“The PTAB disagreed with Qualcomm that these were serial petitions because they were filed within days of each other, not after one of the petitions had first failed.”
Last week, the Patent Trial and Appeal Board (PTAB) issued 39 decisions regarding petitions for inter partes review (IPR) patent validity proceedings, instituting 26. Eight of those proceedings involve major tech firms Samsung, ZTE, Huawei and LG Electronics, all of which won on motions to join previous Google IPRs filed to challenge a pair of Cywee Group patents. Qualcomm also faces a trio of IPRs brought by Intel to challenge the validity of a patent involved in the now-settled legal battle with Apple.
Intel Corporation v. Qualcomm Incorporated
On July 9 and 10, a panel of administrative patent judges (APJs) at the PTAB instituted a series of three IPR proceedings filed by Intel to challenge Qualcomm’s U.S. Patent No. 9154356, Low Noise Amplifiers for Carrier Aggregation. The ‘356 patent is part of Qualcomm’s portfolio that is involved in its longstanding legal battle with Apple both at the International Trade Commission (ITC) and in the Southern District of California. Along with the three IPRs instituted this week, the PTAB instituted another two review proceedings petitioned by Intel on the ‘356 patent in late May.
Both IPR2019-00048 and IPR2019-00049 primarily rely on two pieces of prior art asserted by Intel: a 2008 technical paper describing the architecture of a CMOS programmable phased-array receiver (“Jeon”) and U.S. Patent Application No. 20100237947, Amplifier Supporting Multiple Gain Modes (“Xiong”). The ‘048 petition challenges claims 2 through 8 and 11 of the ‘356 patent on Section 103 obviousness grounds based on Jeon and Xiong as well as Jeon, Xiong and a 2009 feasibility study from the 3rd Generation Partnership Project on advancements to LTE-Advanced networks (“Feasibility Study”). The ‘049 petition challenges claims 1, 9, 10, 17 and 18 of the ‘356 patent on obviousness grounds based on combinations of Jeon, Xiong and the Feasibility Study along with a 2010 IEEE paper describing an RF passive attenuator for mobile TV applications (“Youssef”). In instituting these IPRs, the PTAB disagreed with Qualcomm that these were serial petitions because they were filed within days of each other, not after one of the petitions had first failed. The PTAB agreed with Intel’s assertions that it would have been obvious to combine the first and second amplifier stages of Jeon with the enabling/disabling capability in Xiong.
In IPR2019-00047, Intel challenged claims 1, 11, 17 and 18 of the ‘356 patent on Section 102 novelty grounds in light of U.S. Patent Application No. 20110217945, Dual Carrier Amplifier Circuits and Methods (“Uehara”). Intel also made obviousness challenges based on combinations of Uehara, the Feasibility Study, Youssef and a 2008 IEEE paper on low-noise amplifiers for multi-band operations (“Perumana”). Qualcomm also moved to have this IPR dismissed under the PTAB’s Section 314(a) discretion because Intel’s petitions relied on overlapping claims with redundant prior art references as well as the fact that the three Intel IPRs decided this week all include the Feasibility Study, but the PTAB found no reason to dismiss.
Samsung Electronics Co., Ltd. v. Cywee Group Ltd.
ZTE (USA), Inc. v. Cywee Group Ltd.
On July 12, the PTAB granted motions for joinder in four IPR petitions—two filed by Samsung and two by ZTE. Each of the petitioners challenge two of Cywee Group’s patents involved in several district court proceedings: U.S. Patent No. 8441438, 3D Pointing Device and Method for Compensating Movement Thereof; and U.S. Patent No. 8552978, 3D Pointing Device and Method for Compensating Rotations of the 3D Pointing Device Thereof. All four petitions have been joined to IPRs previously instituted on those patents and petitioned by Google.
Samsung’s IPR2019-00535 and ZTE’s IPR2019-00526 both challenge claims 1 and 3 through 5 of the ‘438 patent on Section 103(a) obviousness grounds based on the combination of U.S. Patent Application No. 20040095317, Method and Apparatus of Universal Remote Pointing Control for Home Entertainment System and Computer (“Zhang”) and U.S. Patent No. 7089148, Method and Apparatus for Motion Tracking of an Articulated Rigid Body (“Bachmann”). Petitioners argued that it would be obvious to combine the 3D pointing device in Zhang with the additional rotational sensors and method for compensating rotations taught by Bachmann.
Samsung’s IPR2019-00534 and ZTE’s IPR2019-00525 challenge claims 10 and 12 of the ‘978 patent on Section 103(a) grounds based on the combination of Zhang and Bachmann as well as the combination of Bachmann and U.S. Patent No. 7158118, 3D Pointing Devices With Orientation Compensation and Improved Usability (“Liberty”). These IPR petitions contain the same obviousness argument on the Zhang and Bachmann combination along with an argument that it would have been obvious to combine the sensors of Bachmann with the motion sensing handheld system of Liberty.
In other proceedings decided the same day, the PTAB also granted motions for joinder in IPRs petitioned by Huawei and LG Electronics on the ‘438 and ‘978 patents, increasing the total number of IPRs joined to the original Google IPRs to four in the case of both patents.
Kingston Technology Company, Inc. v. SecureWave Storage Solutions, Inc.
Unified Patents, Inc. v. SecureWave Storage Solutions, Inc.
On July 11, the PTAB denied institution of an IPR filed by Kingston to challenge claims of SecureWave’s U.S. Patent No. 7036020, Methods and Systems for Promoting Security in a Computer System Employing Attached Storage Devices. In IPR2019-00494, Kingston challenged the ‘020 patent on Section 103 grounds primarily based on the combination of U.S. Patent No. 7155615, Method and Apparatus for Providing a Secure-Private Partition on a Hard Disk Drive of a Computer System Via IDE Controller (“Silvester”), and U.S. Patent No. 7155616, Computer Network Comprising Network Authentication Facilities Implemented in a Disk Drive (“Hamlin”). In denying the IPR, the PTAB found that Hamlin didn’t disclose that a master authority record is stored in a security partition on the storage device as required by the ‘020 patent.
However, on July 12, the PTAB decided to institute a different IPR also challenging claims of SecureWave’s ‘020 patent based on a petition from Unified Patents. In IPR2019-00501, Unified challenged claims 1 through 5 of the ‘020 patent based on a few combinations of asserted prior art, ultimately making the most successful argument based on the combination of U.S. Patent No. 6931503, Protected Storage Device for Computer System (“Robb”), U.S. Patent No. 5623637, Encrypted Data Storage Card Including Smart Card Integrated Circuit for Storing an Access Password and Encryption Keys (“Jones”) and U.S. Patent No. 6081893, System for Supporting Secured Log-In of Multiple Users Into a Plurality of Computers Using Combined Presentation of Memorized Password and Transportable Passport Record (“Grawrock”). The PTAB agreed with Unified’s argument that a person skilled in the art would have been motivated to place the master authority record in Grawrock in the special partition from Robb to better secure the data.
Blast Motion, Inc. and Taylormade Golf Company, Inc. v. Newspin Sports LLC
On July 8, the PTAB denied institution to a series of IPR petitions filed by Blast Motion and Taylormade to challenge a trio of patents owned by Newspin Sports: U.S. Patent No. 9656122, Motion Capture and Analysis; U.S. Patent No. 8831905, same title as the ‘122 patent; and U.S. Patent No. 8589114, same title as the ‘122 patent. The patents, which cover motion sensor technologies designed to track the full swing of motion for a golf club in order to improve a player’s swing, have been asserted against the petitioners in a Southern District of California lawsuit.
The three IPR petitions involve various pieces of asserted prior art but, in all three, petitioners primarily relied upon two combinations of prior art that are the focus of IPR2019-00536 . The first combination is U.S. Patent Application No. 20050261073, Method and System for Accurately Measuring and Modeling a Sports Instrument Swinging Motion (“Farrington”) and WO Patent Application No. 2000029075, Golf Swing Frequency Analyzer (“Hackman”). The PTAB wasn’t persuaded by petitioners’ arguments based on this combination, siding with Newspin Sports in finding that Farrington disparages the idea of mounting swing analysis devices on the outside of golf clubs. Farrington teaches that those devices can distort a swing through added air resistance.
The other combination of prior art asserted by Blast Motion and Taylormade includes U.S. Patent Application No. 20070206837, Portable Swing Analyzer (“Kirby”) and GP Patent No. 2430890, Swing Performance Analysis Device (“Kimber”). Petitioners had argued that a person skilled in the art would have had reason to use an accelerometer-based device as taught by Kimber located adjacent to the golf club grip as taught by Kirby. However, the PTAB found that Kirby disparaged the combination. Although Kirby teaches the optional inclusion of accelerometer devices, it doesn’t discuss the purpose it would serve. Further, Kirby discusses defects of systems using accelerometers because they require alignment that is extremely problematic for golfers trying to position the unit themselves and because accelerometers, as analog devices, can’t operate at sample rates high enough to capture the contact time between the club head and the ball.
IPRs Instituted Week Ending Friday, July 12
IPR2019-00054: Apple, Inc. v. Uniloc 2017 LLC – U.S. Patent No. 6304612, Transmission System Having a Simplified Channel Decoder
IPR2019-00148: 3Shape A/S v. Align Technology, Inc. – U.S. Patent No. 9451873, Automatic Selection and Locking of Intraoral Images
IPR2019-00311: Canon Inc. v. Avigilon Fortress Corporation – U.S. Patent No. 7932923, Video Surveillance System Employing Video Primitives
IPR2019-00314: Canon Inc. v. Avigilon Fortress Corporation – the ‘923 patent
IPR2019-00361: Alphatec Holdings Inc. v. NuVasive, Inc. – U.S. Patent No. 8187334, System and Methods for Spinal Fusion
IPR2019-00362: Alphatec Holdings Inc. v. NuVasive, Inc. – U.S. Patent No. 8361156, same title as the ‘334 patent
IPR2019-00546: Alphatec Holdings Inc. v. NuVasive, Inc. – the ‘334 patent
IPR2019-00381: Intervet International, B.V. v. Boehringer Ingelheim Vetmedica, Inc. – U.S. Patent No. 9669087, Use of a PCV2 Immunogenic Composition for Lessening Clinical Symptoms in Pigs
IPR2019-00405: Cardiovascular Systems, Inc. v. Shockwave Medical, Inc. – U.S. Patent No. 8956371, Shockwave Balloon Catheter System
IPR2019-00409: Cardiovascular Systems, Inc. v. Shockwave Medical, Inc. – U.S. Patent No. 8728091, Shockwave Catheter System With Energy Control
IPR2019-00431: Clear-Vu Lighting LLC v. University of Strathclyde – U.S. Patent No. 9839706, Inactivation of Gram-Positive Bacteria
IPR2019-00489: Niantic, Inc. v. Blackbird Tech LLC – U.S. Patent No. 9802127, Video Game Including User Determined Location Information
IPR2019-00492: Niantic, Inc. v. Blackbird Tech LLC – the ‘127 patent
IPR2019-00502: Murata Manufacturing Co., Ltd. v. Inergetic AB – U.S. Patent No. 6467349, Arrangement for Measuring Angular Velocity
IPRs Denied Week Ending Friday, July 12
IPR2019-00374: Intervet International, B.V. v. Boehringer Ingelheim Vetmedica, Inc. – U.S. Patent No. 9610345, Use of a PCV2 Immunogenic Composition for Lessening Clinical Symptoms in Pigs
IPR2019-00425: Xerox Corporation v. Midwest Athletics and Sports Alliance LLC – U.S. Patent No. 7502582, Method and Apparatus for Printing Using a Tandem Electrostatographic Printer
IPR2019-00467: Red Hat, Inc. v. Electronics and Telecommunications Research Institute – 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
IPR2019-00475: Ivantis, Inc. v. Glaukos Corporation – U.S. Patent No. 6626858, Shunt Device and Method for Treating Glaucoma
IPR2019-00480: Unified Patents Inc. v. Uniloc 2017 LLC – U.S. Patent No. 8606856, Digital Media Asset Identification System and Method
IPR2019-00483: Ivantis, Inc. v. Glaukos Corporation – U.S. Patent No. 9827143, Shunt Device and Method for Treating Ocular Disorders
IPR2019-00529: Mexichem UK Ltd v. The Chemours Company FC, LLC – U.S. Patent No. 8147709, Compositions Comprising 3,3,3-trifluoropropyne
IPR2019-00638: Kingston Technology Company, Inc. v. Memory Technologies, LLC – U.S. Patent No. 7827370, Partial Permanent Write Protection of a Memory Card and Partially Permanently Write Protected Memory Card
IPR2019-00647: Polycom, Inc. v. FullView, Inc. – U.S. Patent No. 6128143, Panoramic Viewing System With Support Stand