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Papst Licensing GmbH & Co. KG v. HP Inc.

Docket 5:16-cv-00575, California Northern District Court (Feb. 5, 2016)
Hon. James Donato, presiding
Patent
DivisionSan Jose
DemandBoth
Cause35:271 Patent Infringement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
6470399; 6895449; 8966144
6470399
6895449
8966144
Plaintiff Papst Licensing GmbH & Co. KG
Defendant HP Inc.
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Papst Licensing GmbH & Co., KG v. ZTE Corporation et al

Docket 6:15-cv-01100, Texas Eastern District Court (Nov. 30, 2015)
Judge Robert W. Schroeder, III, presiding
Patent
DivisionTyler
DemandBoth
Cause35:271 Patent Infringement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
6470399; 6895449; 8504746; 8966144; 9189437
6470399
6895449
850474689661449189437
Plaintiff Papst Licensing GmbH & Co., KG
Defendant ZTE Corporation
Defendant ZTE (USA), Inc.
...
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Hewlett-Packard Company v. Papst Licensing GMBH & Co.KG

Docket 5:15-cv-02101, California Northern District Court (May 8, 2015)
Hon. James Donato, presiding
Patent
DivisionSan Jose
DemandPlaintiff
Cause28:2201 Declaratory Judgement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
6470399; 6895449; 8504746; 8966144
6470399
6895449
85047468966144
Plaintiff Hewlett-Packard Company
Defendant Papst Licensing GMBH & Co.KG
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ZTE (USA) Inc. v. Papst Licensing GmbH & Co. KG

Docket IPR2017-00713, Patent Trial and Appeal Board (Jan. 17, 2017)
James Arpin, Jennifer Bisk, Joni Chang, presiding
Case TypeInter Partes Review
Patent
6895449
Patent Owner Papst Licensing GmbH & Co. KG
Petitioner ZTE (USA) Inc.
Petitioner LG Electronics
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16 Termination Decision Document: Termination Decision Document

Document IPR2017-00713, No. 16 Termination Decision Document - Termination Decision Document (P.T.A.B. Jan. 17, 2018)
Petitioner, ZTE (USA) Inc. (“ZTE”), and Patent Owner, Papst Licensing GmbH & Co. KG (“Papst”), jointly move to terminate this inter partes review in light of their settlement that resolves their dispute regarding U.S. Patent No. 6,895,449 B2 (“the ’449 patent”).
The parties also filed a true copy of their written settlement agreement in connection with the termination as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
Notably, 35 U.S.C. § 317(a), in part, provides the following (emphasis added): (a) IN GENERAL.—An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.
Although this inter partes review has been instituted, the proceeding is still in the briefing stage.
In consideration of the foregoing, it is hereby: ORDERED that the Joint Motion to Terminate is granted; FURTHER ORDERED that this review is terminated as to all parties including ZTE and Papst; and FURTHER ORDERED that the Joint Request to File Settlement Agreement as Business Confidential Information and to keep such settlement agreement separate from the patent file, and to make it available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.
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9 Order: Scheduling Order

Document IPR2017-00713, No. 9 Order - Scheduling Order (P.T.A.B. Jul. 17, 2017)
This order sets due dates for the parties to take action after institution of the instant proceeding.
A notice of the stipulation, specifically identifying the changed due dates, must be promptly filed.
The parties are reminded that the Testimony Guidelines appended to the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (Appendix D), apply to this proceeding.
Patent 6,895,449 B2 expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
The petitioner must file any reply to the patent owner’s response and opposition to the motion to amend by DUE DATE 2.
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8 Institution Decision: Trial Instituted Document

Document IPR2017-00713, No. 8 Institution Decision - Trial Instituted Document (P.T.A.B. Jul. 17, 2017)
The ’449 patent further discloses that it was known to those skilled in the art that a virtual boot sequence includes “the drive type, the starting position and the length of the file allocation table (FAT), the number of sectors.” Id. at 5:30–32.
Citing to the Declaration of Mr. Gafford, Patent Owner argues that Aytac discloses “numerous additional, non-customary and non-multi- purpose interface drivers that are required for the host device to communicate with Aytac’s CaTbox.” Id. at 30 (emphasis added); Ex. 2001 ¶¶ 51–58.
Upon review of the parties’ contentions and supporting evidence, we determine that Petitioner has shown sufficiently for purposes of this Decision that the combined teachings of Aytac, the SCSI Specification, the MS-DOS Encyclopedia, and the Admitted Prior Art at least suggest the aforementioned “driver” limitations.
In light of the foregoing, we are persuaded that Petitioner has shown adequately for the purposes of this Decision that the combined prior art teachings at least suggest the aforementioned “driver” limitations recited by claims 1 and 17.
Conclusion In view of the foregoing, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that claims 1, 16, and 17 are unpatentable as obvious under § 103(a) over the combined teachings of Aytac, the SCSI Specification, the MS-DOS Encyclopedia, and the Admitted Prior Art.
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4 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2017-00713, No. 4 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Jan. 31, 2017)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2017-00713 Patent No. 6,895,449 B2 mediation, etc.) was used and the general result.
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