Silver State Intellectual Technologies, Inc. v. TOMTOM, Inc. DC

In September 2017, the Patent Trial and Appeal Board (PTAB) saw more than ten petitions filed in NPE campaigns involving networking and related technologies such as cybersecurity, including those waged by publicly traded Finjan Holdings, Inc.; prolific private litigant Realtime Data LLC; and Oyster Optics, LLC. Trial was instituted in September for an inter partes review (IPR) against Finjan and in IPRs against other frequent plaintiffs, including MyMail, Ltd. and Sound View Innovations, LLC. The Board issued final decisions in two covered business method (CBM) reviews against Uniloc Corporation Pty. Limited, the first AIA reviews against the NPE to reach final decisions since March 2016, and only the fourth to date. The PTAB also issued final decisions in IPRs against publicly traded Document Security Systems, Inc. as well as Acceleration Bay, LLC; Mobile Telecommunications Technologies, LLC; and Personalized Media Communications, LLC; among other NPEs.

In the wake of the US Supreme Court’s TC Heartland decision, Silver State Intellectual Technologies, Inc. has conceded that venue is no longer proper in Nevada for a suit that it brought against Facebook (2:17-cv-00643) in March 2017. Facebook had filed a motion a week before the Supreme Court opinion on venue issued, challenging the sufficiency of the pleading in Silver State’s complaint and preserving its right to dismissal should the then-pending decision go the petitioner’s way. It did, and Silver State quickly stipulated to transfer to the Northern District of California, having filed an amended complaint buttressing its infringement allegations with more information, including claim charts. The Nevada court granted the stipulation on June 7.

The Patent Trial and Appeal Board (PTAB) continued to see the filing of petitions for inter partes review (IPR) against publicly traded NPEs in March 2017, including Acacia Research Corporation; Finjan Holdings, Inc.; Pendrell Corporation; TiVo Corporation (formerly known as Rovi Corporation); and Wi-LAN Inc. (WiLAN). A variety of prolific, privately held NPEs were also targeted for IPR throughout March, including Blackbird Tech LLC, General Patent Corporation, IP Edge LLC, Realtime Data LLC, and Papst Licensing GmbH & Company Kg, along with several inventors and inventor-controlled NPEs and an assortment of other plaintiffs.

Silver State Intellectual Technologies, Inc. (SSIT) has asserted two related patents (7,343,165; 8,892,117) in a new case targeting location-based features offered by Facebook (2:17-cv-00643): “Status Update/Check In” and “Place Tips”, respectively. The ‘165 patent generally relates to providing contact information based on location; and the ‘117 patent, to recommending nearby points-of-interest. Both issued to prolific inventor Michael L. Obradovich, who asserted many of his over 150 issued US patents in a prior campaign litigated through another controlled NPE, American Calcar, Inc. SSIT has thus far asserted 14 patents in its own campaign.

Silver State Intellectual Technologies, Inc.’s new suit (2:14-cv-00662) against Google asserts seven patents, five of which have been used in Silver State’s previous litigation. Google’s mobile devices, including Google Glass, as well as the Android operating system are accused of infringing the patents-in-suit (6,525,768; 6,529,824; 6,868,335; 7,593,812; 7,650,234; 8,538,498; 8,700,312). The ‘312 patent and ‘498 patent have not been seen in previous suits. Silver State’s portfolio of patents, including those asserted in this litigation, was acquired from American Calcar, Inc. and relates to geolocation capabilities in a mobile device. The entity’s campaign has been slowly growing since 2011 with more than ten patents-in-suit and defendants that include Apple and Garmin. 4/30, District of Nevada,