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Amazon.Com, Inc. v. Straight Path IP Group Inc

Docket 3:14-cv-04561, California Northern District Court (Oct. 13, 2014)
Hon. Edward J. Davila, presiding, Magistrate Judge Nathanael M. Cousins
Patent
DemandPlaintiff
Cause28:1332 Diversity-Declaratory Judgement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
6009469; 6108704; 6131121
6009469
61087046131121
Plaintiff Amazon.Com, Inc.
Defendant Straight Path IP Group Inc
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Inter Partes Review of U.S. Pat. 6,009,469

Docket IPR2015-01400, Patent Trial and Appeal Board (June 15, 2015)
Bart Gerstenblith, Kalyan Deshpande, Trenton Ward, presiding
Case TypeInter Partes Review
Patent
6009469
Petitioner Cisco Systems, Inc.
Patent Owner Straight Path IP Group, Inc.
Petitioner Vizio
...
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Innovative Communications Technologies, Inc. v. ooVoo, LLC

Docket 2:12-cv-00008, Virginia Eastern District Court ()
District Judge Robert G. Doumar, presiding, Magistrate Judge Douglas E. Miller
Patent
DemandPlaintiff
Cause35:271 Patent Infringement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
6009469; 6513066; 6701365
6009469
65130666701365
Plaintiff Innovative Communications Technologies, Inc.
Defendant ooVoo, LLC
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Innovative Communications Technologies, Inc. v. Vivox, Inc.

Docket 2:12-cv-00007, Virginia Eastern District Court ()
District Judge Robert G. Doumar, presiding, Magistrate Judge Lawrence R. Leonard
Patent
DemandPlaintiff
Cause35:271 Patent Infringement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
6009469; 6108704; 6131121; 6513066; 6701365
6009469
6108704613112165130666701365
Plaintiff Innovative Communications Technologies, Inc.
Defendant Vivox, Inc.
Counter Defendant Innovative Communications Technologies, Inc.
...
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No. 44 REDACTED ORDER 14 Denying Motion to Dismiss; Granting 14 Motion to Transfer Venue

Document Amazon.Com, Inc. v. Straight Path IP Group Inc, 3:14-cv-04561, No. 44 (N.D.Cal. May. 28, 2015)
Presently before the Court is Defendant Straight Path IP Group, Inc.’s (“Straight Path” or “Defendant”) Motion to Dismiss for lack of subject matter jurisdiction over Plaintiff Amazon.com, Inc.’s (“Amazon” or “Plaintiff”) Complaint for Declaratory Judgment pursuant to Federal Rule of Civil Procedure 12(b)(1).
Straight Path has filed numerous suits, in various jurisdictions, against consumer electronic companies based on their sale of Internet-enabled devices (e.g., SmartTVs, Blu-ray players, tablets, or smartphones) with preinstalled video-streaming applications.
The parties to the Eastern District of Virginia actions agreed that a stay pending resolution of the inter partes reviews and Straight Path’s appeal would likely narrow the issues and conserve judicial resources.
Likewise, with respect to contributory infringement, the DataTern court found that the claim charts did not impliedly assert that Microsoft’s product was not a staple article or commodity of commerce suitable for substantial non-infringing use.
Amazon argues that this targeting of LGE and VIZIO by Straight Path in their infringement suits is similar to those found to support subject matter jurisdiction in DataTern.
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12 Final Decision: Final Written Decision

Document IPR2015-01400, No. 12 Final Decision - Final Written Decision (P.T.A.B. May. 9, 2016)
Subsequent to Patent Owner’s Response and Petitioner’s Reply, the United States Court of Appeals for the Federal Circuit issued its decision in Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015) (“Straight Path”).
The ’469 patent is titled “Graphic User Interface for Internet Telephony Application” and generally relates to facilitating audio communications over computer networks.
Petitioner specifically argues that the Board has rejected similar arguments as those raised by Patent Owner and held that § 315(b) only covers civil actions brought in federal district court.
WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68.
Petitioner further argues that Pinard discloses a telephone application software program for use with a personal computer and a server, and provides a human machine interface (HMI).
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10 Institution Decision: Decision Instition of Inter Partes Review

Document IPR2015-01400, No. 10 Institution Decision - Decision Instition of Inter Partes Review (P.T.A.B. Nov. 10, 2015)
Cisco Systems, Inc. and AVAYA Inc. (collectively, “Petitioner”) filed a Petition requesting an inter partes review of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of U.S. Patent No. 6,009,469 C1 (Ex. 1001, “the ’469 patent”).
With the Petition, Petitioner filed a Motion for Joinder (Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v. Straight
We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless ... there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and associated evidence, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of all the challenged claims.
We determined that the petitioner in IPR2015-00198, LG Electronics, Inc., Toshiba Corp., VIZIO, Inc., and Hulu, LLC (collectively, “LG”), demonstrated a reasonable likelihood of prevailing in establishing the unpatentability of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the ’469 patent.
We granted that petition and instituted an inter partes review of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 as unpatentable under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS.
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11 Notice: Decisiion Motion for Joinder

Document IPR2015-01400, No. 11 Notice - Decisiion Motion for Joinder (P.T.A.B. Nov. 10, 2015)
Cisco Systems, Inc. and AVAYA Inc. (collectively, “Petitioner”) filed a Petition requesting an inter partes review of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of U.S. Patent No. 6,009,469 C1 (Ex. 1001, “the ’469 patent”).
Patent 6,009,469 C1 (Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v Straight Path IP Grp., Inc., Inc., IPR2015-00198, filed by LG Electronics, Inc., Toshiba Corp., VIZIO, Inc., and Hulu, LLC (collectively, “LG”).
Petitioner filed its Petition and Motion for Joinder on June 15, 2015, within one month after the institution date of IPR2015-00198.
In particular, Petitioner (1) represents that IPR2015- 01400 is identical to IPR2015-00198 in all substantive aspects, including identical grounds, analysis, exhibits, and relies upon the same expert Declaration; (2) agrees to (a) incorporate its filings with LG, (b) not advance any arguments separate from those advanced by LG, and (c) consolidated discovery; (3) represents that joinder will not have any impact on the IPR2015-00198 schedule; and (4) asserts that there will be no prejudice to Patent Owner.
Regarding procedural matters, Petitioner argues that joinder would not require any change to the trial schedule in IPR2015-00198.
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