As a follow up to the November article about the most litigious district court patent plaintiffs and the December article about which patent owners faced the most Patent Trial and Appeal Board (PTAB) petitions, this article will explore analytics based on patent number. In particular, this article will analyze the five patents with the highest number of proceedings during the same time period as Part 1 and 2 of this series – January 1, 2019 to October 31, 2020.
The Patent Numbers
The first three patents are tied for the greatest number of proceedings. The first patent is patent no. 6,397,186, entitled “Hands-free voice-operated remote control transmitter,” in Tech Center 2600, Communications. This patent has had a total of 7 inter partes review proceedings; however, all have been terminated before institution and final written decisions were given. The petitions were all filed between March and May 2019. The patent is owned by Speakware, who has solely been represented by Dovel & Luner. Some of the petitioners include Apple, Microsoft, Samsung, and Amazon. The petitioners have been represented by law firms including Arnold & Porter, Erise IP, Klarquist Sparkman, and Knobbe Martens.
The 6,851,115 patent, entitled “Software-based architecture for communication and cooperation among distributed electronic agents,” is owned by IPA Technologies. This patent was involved in 7 proceedings during this time period. Five out of the seven were petitioned by Microsoft and the remaining two were brought by Google. All of the petitions were filed in February or March 2019.
According to Docket Alarm data, in comparison to the average during this time period, proceedings involving this patent were 33% more likely to result in instituted petitions in full or in part; 86% of petitions were instituted at least partially. Docket Alarm data also indicated that, in comparison to the average during this time period, proceedings with this patent are 3.9 times less likely to invalidate all instituted claims in a final written decision. Of the six final written decisions for this patent during this time period, one invalidated all instituted claims, one canceled no claims, and the remainder canceled some claims.
These decisions were all issued between September 2020 and November 2020. Skiermont Derby has solely represented the patent owner, while Sidley Austin and Paul Hastings have represented the petitioners.
The 7,016,676 patent, entitled “Method, network and control station for the two-way alternate control of radio systems of different standards in the same frequency band,” in the Tech Center 2600 Communication category, also has resulted in 7 petitions, like the first two patents listed. This patent is owned by Uniloc 2017, which faced the most PTAB petitions as a patent owner and it was one of the most litigious district court patent plaintiffs, according to Docket Alarm analytics. This patent has been challenged by Ericsson, Microsoft, Google, and Marvell Semiconductor. In sum, four out of the seven petitions were instituted, of which one trial was joined and three final written decisions were rendered; thus, 57% were instituted according to Docket Alarm data.
Out of the three final written decisions all had some claims survive. Etheridge Law Group represents Uniloc 2017. The petitioners are represented by Haynes and Boone; Klarquist Sparkman; Sheppard, Mulligan, Richter and Hampton; Finnegan, Henderson, Farabow, Garrett and Dunner.
The 10,186,523 patent is entitled, “Semiconductor chip having region including gate electrode features formed in part from rectangular layout shapes on gate horizontal grid and first-metal structures formed in part from rectangular layout shapes on at least eight first-metal gridlines of first-metal vertical grid.” This patent is owned by Tela Innovations and was petitioned 6 times by Intel, all of which were filed in August 2019. The patent was filed under Tech Center 2800, Semiconductors, Electrical & Optical. Out of the 6 petitions, 3 were instituted; the 3 instituted trials are currently pending.
Tela Innovations has been represented by Pepper Hamilton. Intel has been represented by Kirkland & Ellis.
The 7,036,128 patent, entitled, “Using a community of distributed electronic agents to support a highly mobile, ambient computing environment,” is owned by IPA Technologies and has been petitioned by Google and Microsoft. The patent is in the Tech Center category 2100 Computer Arch., Software & Information Security. Out of the 7 petitions, 5 were not instituted and 2 were instituted, therefore, the institution rate is 29%; out of the 2 trials that were instituted both had all claims canceled. In comparison to the average during this time period, proceedings involving this patent are 54% more likely to result in an invalidation of all instituted claims in a final written decision, according to Docket Alarm data.
IPA Technologies is represented by Skiermont Derby. The petitioners are represented by Paul Hastings and Sidley Austin.
In sum, the majority of the most petitioned patents are those related to communications, semiconductors, or computing. There is a wide range of institution rates and claim cancellation rates. Google and Microsoft were the most frequent petitioners for these patents, which was a similar trend not only for these particular patents, but for the PTAB overall, as discussed in the prior Insights articles exploring PTAB.
Additionally, two of the patents were owned by IPA Technologies and Uniloc 2017 has been featured in all three articles in our patent analysis series; these companies are one of the most litigious district court patent plaintiffs, their portfolios are frequently challenged in PTAB, and even individual patents within those portfolios are challenged the most during the last two years. Several of the law firms also made repeat appearances, including Skiermont Derby, Paul Hastings, Sidley Austin, and Klarquist Sparkman, in part because some of the parties either owned multiple challenged patents or petitioned several patents.