Representative Matters

Oblon's PTAB group has served as lead post- grant counsel to some of the world's most well-known innovators, including eBay, Dupont, Cisco, Google, Oracle, Sony, PayPal, Square, Kodak and many others. Representative matters before the PTAB include:

• Google Inc. v. Rockstar Consortium (IPR2015-00090; 91; 197; 200-202; 206-7; 210-12; 215; 235-36). Filed 14 IPRs against the former Nortel patent portfolio relating to telecommunication methodologies an interfaces. (settled on behalf of client Google).
• Innolux Corp v. Semiconductor Energy Labs. (IPR2013-00028, 00038, 00060, 00064, 00065, 00066, and 00068). On behalf of Innolux Corp., challenged the semiconductor patents of Semiconductor Energy Labs (SEL). The SEL patents, some of which were unsuccessfully challenged in previous patent reexamination proceedings and successfully litigated, were directed to complex TFT semiconductors and manufacturing methodologies. Seven IPRs were filed attacking several hundred claims in total, all of which were accepted by the PTAB resulting in the finding that all claims were demonstrated as reasonably likely to be unpatentable. As a result of these IPRs, the litigation (Semiconductor Energy Laboratory Co. Ltd. v. Chimei Innolux Corporation et al. (CACD)) between the companies was stayed— and the dispute settled. This was the very first stay pending IPR in the U.S.
• K40 Electronics LLC. V. Escort Inc. (IPR2013-00203; IPR2013-00240) The first and only IPR to date to include live testimony. The PTAB found in favor of firm client K40 Electronics cancelling all challenged claims.
• Anonymous Filer v. Apple, Inc. successfully challenged a key iPhone related design patent (No. 618,677) on behalf of an anonymous filer. The '677 patent is one of three Apple Inc. smartphone design patents that Samsung Electronics Co. Ltd. has been ordered to pay $548 million for infringing. In August of 2015, the USPTO formally rejected this design as unpatentable. The team also successfully challenged another key iPhone-related design patent (No. 618,688), which is of similar scope and was also asserted in the Samsung dispute at the International Trade Commission (ITC). This dispute is ongoing.
• E.I. DuPont de Nemours and Co. v. Merck & Co., Inc. and Intervet International B.V. (Interference 106,016) Prevailed in a patent on behalf of DuPont (Senior Party 12/663,848). Case is on appeal to CAFC.
• Cisco Systems Inc. v. RPX Clearinghouse (IPR2014-01220) Settled, post-institution on behalf of client Cisco.
• Square Inc. v. REH Holdings LLC (IPR2014-00312) In a final written decision the PTAB found that all challenged independent claims of REM's patent 8,584,946 were obvious. REM filed suit against Square in January of 2014 accusing the company of infringing its patent by using certain magnetic card head readers. The District court case remains stayed pending the final review of the CAFC.
• eBay Inc. v. MoneyCat Ltd. (CBM2014-00091-93) In three final written decisions issued in September, 2015 the PTAB cancelled all of the instituted claims in MoneyCat Patents, 8,195,578; 7,590,602; and 8,051,011 directed to systems and methods of electronic payment were obvious. Money Cat filed suit against PayPal in July 2013, accusing the company of directly infringing its patents by using electronic payment systems, products and services covered by its patents. Case is on appeal to CAFC.
• Unified Patents, Inc. v. Clouding IP, LLC (IPR2013-00586) The PTAB granted a total victory for Oblon client Unified Patents finding all the challenged claims unpatentable and denying Patent Owner's Motion to Amend.
• Ericsson Inc. v. Intellectual Ventures, LLC (IPR2014-00527) successfully defended Ericsson in IPR. In a final written decision, the PTAB invalidated Intellectual Venture's wireless network security patent.
• Nissim Corp. v. Time Warner Cable, Paramount Studios; et al (IPR2014-00961 and IPR2014-00962) The Patent Trial and Appeal Board has rejected petitions by Paramount Pictures Corp. and other Hollywood studios seeking inter partes review of two DVD patents owned by Nissim Corp., ruling that the petitions failed to list all of the interested parties in the dispute.
• GSI Commerce Solutions v. Clear With Computers (CBM2013-00055) Settled on behalf of client GSI.
• Eastman Kodak Company, AGFA Corp., Esko Software BVBA and Heidelberg, USA v. CTP Innovations LLC (IPR2014-00788-91) (pending, clients are world's largest foremost graphic companies) These IPRs have stayed a multi-district litigation filed by the patentee against a significant number of small printing companies across the U.S.
• Heckeroth v. Lahm (Interference 106,016) Judgment for client Dupont- Isoxazaline formulation for mammals.
• Ariosa Diagnostics v. Isis Innovation. (IPR2012-00022, IPR2013-00250; 00276, 00277, 00308) Client Ariosa is the leading provider of noninvasive prenatal tests for genetic anomalies.
• ClearCorrect Operating, LLC v. Align Technology, Inc. PTO granted ClearCorrect LLC's bid to re-examine the Align patents related to Align Technology Inc.'s Invisalign braces, patents that were recently the subject of a U.S. International Trade Commission ruling between the parties. The patents challenged include: 6,217,325; 6,626,666; 8,070,487; 6,722,880; 7,578,674; 5,975,87; 6,398, 548.
• Sony/Sony Mobile v. Adaptix Inc. (IPR2014-01524; IPR 2014-01525) PTAB instituted trial in IPR2014-01524 as to all challenged claims of Adaptix patent 6,947,748. On May 19, 2015 all challenged claims of Adaptix patent 7,454,212 were cancelled in IPR2014-01525.
• GEA Process Engineering, Inc. v. Steuben Foods, Inc. successfully defended the patents of Steuben Foods, Inc. in five IPRs (IPR2014-00041, IPR2014-00043, IPR2014-00051, IPR2014-00054 and IPR2014-00055). The PTAB agreed with our client that the Petitioner failed to identify all real-parties-in-interest, thereby forcing the PTAB to terminate the proceedings.
• BlackBerry Corp. v. NXP B.V. (IPR2013-00232 and IPR2013-00233) The PTAB held that several claims in two patents owned by Dutch semiconductor maker NXP B.V. were invalid; finding that petitioner BlackBerry Corp. has shown the claims were either obvious or anticipated.
• SkyHawke Technologies, LLC v. L&H Concepts, LLC (IPR2014-00437 and IPR2014-00438) The PTAB found that SkyHawke demonstrated that an L&H Concepts patent on a handheld computer that golfers can use to track scores and shots is invalid and obvious.
• Toyota Motor Corp. v. Leroy G. Hagenbuch (IPR2013-00483 and IPR2013-00638) successfully challenged Hagenbuch's patent for automobile sensors on Toyota's behalf. The PTAB ruled the carmaker had shown the claims were obvious in light of other, earlier work.