Authored by Michelle Carniaux and Michael E. Sander
New business models are often risky, and those based on patents are no exception. When we last wrote about Iron Dome LLC (“Iron Dome”), we discussed their novel (alleged) business model of offering to forego their right to file petitions for inter partes reviews against specific patents owned by patent assertion entities (“PAE”) in exchange for a transferable license to the patents. We already reported that Iron Dome filed IPRs against patents owned by Chinook Licensing (IPR2015-00055) and e-Watch, Inc. (IPR2014-00439), allegedly after their offers were rebuffed. Iron Dome’s petition for IPR against e-Watch was granted.
However, Iron Dome has already faced some bumps in the road. In addition to facing a lawsuit brought by Chinook alleging extortion, earlier this month, the Board tolled the death knell for Iron Dome’s bid for an IPR of Chinook’s patent by denying Iron Dome’s request for rehearing the Board’s decision denying institution (which appears to turn on a claim construction issue). IPR2014-00674, No. 12 Notice (P.T.A.B. Nov. 4, 2014). After the PTAB denied Iron Dome’s petition, Chinook moved the District Court to amend its Complaint to add details regarding the denial of the petition. Chinook Licensing DE LLC v. RozMed LLC et al, 1:14-cv-00598, No. 22 (D.Del. Nov. 7, 2014).
It remains to be seen if Iron Dome has any other missiles in its battery with respect to Chinook.
Iron Dome’s IPR against e-Watch, Inc. however, is progressing towards a final written decision. Last week, e-Watch filed its Patent Owner Response arguing that the publications submitted by Iron Dome are not prior art to their patent because the alleged invention claimed in the patent at issue, the ’871 Patent, was conceived prior to the date of the prior art documents, and the inventor exercised reasonable diligence — over more than two and a half years — in (constructively) reducing the claimed invention to practice. See IPR2014-00439, No. 24 Patent Owners Response (P.T.A.B. Nov. 12, 2014). To support its argument, e-Watch submitted a declaration of the inventor and ten other individuals, employee time-sheets, and other records. Such an extensive evidentiary showing is atypical for an inter partes review, where discovery and extrinsic evidence other than dictionary definitions and expert testimony tends to be kept to a minimum. It will be interesting to see whether Iron Dome has the resources necessary to take depositions of the declarants and whether the Board will allow Iron Dome to seek further discovery.
Not one to stand still, in October, Iron Dome launched its third IPR “missile” against CRFD Research, Inc., another PAE that is engaged in several patent litigations against defendants such as: Cablevision Systems Corp., Time Warner Cable Inc., Comcast Corp., Dish Network Corp., AT&T Inc., DirecTV, and Cox Communications Inc., Hulu LLC, Netflix Inc., Spotify USA Inc., Amazon.com Inc., and Verizon. See IPR2015-00055, No. 1, Petition (P.T.A.B. Oct. 10, 2014).
The technology of the challenged patent generally relates “to a method of transferring sessions between a user’s networked devices, such as transferring a user’s web browsing.” Id. at 4.
A decision from the Board on Iron Dome’s third IPR is not due until late April, 2015. However, given the bustle of activity in the e-Watch IPR, Iron Dome will likely be taking advantage of the break to conserve its “missile fuel.”