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Apple Inc. v. Seven Networks LLC

Docket IPR2020-00188, Patent Trial and Appeal Board (Dec. 2, 2019)
Joni Chang, Karl Easthom, Thu Dang, presiding
Case TypeInter Partes Review
Patent
9608968
Patent Owner Seven Networks LLC
Petitioner Apple Inc.
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27 Termination Decision Document: Termination Decision Document

Document IPR2020-00188, No. 27 Termination Decision Document - Termination Decision Document (P.T.A.B. Dec. 3, 2020)
Before THU A. DANG, KARL D. EASTHOM, and JONI Y. CHANG, Administrative Patent Judges.
Paper 27 (“Mot.”).2 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), in each above-identified proceeding.
Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement.
We have not yet held an oral hearing and have not entered a final written decision in any of these proceedings.
In consideration of the foregoing, it is hereby ORDERED that the Joint Motions to Terminate filed in these proceedings are granted; and FURTHER ORDERED that the Joint Requests to File Settlement Agreement as Business Confidential Information and to keep such settlement agreement separate from the patent files, 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), are granted.
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19 Order: Granting Petitioners Motions for AdmissionPro Hac Vice of John P Brinkmann37 CFR seC 4210

Document IPR2020-00188, No. 19 Order - Granting Petitioners Motions for AdmissionPro Hac Vice of John P Brinkmann37 CFR seC 4210 (P.T.A.B. Sep. 9, 2020)
On August 18, 2020, Petitioner filed Motions for admission pro hac vice of John P. Brinkmann in each of the above-identified proceedings.
In its notice authorizing motions for pro hac vice admission, the Board requires a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice and an affidavit or declaration of the individual seeking to appear in this proceeding.
Based on the facts set forth in the Motions and the accompanying Declarations, Mr. Brinkmann has sufficient legal and technical qualifications to represent Petitioner in these proceedings and has demonstrated sufficient familiarity with the subject matter of these proceedings, and Petitioner’s request to be represented by counsel with litigation experience is warranted.
Petitioner must submit a Power of Attorney for Mr. Brinkmann in accordance with 37 C.F.R. § 42.10(b) and must update its Mandatory Notices as required by 37 C.F.R. § 42.8(b)(3).
FURTHER ORDERED that Petitioner shall file updated Mandatory Notices in each of the above-identified proceedings in accordance with 37 C.F.R. § 42.8(b)(3), identifying Mr. Brinkmann as back-up counsel.
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11 Order: Scheduling Order

Document IPR2020-00188, No. 11 Order - Scheduling Order (P.T.A.B. Jun. 15, 2020)
For example, reasonable 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.
To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.
The parties are further directed to the Board’s Guidance on Motions to Amend in view of Aqua Products (https://go.usa.gov/xU6YV), and Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential).
Unless the Board notifies the parties otherwise, oral argument, if requested, will be held at the USPTO headquarters in Alexandria.
In stipulating to move any due dates in the scheduling order, the parties must be cognizant that the Board requires four weeks after the filing of an opposition to the motion to amend (or the due date for the opposition, if none is filed) for the Board to issue its preliminary guidance, if requested by Patent Owner.
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10 Institution Decision: Trial Instituted Document

Document IPR2020-00188, No. 10 Institution Decision - Trial Instituted Document (P.T.A.B. Jun. 11, 2020)
According to Petitioner, although Yamamoto “provides little detail about ... specific configuration of the IP server,” a personal of ordinary skill in the art (“POSITA”) “would have realized, however, that the Internet was an unsecured public network,” and thus, “would have looked to Spacey to improve Yamamoto’s system by, e.g., implementing a firewall in front of the IP server.” Id. at 14 (citing Ex. 1004 ¶¶ 69–70, Fig. 5; Ex. 1003 ¶¶ 79–80).
Petitioner contends that, as shown in its annotated Figure 1 of Yamamoto reproduced below, a system resulting from the proposed combination “would have included a firewall at a boundary between a private network of the IP server device and the Internet, as taught by Spacey.”
See generally Prelim. Resp. We have reviewed Petitioner’s arguments and evidence and determine Petitioner has made a sufficient showing that the combination of Yamamoto, Spacey, and Hazel teaches a “method of operating a server to manage transactions between first and second devices,” as recited in claim
That is, Yamamoto demonstrates that “it is IP server W that automatically arranges and sends the email, and not a user.” Id. at 40.10 Thus, Patent Owner contends that, even if Hazel had disclosed an MUA on a server, “Yamamoto plainly states that that alleged first transaction is not created or sent by a user.” Id. With respect to the “wherein the first connection is maintained independently of the first transaction” limitation, we have reviewed Petitioner’s arguments and evidence and determine Petitioner has made a sufficient showing that the combination of Yamamoto, Spacey, and Hazel teaches this contest limitation.
On this record, Petitioner’s rationale that a person of ordinary skill in the art would have found it obvious to combine the teachings of Yamamoto and Spacey, in further view of Hazel is sufficiently supported for purposes of this Decision.
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4 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2020-00188, No. 4 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Dec. 18, 2019)
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 Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the Case IPR2020-00188 Patent 9,608,968 B2 PTAB would be interested to learn what mechanism (e.g., arbitration, mediation, etc.) was used and the general result.
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25 Motion: Joint Motion to Terminate

Document IPR2020-00188, No. 25 Motion - Joint Motion to Terminate (P.T.A.B. Dec. 2, 2020)
2016 E-mail chain, RE: IPR2020-00188, -0156, -0157 // Request for extension of DUE DATE 1, August 10-12, 2020 2017 Transcript of Deposition of Edward Richard Tittel, Sept. 11, 2020 [Tittel Tr.] 2018 Declaration of Vijay Madisetti, Ph.D. [Madisetti Decl.] 2019 Youngme Moon, Harvard Business School, NTT DoCoMo: Marketing i- mode, July 17, 2002 [Harvard Business Review] 2020 Excerpts from Elizabeth D. Zwicky et al., Building Internet Firewalls, pp. 9-19 (Chapter 1) (2000) [Internet Firewalls] Ed Tittel, Musings on Personal (and SOHO) Firewalls, InformIT, Nov. 2, 2001, https://www.informit.com/articles/printerfriendly/23962 [Tittel Musings] Jay Hoffman, Before There Were Smartphones, There Was I-Mode, The History of the Web, Apr. 25, 2017, https://thehistoryoftheweb.com/ before-there-were-smartphones-there-was-i-mode/ [History of the Web] Toshiyasu Yabe, New Technical Report: Special Issue on i-mode Service: i-mode Server, NTT DoCoMo Technical Journal, Vol.
1, No. 1, pp. 20- 25, Oct. 1999 [DoCoMo] Jeremy Scott-Joynt, The secret of NTT’s i-mode success, BBC News, Feb. 22, 2002, http://news.bbc.co.uk/2/hi/business/1835821.stm [BBC News] NTT Docomo Yoyogi Building, Nov. 9, 2010, https://www.japanbullet.com/life-style/ntt-docomo-yoyogi-building [Yoyogi] Excerpts from Internet Engineering Task Force, Network Working Group Request for Comments: 1122, Requirements for Internet Hosts -- Communication Layers (Section 4), Oct. 1989 [RFC 1122] 2021 2022 2023 2024 2025 2026
2027 James A. Debardelaben, Vijay Madisetti & Anthony J. Gadient, Incorporating Cost Modeling in Embedded System Design, IEEE Design & Test of Computers, 1997 [Cost Modeling] 2028 Declaration of Bridget A. Smith [Smith Declaration] 2029- 2099 Reserved 2100 Confidential Settlement Agreement Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, the parties to this
The Settlement Agreement, Exhibit 2100, has been made in writing, and a true and correct copy shall be filed with this Office as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)-(c).
The Parties certify that there are no collateral agreements or understandings made in connection with, or in contemplation of, the termination of this inter partes review.
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26 Motion: Joint Request to Treat Settlement as BCI

Document IPR2020-00188, No. 26 Motion - Joint Request to Treat Settlement as BCI (P.T.A.B. Dec. 2, 2020)
Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)-(c), Petitioner Apple Inc. (“Apple” or “Petitioner”) and Patent Owner SEVEN Networks, LLC (“SEVEN” or “Patent Owner”) (collectively “the Parties”), jointly request that the Settlement and License Agreement (Exhibit 2100) submitted concurrently herewith be treated as business confidential information and kept separate from the files of the involved patent and inter partes review proceeding, and only made available to Federal Government agencies upon written request or to any other person upon written request and a showing of good cause.
The Agreement describes the confidential terms resolving the Parties’ disputes, which constitutes confidential information under the Board’s rules.
By: /Kenneth J. Weatherwax/ Kenneth J. Weatherwax Registration No. 54,528 Counsel for Patent Owner
Respectfully submitted,
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