Proposed USPTO Rules and Legislation Would Increase Government Costs

Recently proposed rulemaking and legislation would increase discretionary denial of institution of inter partes review (IPR) matters based on the criteria set forth in the Apple, Inc. v Fintiv, Inc. (Fintiv) matter and similar provisions. The Fintiv guidelines and related restrictions can make it difficult for claims to be fully considered even in cases where there is a substantial probability of success for the petitioner. If the proposed guidelines were implemented, the result would be a reduction in IPR proceedings even for cases that are otherwise meritorious. As a consequence, the economic efficiency benefits associated with the IPR process would be substantially diminished.

An additional issue with reducing IPR is that it will lead to higher costs of procurement for the US government. The Perryman Group estimates that the direct increased costs to the federal government associated with federal spending over the 2023-32 period would be -$106.4 million.

When summed with the estimated tax effects previously described, the total cost to the federal government was found to be almost -$202.9 million.

For more details please refer to the full report.

GEVC patent in SISVEL AV1 pool appears not essential

As part of an ongoing series examining the patent holders and pools erroneously designating patents as essential, we highlight U.S. Patent 10,460,344 titled “Region merging and coding parameter reuse via merging.” This patent is owned by GE Video Compression (GEVC). GEVC has designated the ’344 patent as essential to the AV1 standard as a part of SISVEL’s AV1 Patent Pool. See AV1 Patent List, AV1 Family AV1-040, available at https://www.sisvel.com/images/documents/Video-Coding-Platform/PatentList_AV1.pdf.

GEVC’s U.S. Patent 10,460,344 should not be considered to be essential to the AV1 standard. The ’344 patent is directed to a decoder that uses a merging or grouping of simply connected regions using a reduced amount of data. ’344 patent, Abstract. Namely, a merge indicator indicates whether a region currently being decoded should be reconstructed based on a motion coding parameter. If the indicator indicates copying, the appropriate vector is copied. If the indicator indicates compute, the appropriate motion vector is computed.  Id., claims 1, 9, 17, 26. 

The concept of a merge indicator is an evolved form of motion vector competition. See, e.g., Joel Jung and Guillaume Laroche, “Competition-Based Scheme for Motion Vector Selection and Coding,” VCEG Contribution VCEG-AC06r1, Klagenfurt, Austria, July 2006. In contrast to the ’344 patent and prior motion vector competition literature, the AV1 standard does not employ a merge indicator; rather, the concepts of merging and computing a motion vector is spread over multiple values, not merely an indicator to either copy the ap or compute the motion vector.  See, e.g., AV1 §§ 5.11.26 (assign_mv syntax code used to limit the maximum size of motion vectors); 5.11.23 (syntax); 6.10.22 (semantics describing new_mv, zero_mv, and ref_mv);. 

Thus, the ’344 patent does not appear to be essential to the AV1 standard despite being declared as essential. The public would benefit from appropriate scrutiny of patent pools that allegedly cover critical technical standards, particularly open-source standards such as AV1.

$2,000 for Biogy cybersecurity patent prior art

A new PATROLL contest, with a $2,000 cash prize, was added seeking prior art on at least claim 1 of U.S. Patent 7,669,236, owned by Biogy, Inc., an NPE. The ‘236 patent specification generally relates to cybersecurity and preventing access to an entity by unauthorized entities. A generated passcode is received by another system, which authenticates the passcode by at least generating a passcode from a passcode generator, and comparing the generated passcode with the received passcode.

The contest will expire on October 31, 2023. Please visit PATROLL for more information and to submit an entry for this contest.

IP Valuation Partners entity, 5G IP Holdings, 5G patent challenged

On August 21, 2023, Unified Patents filed an ex parte reexamination proceeding against U.S. Patent 10,813,163, owned and asserted by 5G IP Holdings LLC, an NPE and IP Valuation Partners, LLC entity. The '163 patent generally relates to discontinuous reception (DRX) and utilizing slots within subframes to adapt DRX to function within the 5G frame structure. The patent is currently being asserted against Apple and had previously been asserted against Samsung.

View district court litigations by 5G IP Holdings. Unified is represented by Drew Sommer at Greenberg Traurig, and by in-house counsel, David Seastrunk and Jessica L.A. Marks, in this proceeding.

To view the reexamination request, visit Unified’s Portal: https://portal.unifiedpatents.com/exparte/90015277

Adnexus advertising patent challenge instituted

On August 18, 2023, less than a month after Unified filed an ex parte reexamination, the Central Reexamination Unit (CRU) granted Unified’s request, finding a substantial new question of patentability on the challenged claims of U.S. Patent 8,719,101, owned and asserted by Adnexus, Inc., an NPE. The ‘101 patent relates to on-line advertising and has been asserted against Amazon, Meta Platforms, LinkedIn, Google, and eBay.

View district court litigations by Adnexus. Unified is represented by in-house counsel, Alyssa Holtslander and Jordan Rossen.

To view the reexamination request, visit Unified’s Portal: https://portal.unifiedpatents.com/exparte/90015262