimada with either a 1998 publication on tantalum pentoxide thin films for advanced dielectric applications (“Chaneliere”), Chaneliere and a 1995 study on structures of various tantalum oxide capacitor films (“Kimura”), or U.S. Patent No. 6450116, Apparatus for Exposing a Substrate to Plasma Radicals (“Noble”). This IPR also includes other obviousness challenges based on Japanese Patent Application No. H7-94419, Semiconductor Processing Device (“Watanabe”) with European Patent Application No. 0843347, Method and Apparatus for Processing a Semiconductor Substrate (“Sivaramakrishnan”), Sivaramakrishnan and U.S. Patent No. 6268288, Plasma Treated Thermal CVD of TaN Films from Tantalum Halide Precursors (“Hautala”), or Sivaramakrishnan and Chaneliere.

In IPR2019-00375, ASM IP challenged the validity of all 16 claims of Kokusai’s U.S. Patent No. 6576063, Apparatus and Method for Use in Manufacturing a Semiconductor Device. Claims of this patent are alleged to be anticipated by Shimada or rendered obvious by Shimada alone or prior art combinations including Shimada and Noble, Watanabe and Sivaramakrishnan, or Watanabe, Sivaramakrishnan and Kimura.

Red Hat, Inc., Dell, Inc., et. al. v. Electronics & Telecommunications Research Institute

On June 13, the PTAB denied institution to a petition for IPR filed by a group of tech firms including Red Hat, Dell, EMC Corporation and Hewlett Packard Enterprises. The petition was filed to challenge Electronics & Telecommunications Research Institute’s (ETRI) U.S. Patent No. 6718436, Method for Managing Logical Volume in Order to Support Dynamic Online Resizing and Software Raid and to Minimize Metadata and Computer Readable Medium Storing the Same. This patent has been asserted against the petitioners in various cases filed in the District of Delaware.

The petition had challenged all 14 claims of the ‘436 patent for obviousness based on various combinations of prior art including a 1998 handbook on HP-UX system administration (“HP-UX Handbook”), U.S. Patent No. 6574705, Data Processing System and Method Including a Logical Volume Manager for Storing Logical Volume Data (“Peloquin”), U.S. Patent No. 6542962, Multiple Processor Data Processing System With Mirrored Data for Distributed Access (“Kodama”), U.S. Patent No. 6185666, Merging Computer Partitions (“Murray”) and a 1992 manual on the HP-UX system for HP9000 computers (“HP-UX Manual”). In denying the IPR, the APJ panel found that the petitioners didn’t show the existence in prior art of a logical mapping table in a disk partition where information is stored in tabular format or structure.

Cook Incorporated v. Medtronic, Inc.

On June 11, the PTAB instituted an IPR proceeding petitioned by Cook Incorporated to challenge the validity of all 22 claims of Medtronic’s U.S. Patent No. 6306141, Medical Devices Incorporating SIM Alloy Elements. The ‘141 patent is asserted in two cases in the Northern District of California and it is also the subject of two other IPR proceedings. The claims have been challenged for obviousness based on prior art combinations including both a 1989 medical journal publication on new techniques in arterial endoprostheses (“Cragg”) and U.S. Patent No. 4490112, Orthodontic System and Method (“Tanaka”). Cook’s obviousness challenges rely on Cragg and Tanaka in combination with either a 1970 paper on stress-induced pseudoelasticity in ternary Cu-Zn based beta prime phase alloys (“Pops”) or a 1982 paper on shape memory and super-elasticity effects in NiTi alloys (“Suzuki”).

Health Care Logistics, Inc. v. Kit Check, Inc.

On June 11, the PTAB denied institution to an IPR petitioned by Health Care Logistics to challenge 12 claims of Kit Check’s U.S. Patent No. 9367665, Management of Pharmacy Kits. This patent has been asserted in litigation between these two parties and filed in the Southern District of Ohio. Health Care Logistics had asserted various obviousness challenges based on U.S. Patent No. 7175081, Pharmaceutical Tracking (“Andreasson”) in combination with U.S. Patent Application No. 20080316045, Intelligent Medical Material Chart (“Sriharto”) and U.S. Patent No. 7268684, Workstation RFID Reader for Surgical Instruments and Surgical Instrument Trays and Methods of Using Same (“Tethrake”), as well as the combination of Andreasson, Sriharto, Tethrake and U.S. Patent Application No. 20080184719, Intelligent Refrigerator for Storing Pharmaceutical Product Containers (“Lowenstein”).

The denied petition also included obviousness challenges based on U.S. Patent Application No. 20070150382, System and Method for Pharmaceutical Management and Tracking (“Danilewitz”) in combination with a 2008 article published in RFID Journal  on the use of RFID to track implantables (“Children’s) and U.S. Patent Application No. 20090224891, Intelligent RFID Information Management System (“Vishik”), as well as the combination of Danilewitz, Children’s, Vishik and U.S. Patent No. 7348884, RFID Cabinet (“Higham”). The PTAB denied the IPR after determining that petitioner hadn’t successfully proven why a person skilled in the art would have modified the prior art to “verify a pharmacy kit” as set out in the ‘665 patent. Including IPRs denied last week by the PTAB, this is the fifth denial issued to a petition from Health Care Logistics challenging a patent owned by Kit Check.

MindGeek USA Inc. v. University of Southern California

On June 12, the PTAB denied institution to an IPR petitioned by MindGeek USA and several related entities that had challenged the validity of all 26 claims of the University of Southern California’s (USC) U.S. Patent No. 6574638, Method and Apparatus for Cataloguing Multimedia Data Using Surveying Data. The PTAB denied this IPR as time-barred under 35 U.S.C. § 315(b) as the exclusive licensee of the ‘638 patent, Preservation Technologies, served MindGeek with a complaint for patent infringement in October 2014, several years before this IPR petition was filed in December 2018. MindGeek had argued that, pursuant to the PTAB’s decision this January in Sling TV L.L.C. v. Realtime Adaptive Streaming, LLC, the Section 315(b) time bar is only triggered if a patent owner serves the petitioner with the infringement complaint. However, the PTAB applied the Court of Appeals for the Federal Circuit’s ruling in Click-to-Call Technologies, L.P. v. Ingenio, Inc. (2018), agreeing with patent owner USC that the Federal Circuit had already considered the exact fact pattern at issue in this IPR petition.