Law Street Media’s November 29 article examining patent litigation analytics focused on the district court system, just one part of a complex system of patent litigation. This article examines a similar premise; a deep dive into the companies that have had their patents challenged the most in recent years before the Patent Trial and Appeal Board, using Docket Alarm’s cutting-edge PTAB analytics.
As 2020 comes to a close, it is apparent that total filings at PTAB have remained steady despite the COVID-19 pandemic. The number of inter partes review (IPR) filings from January 1, 2019, to October 31, 2020 (the same time period as the prior article), reveals a consistent pattern. A dip in March and April 2020 was likely caused by the onset of the COVID-19 pandemic, but other fluctuations in the above time period are more dramatic. In fact, by May 2020 there was an uptick in filings, which could suggest a bounce back from the delays of March and April. There were 2,504 IPR petitions during this time period, which suggests overall a slight decline in comparison to a similar period from January 2017 to October 2018.
The Patent Owners
The top five patent owners who faced the most petitions against their patents before PTAB from 2019 to October 2020 are Uniloc 2017, Rovi Guides, Neodron, Bell-Northern Research, LLC, and Masimo. There is some overlap with the most litigious district court patent plaintiffs; Uniloc 2017 and Neodron appear on both lists.
Uniloc 2017 has been involved in litigation with Microsoft and Google; moreover, as previously reported, it is one of the entities associated with Fortress, who was sued by Intel Corporation for anticompetitive patent conduct. Uniloc 2017’s mostly cloud computing-related patents were challenged in 86 new petitions as patent owner over the last two years, an average of 0.8 new petitions per week. Of these 86 filed petitions, 14 have resulted in termination, 3 of which occurred before institution and 4 after institution. Out of the 83 institution decisions, 49 had a trial instituted, which is a 59 percent institution rate. Accordingly, Uniloc 2017 is 9 percent less likely than Docket Alarm’s average to have a petition instituted against it, whether in full or in part. It took an average of 191 days to reach the institution decision stage, slightly above the overall average of 188 days.
Out of the 49 trials instituted, 14 resulted in final written decisions of which 6 resulted in all claims being canceled and 8 had some claims survive; none had all claims survive. The time to reach a final written decision was quicker than the average time, 512.1 days compared to 545.1 days.
The number of petitions in 2020 was smaller than in 2019, with petitions in 2020 only for the months of January, March, and April, perhaps related to the COVID-19 pandemic. However, the biggest influx of petitions occurred in January 2020, where 8 petitions were filed by Google, 2 were filed by Ericsson and 2 were filed by Samsung Electronics America. One of these Google petitions was for the 8,949,954 patent, which is the patent-in-suit involved in Google’s district court suit against Uniloc 2017; Law Street Media covered the motion to transfer out of the Eastern District of Texas to the Northern District of California.
Rovi Guides is a subsidiary of TiVo Corporation and holds various media and media guide related patents. Specifically, Rovi Guides creates, markets, and licenses its intellectual property. For example, in November Law Street Media covered Sony’s filed complaint for declaratory judgment of patent noninfringement regarding some of the company’s asserted patents.
During this time period, Rovi Guides has faced 48 petitions, which occurred in three distinct groups. There have only been petitions filed in January 2019, July and August 2019, and April 2020. Comcast Cable Communications has been the petitioner for all of these filings. Out of the 48 petitions of which 1 is pending, 30 percent of petitions were instituted in part or in full for an average of 20.6 claims that took an average of 181.4 days to reach the institution stage. Furthermore, in comparison to the average, petitions faced by Rovi Guides during the time period were 51 percent more likely to result in invalidated claims.
Neodron is a Dublin, Ireland-based company asserting mostly touchscreen related patents. In sum from January 2019 to October 2020 Neodron faced 34 petitions, which occurred in waves of activity. There were peaks of filing in December 2019, March 2020, June 2020, and September 2020.
Out of the 34 filed petitions, 11 are pending. Moreover, 77 percent of petitions were instituted in part or in full, which took an average of 173.6 days, somewhat shorter when compared to the average of 188 days. Additionally, Neodron is 20 percent more likely than the Docket Alarm average to have petitions instituted during the specified period. Petitions against Neodron were filed by Samsung, HP, Lenovo, Dell, Apple, Motorola Mobility, Microsoft, and others.
Bell-Northern Research is a Canadian telecommunications research and development entity and the successor of “device-related intellectual property that was developed by Bell Labs” and others, according to the company. It has had 29 petitions filed against its patents from January 2019 to October 2020. The pace of the filings seemed to slow down toward the end of 2019 and beginning of 2020, but picked up in February. While 29 petitions were filed, 15 were terminated before institution. No petitions have yet reached the written decision stage. Furthermore, 71 percent of petitions were instituted in part or in full, which is 11 percent more likely to institute that the average. Petitions were filed by Samsung, ZTE, Huawei, LG, and other entities.
Masimo is a medical device company based in California. According to its website, it “develops and manufactures innovative noninvasive patient monitoring technologies, medical devices, and a wide array of sensors.” Apart from one petition filed against the company in September 2019, the remaining 26 were filed between May 2020 and October 2020. Masimo’s 27 petitions currently have a petition institution rate of 90 percent, which means Masimo’s petitions are 40 percent more likely to be instituted in full or in part than the Docket Alarm average. Apple has filed 17 petitions against Masimo. In January, Law Street Media reported on Masimo’s district court suit against Apple for its health-tracking watch technology; some of the patents brought up in the suit, such as U.S. Patent Nos. 10,258,265; 10,292,628; 8,457,703; and 6,771,994 have been challenged by Apple through these petitions.
Patent Owner Law Firm Representation
Uniloc 2017 was primarily represented by Etheridge Law Group; specifically in 81 out of the 86 cases, or 94.2% of the petitions. In 5 out of 86 cases or 5.8% of the time, Philips Intellectual Property and Standards represents Uniloc 2017 followed by, Feinberg Day Alberti & Thompson, the Law Offices of John Stattler, Patterson & Sheridan, and Seed Intellectual Property Law Group. Feinberg Day Alberti & Thompson and Seed Intellectual Property Law Group started representing the company in 2020, while the remaining firms with smaller representation only represented Uniloc 2017 in 2019.
Rovi Guides is predominantly represented by Sterne, Kessler, Goldstein & Fox in 46 out of 48 cases, and is represented by Haley Guiliano in the remaining two cases.
Neodron is represented by Russ August & Kabat 76.5% of the time, or 26 out of 34 cases. Baker Botts represented Neodron in 10 out of 34 cases, and lastly, Shami Messinger represented the company in 2 of the cases. Shami Messinger is a new addition for 2020.
Bell-Northern Research is primarily represented by Skiermont Derby in 27 out of 29 cases or 93.1% of the time, followed by McAndrews, Held & Malloy.
In all 27 of Masimo’s cases Knobbe Martens Olson & Bear represent the company. The graph illustrates the increase in petitions for Masimo from 2019 to 2020.
On the other side of the IPR proceedings, the most frequent petitioners include Apple, Samsung, Google, Unified Patents (an organization that aims to discourage nonpracticing entity patent assertion), Microsoft, Comcast Cable Communications, Intel, Lenovo, and Motorola Mobility. Some of the frequent petitioners are also members of Unified Patents, such as Google.
In sum, despite the ongoing COVID-19 pandemic, the Patent Trial and Appeal Board petitions seem to have remained fairly constant during this time period. In 2020, the business of patent petitions remains strong with no signs of slowing down; time will tell if it will continue into 2021.
The analytics in this article are powered by One-Click Analytics from Docket Alarm. To learn more, schedule a demo with the Docket Alarm team.