“Apple’s petitions challenging the ‘183 patent give patent owners reason to question whether PTAB precedential decisions denying institution based on multiple petitions carry any actual weight. It also gives new urgency to calls from Congress asking for the USPTO to deal with the issue of serial petitions.”
Last week, the Patent Trial and Appeal Board (PTAB) issued 18 institution decisions based on petitions for inter partes review (IPR) proceedings, instituting 10 and denying eight. One of those denials ended a petition from Apple to challenge a touch screen patent owned by Nartron, although the PTAB instituted two other IPRs on the same patent the following Monday, giving rise to questions about whether the U.S. Patent and Trademark Office (USPTO) is effectively dealing with the issue of multiple petitions at the PTAB. Elsewhere, a pair of KOM Software patents asserted in separate district court proceedings against NetApp and Hewlett Packard each had two IPRs instituted against them after the patent infringement defendants teamed up to file petitions.
Apple Inc. v. UUSI, LLC d/b/a Nartron
On August 2, a panel of administrative patent judges (APJs) at the PTAB denied institution of IPR2019-00360, a petition that was brought by consumer electronics giant Apple. The IPR challenges the validity of U.S. Patent No. 5796183, Capacitive Responsive Electronic Switching Circuit. The patent is owned by UUSI, doing business as Nartron, and a pioneer in the field of touchscreen technology. The ‘183 patent, which has expired, covers zero force touch switch technology through methods including an operator coming into close proximity of the switch without coming into conductive contact with the touch terminal.
Nartron asserted the ‘183 patent against Apple in a patent suit filed in the Eastern District of Michigan in November 2017. The lawsuit noted that Nartron was established in 1967 and is credited with having invented the electronic touch screen in 1995. The ‘183 patent had previously survived two reexamination proceedings at the USPTO as well as an IPR proceeding petitioned by Samsung challenging 27 claims of the patent, resulting in a final written decision upholding the validity of all challenged claims. Apple has also challenged the validity of the ‘183 patent in five other IPR petitions, three of which have already been denied by the PTAB.
Apple products accused by Nartron of infringing upon the ‘183 patent include multiple generations of the iPhone, iPod and iPad. Infringing functionality cited by Nartron included allowing users to make selections and move objects by moving a finger in contact with, or in proximity to, a touch sensing surface, thereby instructing the device to perform actions based on the input. Although not named as defendants in the suit, both Broadcom and Texas Instruments were recognized as manufacturing touch controller chips that recognize and interpret user input via the touchscreen. Nartron also alleged willful infringement of the ‘183 patent as Apple had actual notice of the patent and a high risk of infringing the patent’s claims.
Apple’s IPR challenged 16 claims of the ‘183 patent based primarily on the combination of U.S. Patent No. 4561002, Capacitive Touch Switch Arrangement (“Chiu”) and U.S. Patent No. 4418333, Appliance Control System (“Schwarzbach”). Claims were challenged based on the combination of Chiu and Schwarzbach alone or in combination with either U.S. Patent No. 4922061, Capacitive Touch Panel System With Randomly Modulated Position Measurement Signal (“Meadows”), or U.S. Patent No. 4731548, Touch Control Switch Circuit (“Ingraham ‘548”). In denying the IPR, the PTAB determined that Apple hadn’t established a reasonable likelihood of prevailing on obviousness over Chiu and Schwarzbach, finding that Schwarzbach didn’t teach a transmitter/modulator acting as a 150 kilohertz (kHz) oscillator and that Apple didn’t adequately explain how the microprocessor in Chiu would use Schwarzbach’s communication signals to drive or activate Chiu’s touch pad.
In all, Nartron has faced seven petitions for IPR on the ‘183 patent that have reached the institution decision phase, six of which were filed by Apple. Although this particular petition was denied institution, the PTAB did institute two IPRs filed by Apple challenging the ‘183 patent this Monday.
As recently noted by inventor Josh Malone in a LinkedIn post, although the statistics reported by the USPTO would likely indicate otherwise, truly the institution of even one IPR on the ‘183 patent would mean that petitioners were 100% successful in challenging the claims of this patent. This case should give patent owners reason to question whether PTAB precedential decisions denying institution based on multiple petitions carry any actual weight. It also gives new urgency to calls from Congress asking for the USPTO to deal with the issue of serial petitions at the PTAB.
NetApp, Inc. and Hewlett Packard Enterprise Co. v. KOM Software, Inc.
On July 31, a panel at the PTAB voted to institute a series of four IPR proceedings brought by NetApp and Hewlett Packard against patent owner KOM Software. The petitions challenge the validity of two patents asserted by KOM against the petitioners in infringement suits that were filed in early 2018 in the District of Delaware.
The patents-at-issue in the IPR petitions are U.S. Patent No. 6438642, File-Based Virtual Storage File System, Method and Computer Program Product for Automated File Management on Multiple File System Storage Devices, and U.S. Patent No. 7392234, Method and System for Electronic File Lifecycle Management. The ‘642 patent covers solutions for increasing storage in computers without requiring the addition of a costly hard drive by providing a virtual storage medium made up of physical storage that can be upgraded without affecting users. The ‘234 patent covers methods that associate a set of policies with electronic files or storage used for electronic files that can automate the management of files from creation to deletion.
KOM Software asserted these patents in separate Delaware lawsuits filed against NetApp and Hewlett Packard; the NetApp litigation also named Apache Corporation and ON Semiconductor as co-defendants and the Hewlett Packard suit lists DreamWorks Animation as a co-defendant. In the lawsuits, KOM Software noted that it was founded in 1969 and has become a world-leading developer of secure data software such as KOMpliance, an enterprise-class software solution protecting against ransomware, and KOMworx, a Windows-based storage software solution. Allegations of NetApp’s infringement surrounded Data ONTAP, which includes an OnCommand management platform for automating storage processes, and the NetApp Management Console, which includes provision capabilities to automate the provisioning and managing of storage. Infringement allegations made against Hewlett Packard involved the HPE X9000 Network Storage System, which separates segments of data files for faster access and creates data tiering policies to move files from initial storage.
In IPR2019-00592, petitioners challenge the validity of the ‘642 patent on Section 103 obviousness grounds mainly on the basis of a 1990 dissertation from the University of Rochester on parallel interleaved file systems (“Dibble”) or Dibble in combination with U.S. Patent No. 5983239, Storage Management System With File Aggregation Supporting Multiple Aggregated File Counterparts (“Cannon”). In instituting this IPR, the PTAB was persuaded that Dibble taught limitations of the ‘642 patent including a virtual storage device using portions of different physical disks to store data while appearing as a single repository to a user or application. In IPR2019-00591, petitioners also challenged obviousness of the ‘642 patent based primarily on prior art reference U.S. Patent No. 5987596, Remote Access and Geographically Distributed Computers in a Globally Addressable Storage Environment (“Carter”), or Carter in combination with either Cannon, U.S. Patent No. 6029168, Decentralized File Mapping in a Striped Network File System in a Distributed Computing Environment (“Frey”), or U.S. Patent No. 6161111, System and Method for Performing File-Handling Operations in a Digital Data Processing System Using an Operating System-Independent File Map (“Mutalik”). In instituting this IPR, the PTAB was persuaded that Carter disclosed stored data used to retrieve stored files met the “storing index information for the stored data” limitation of claim 1, and that a person of ordinary skill would have been motivated to combine the “striping” methods found in Frey with the virtual storage space of Carter.
In IPR2019-00601, petitioners challenge the validity of 21 claims of the ‘234 patent based on the combination of U.S. Patent No. 6330572, Hierarchical Data Storage Management (“Sitka”) and U.S. Patent No. 6021415, Storage Management System With File Aggregation and Space Reclamation Within Aggregated Files (“Cannon”). In instituting this IPR, the PTAB was persuaded by petitioners’ argument that it would have been obvious to associate the policies for managing a file lifecycle in Sitka with the individual files of Cannon as a matter of design choice and to provide additional control over file management. In IPR2019-00603, petitioners challenged the same 21 claims of the ‘234 patent based on the combination of U.S. Patent No. 5537585, Data Storage Management for Network Interconnected Processors (“Blickenstaff”) and U.S. Patent No. 5764972, Archiving File System for Data Servers in a Distributed Network Environment (“Crouse”). In instituting this IPR, the PTAB determined a reasonable likelihood that challenged claims were obvious over the association of migration rules in Blickenstaff on an individual file-by-file basis in view of Crouse.
Other IPRs Instituted Week Ending Friday, August 2
IPR2019-00466: Unified Patents Inc. v. MobilePay LLC – U.S. Patent No. 9800706, Electronic Device Input/Output System and Method
IPR2019-00484: Unified Patents Inc. v. Pure Data Systems, LLC – U.S. Patent No. 5999947, Distributing Database Differences Corresponding to Database Change Events Made to a Database Table Located on a Server Computer
IPR2019-00586: Rogue Fitness v. Jump Rope Systems, LLC – U.S. Patent No. 7789809, Jump Rope System
IPR2019-00587: Rogue Fitness v. Jump Rope Systems, LLC – U.S. Patent No. 8136208, Handle System
IPR2019-00617: Unified Patents Inc. v. GE Video Compression, LLC – U.S. Patent No. 9729891, Sample Array Coding for Low-Delay
IIPR2019-00642: Unified Patents Inc. v. Memory Technologies, LLC – U.S. Patent No. 8307180, Extended Utilization Area for a Memory Device
Other IPRs Denied Week Ending Friday, August 2
IPR2019-00434: Unified Patents Inc. v. SMTM Technology, LLC – U.S. Patent No. 8958853, Mobile Device Inactive Mode and Inactive Mode Verification
IPR2019-00449 and IPR2019-00450: Aquestive Therapies, Inc. v. Neurelis, Inc. – U.S. Patent No. 9763876, Administration of Benzodiazepine Compositions
IPR2019-00487: ZTE (USA) Inc. v. Agis Software Development LLC – U.S. Patent No. 9408055, Method to Provide Ad Hoc and Password Protected Digital and Voice Networks
IPR2019-00518: Spotify USA Inc. v. S.I.S.V.E.L. Societa Italiana Per Lo Sviluppo Dell’elettronica S.P.A. – U.S. Patent No. 7412202, Method and Apparatus for Generating Recommendations Based on User Preferences and Environmental Characteristics
IPR2019-00586: Spotify USA Inc. v. S.I.S.V.E.L. Societa Italiana Per Lo Sviluppo Dell’elettronica S.P.A. – U.S. Patent No. 8321456, Generating Metadata for Association With a Collection of Content Items
IPR2019-00659: Unified Patents Inc. v. GE Video Compression, LLC – U.S. Patent No. 9768804, Context Initialization in Entropy Coding
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