The Patent Trial and Appeal Board (PTAB) remained at the center of a heated public debate over the issue of tribal sovereign immunity in December 2017. Motions to dismiss filed by the Saint Regis Mohawk Tribe in IPRs against several Allergan patents—acquired by the tribe and licensed back to their original owner to shield them through sovereign immunity—remain pending as the PTAB considers a wave of amicus briefs filed on both sides of the issue. The Board has since denied the tribe’s motion for an oral hearing on discovery related to alleged bias held by the USPTO and its leadership, and that bias’s effect on the selection of judges for the tribe’s case. Meanwhile, among the petitions for inter partes review (IPR) filed in December was one brought by Apple against MEC Resources, LLC, an entity owned by another Native American tribe, which took over an existing lawsuit asserting the challenged patent against Apple in the fall. Also in December, the Board issued institution decisions in petitions against Iridescent Networks, Inc.; Lone Star Silicon Innovations LLC; and publicly traded Quarterhill Inc.; while an IPR against Packet Intelligence LLC ended in an adverse judgment after petitioner Sandvine prevailed in a November trial.
The Federal Circuit has upheld the Patent Trial and Appeal Board’s (PTAB’s) invalidation of a software activation patent asserted by Uniloc Corporation Pty. Limited in more than 65 lawsuits against over 145 defendants (2016-2000). The invalid patent is the NPE’s most widely litigated, in a campaign started 14 years ago. In an October 23 decision, the Federal Circuit affirmed the Board’s holding, in two inter partes reviews, filed by Cambium Learning Group, Kofax, SEGA, and Ubisoft (IPR2014-01453) and Perfect World Entertainment (IPR2015-01026), that the patent at issue was not entitled to the earlier priority date of two Australian provisional applications. The court then declined to overturn the PTAB’s ruling that the patent’s claims are invalid in light of prior art.
Uniloc filed seven separate suits on Thursday against eight defendants, including MathWorks, Bitdefender,Nuance Communications, Take-Two Interactive Software, PerkinElmer and its subsidiary Cambridge Soft, The Tiffen Companyand TechSmith alleging that the defendants’ software products infringe a patent related to its software registration system (5,490,216). Uniloc last asserted the ‘216 patent in December 2010 against Foxit and BMC Software, and in 2009 was awarded a $388 million jury verdict in a case against Microsoft for their infringement of the same patent (a case which eventually settled). The most recent string of Uniloc suits occurred last week involving infringement of another patent against nine defendants, including Autodesk, Avid Technology, Corel, GlobalSCAPE, Minitab, Palisade, PerkinElmer, Sony Creative Software, and The Tiffen Company. Since 2003, Uniloc has filed over 40 prior suits against over 80 defendants using its portfolio of product activation and software patents. Ric Richardson is the inventor of the patent-in-suit and Uniloc USA is the exclusive licensee. Uniloc currently has 47 active infringement cases filed in the Eastern District of Texas. 12/27, Eastern District of Texas, 6:2012cv01013; 6:2012cv01014; 6:2012cv01015; 6:2012cv01016; 6:2012cv01017; 6:2012cv01018; 6:2012cv01019.
Access to the full article is currently available to RPX members only. Please contact us if you need further information.