Representative Matters Handled by JMBM's Patent Office Litigation Group | JMBM Success Stories

Post-Grant Reviews, Inter Partes Reviews, Covered Business Methods

The patent owners represented by JMBM’s Patent Office Litigation Group come from a variety of industries and their patents represent a wide range of technologies and innovation. Our patent litigation trial lawyers have represented these patent owners before the United States Patent and Trademark Office (USPTO) in post grant reviews (PGRs), inter partes reviews (IPRs), and issues involving covered business methods (CBMs). Some of the matters we have handled for them are listed below.

Recent Inter Partes Reviews

Medical Device

March 23, 2018 – Edwards Lifesciences Corporation v. Boston Scientific, IPR2017-00060 (Kinder, Powell, Tartal) Lead trial counsel for petitioner Edwards Lifesciences in an inter partes review challenging Boston Scientific’s U.S. Patent No. 8,992,608 directed to a collapsible and expandable prosthetic heart valve delivered via a catheter. Successfully invalidated all challenged claims.

Computer Hardware and Software

December 11, 2017 – Canon Inc., et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01214 (Chang, Bisk, Quinn) Lead trial counsel for petitioners JVC Kenwood Corporation and Panasonic in an inter partes review challenging Papst Licensing GmbH & Co.’s U.S. Patent No. 8,966,144 directed to an analog data generating and processing device having a multi-use automatic processor. Successfully invalidated all challenged claims.

December 11, 2017 – Canon Inc., et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01213 (Chang, Bisk, Quinn) Lead trial counsel for petitioners JVC Kenwood Corporation and Panasonic in an inter partes review challenging Papst Licensing GmbH & Co.’s U.S. Patent No. 8,504,746 directed to an analog data generating and processing device for use with a personal computer. Successfully invalidated all challenged claims.

December 11, 2017 – Panasonic Corporation, et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01225 (Chang, Bisk, Quinn) Lead trial counsel for petitioners JVC Kenwood Corporation and Panasonic Corporation in an inter partes review challenging Papst Licensing GmbH & Co.’s U.S. Patent No. 8,966,144 described as an interface devise designed to facilitate the transfer of data between input/output device and a host computer that allegedly obviates the need for installation of driver software on the computer. Successfully invalidated all challenged claims.

Mechanical/Electrical Devices

March 29, 2017 – MRSI Systems, LLC v. Palomar Technologies, Inc., IPR2016-00043* (Obermann, Murphy, Ankenbrand) Lead trial counsel for Patent Owner Palomar Technologies, Inc. in an inter partes review challenging Palomar Technologies, Inc.’s U.S. Patent No. 6,776,327 directed to a high-accuracy placement method for placement of workpieces in connection with pick and place devices used in die attach and other electronic circuit assembly processes. Successfully preserved Patent Owner’s patent against Petitioner’s challenge.

June 16, 2016 – Shimano Inc. v. Globeride, IPR2015-00273 (Cocks, Saindon and Weatherly) Lead trial counsel for petitioner Shimano, Inc. in an inter partes review challenging Globerider, Inc.’s U.S. Patent No. 8,382,022 directed to a spinning fishing reel with a magnetic seal arranged between the driving part and a support part. Successfully invalidated all challenged claims.

Additional IPRs and CBMs Handled by JMBM’s Patent Trial Attorneys

Logitech Inc. v. IGO, Inc., IPR2016-01499 (Jung, Ippolito, Mayberry) Lead trial counsel for petitioner Logitech Inc. in an inter partes review challenging IGO, Inc.’s U.S. Patent No. 6,527,241 directed to use of inclined member to angle a laptop computer, angle and space a laptop computer above surface for cooling and use of a concave-shaped member in a laptop stand. IPR dismissed as a result of a settlement with the patent owner in co-pending litigation.

Canon Inc., et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01211 (Chang, Bisk, Quinn) Representing petitioners JVC Kenwood Corporation and Panasonic in an inter partes review challenging Papst Licensing GmbH & Co.’s U.S. Patent No. 8,504,746 directed to an analog data generating and processing device for use with a personal computer. Successfully obtained invalidity of all challenged claims.

Canon Inc., et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01212 (Chang, Bisk, Quinn) Representing petitioners JVC Kenwood Corporation and Panasonic in an inter partes review challenging Papst Licensing GmbH & Co.’s U.S. Patent No. 8,966,144 directed to an analog data generating and processing device having a multi-use automatic processor. Successfully obtained invalidity of all challenged claims.

Canon Inc., et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01216 (Chang, Bisk, Quinn) Representing petitioners JVC Kenwood Corporation and Panasonic in an inter partes review challenging Papst Licensing GmbH & Co.’s U.S. Patent No. 8,966,144 directed to an analog data generating and processing device having a multi-use automatic processor. Successfully secured institution on all challenged claims. Successfully obtained invalidity of all challenged claims.

Canon Inc., et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01222 (Chang, Bisk, Quinn) Representing petitioners JVC Kenwood Corporation and Panasonic in an inter partes review challenging Papst Licensing GmbH & Co.’s U.S. Patent No. 8,966,144 directed to an analog data generating and processing device having a multi-use automatic processor. Successfully obtained invalidity of all challenged claims.

Canon Inc., et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01224 (Chang, Bisk, Quinn) Representing petitioners JVC Kenwood Corporation and Panasonic in an inter partes review challenging Papst Licensing GmbH & Co.’s U.S. Patent No. 8,504,746 directed to an analog data generating and processing device for use with a personal computer. Successfully obtained invalidity of 42 of the 43 claims challenged.

Fujifilm Corporation et la v. Papst Licensing GmbH & Co., KG, IPR2016-1200 (Chang, Bisk and Quinn) Representing petitioners JVC Kenwood Corporation and Panasonic in an inter partes review challenging Papst Licensing GmbH & Co.’s U.S. Patent No. 8,504,746 directed to part of a chain of applications dating back to 1997 which were acquired by Papst Licensing GmbH & Co., KG. Successfully obtained invalidity of all challenged claims.

American Family Mutual Insurance Company, et al. v. EMG Technology, LLC, CBM2016-0004 (Deshpande, Perry and Jefferson) Lead trial counsel for Patent Owner EMG Technology, LLC in a Covered Business Method patent review defending EMG Technology, LLC’s, U.S. Patent No. 6,600,497 directed to an apparatus and method to navigate interactive television using unique inputs with a remote control. CBM dismissed following settlement.

American Family Mutual Insurance Company, et al. v. EMG Technology, LLC, CBM2016-0001 (Deshpande, Perry and Jefferson) Lead trial counsel for Patent Owner EMG Technology, LLC in a Covered Business Method patent review defending EMG Technology, LLC’s, U.S. Patent No. 7,194,698 directed to a method to advertise and search on television for web content using a simplified interface. CBM dismissed following settlement.

American Family Mutual Insurance Company, et al. v. EMG Technology, LLC, CBM2016-0002 (Deshpande, Perry and Jefferson) Lead trial counsel for Patent Owner EMG Technology, LLC in a Covered Business Method patent review defending EMG Technology, LLC’s, U.S. Patent No. 7,194,698 directed to a method to advertise and search on television for web content using a simplified interface. CBM dismissed following settlement.

Axis Communications, Inc. v. Trover Group, Inc., IPR2015-00432 (Plenzler, Crumbley and Chen) Lead trial counsel for Patent Owner Trover Group, Inc. in an inter partes review challenging Trover Group, Inc.’s U.S. Patent No. 5,751,346 directed to methods of video surveillance and image storage. IPR dismissed following settlement.

Branch Banking and Trust Company v. EMG Technology, Inc., CBM2014-00145 (Perry, Wood and Jung) Lead trial counsel for Patent Owner EMG Technology, Inc. in a Covered Business Method patent review defending EMG Technology, Inc.’s, U.S. Patent No. 7,551,196 directed to an apparatus and method of manipulating a regions on a wireless device screen for viewing, zooming and scrolling internet content. CBM dismissed following settlement.

Branch Banking and Trust Company v. EMG Technology, Inc., CBM2014-00094 (Perry, Wood and Jung) Lead trial counsel for Patent Owner EMG Technology, Inc. in a Covered Business Method patent review defending EMG Technology, Inc.’s, U.S. Patent No. 7,551,196 directed to an apparatus and method of manipulating a regions on a wireless device screen for viewing, zooming and scrolling internet content. CBM dismissed following settlement.

Google Inc. v. EMG Technology, LLC, CBM2013-00036 (Lee, Chang and Zecher) Lead trial counsel for Patent Owner EMG Technology, LLC in a Covered Business Method patent review defending EMG Technology, LLC’s U.S. Patent No. 7,441,196 directed to e-commerce with advertisement display and does not claim a technological invention. CBM dismissed following settlement.

Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00068 (Medley, Easthom and Turner) Lead trial counsel for Petitioner ChiMei Innolux Corp. in an inter partes review challenging Chimei Innolux Corp.’s U.S. Patent No. 8,068,204 directed to electronic apparatus with flexible printed circuit and a transparent conductive layer. Successfully secured institution on all challenged claims. IPR dismissed as a result of a settlement with the patent owner in co-pending litigation.

Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00066 (Medley, Easthom and Turner) Lead trial counsel for petitioner ChiMei Innolux Corp. in an inter partes review challenging CMI Corp.’s U.S. Patent No. 7,876,413 directed to electronic apparatus with flexible printed circuit and a transparent conductive layer. Successfully secured institution on all challenged claims. IPR dismissed as a result of a settlement with the patent owner in co-pending litigation.

Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00065 (Medley, Easthom and Turner) Lead trial counsel for Petitioner ChiMei Innolux Corp. in an inter partes review challenging ChiMei Innolux Corp.’s U.S. Patent No. 7,923,311 directed to electro-optical device and thin film transistor and method for forming the same. Successfully secured institution on all challenged claims. IPR dismissed as a result of a settlement with the patent owner in co-pending litigation.

Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00064 (Medley, Easthom and Turner) Lead trial counsel for Petitioner ChiMei Innolux Corp. in an inter partes review challenging Innolux Corporation’s U.S. Patent No. 7,923,311 directed to electro-optical device and think film transistor and method for forming the same. Successfully secured institution on all challenged claims. IPR dismissed as a result of a settlement with the patent owner in co-pending litigation.

Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00060 (Medley, Easthom and Turner) Lead trial counsel for Petitioner ChiMei Innolux Corp. in an inter partes review challenging Innolux Corporation’s U.S. Patent No. 7,697,102 directed to an active matrix liquid crystal display device. Successfully secured institution on all challenged claims. IPR dismissed as a result of a settlement with the patent owner in co-pending litigation.

Innolux Corporation v. Semiconductor Entergy Laboratory Co., Ltd., IPR2013-00038 (Medley, Easthom and Turner) Lead trial counsel for Petitioner ChiMei Innolux Corp. in an inter partes review challenging Innolux Corporation’s U.S. Patent No. 7,956,978 directed to a liquid-crystal display device having a particular conductive layer. Successfully secured institution on all challenged claims. IPR dismissed as a result of a settlement with the patent owner in co-pending litigation.

Innolux Corporation v. Semiconductor Entergy Laboratory Co., Ltd., IPR2013-00028 (Medley, Easthom and Turner) Lead trial counsel for Petitioner ChiMei Innolux Corp. in an inter partes review challenging Innolux Corporation’s U.S. Patent No. 6,404,480 directed to a contact structure. Successfully secured institution on all challenged claims. IPR dismissed as a result of a settlement with the patent owner in co-pending litigation.

We invite you to contact us to discuss how we can help protect your patents.

Gregory Cordrey
GCordrey@jmbm.com
949.623.7326

Stan Gibson
SGibson@jmbm.com
310.201.3548

* JMBM attorney handled this matter while at a different firm