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.
The Patent Trial and Appeal Board (PTAB) has invalidated a Uniloc software activation patent (5,490,216) asserted by the Australian NPE in an expansive, 13-year litigation campaign that has targeted over 175 companies. In a final decision issued on March 10, 2016 in an inter partes review (IPR) proceeding filed by Ubisoft, Kofax, Cambium Learning Group, and Perfect World Entertainment (IPR2014-01453), the PTAB ruled that the petitioners had shown by a preponderance of the evidence that all 20 claims of the ‘216 patent were invalid as anticipated by, or obvious over, prior art. The majority of the claims were invalidated under a patent that issued in 1996 to SoftLock Services Inc. (5,509,070; the “Schull patent”), which the petitioners successfully argued had anticipated claims 1-11 and 17-20 and rendered obvious claims 10 and 11 of the ‘216 patent. Furthermore, the Board rejected Uniloc’s arguments that the Schull patent should not be considered prior art, finding that it derived from an application that issued before the one that led to the ‘216 patent. The PTAB also ruled that the remaining claims are invalid in light of several other prior art references, accepting the petitioners’ arguments that claims 12-14 were both anticipated and obvious and that claims 15 and 16 were rendered obvious.
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