Motorola Loses Bid Under the Business Method Patent Review Program for Intellectual Ventures Patents

Motorola Mobility LLC has been denied a review bid for two patents held by Intellectual Ventures LLC. The three judge panel of the Patent Trial and Appeal Board at the US Patent and Trademark Office found that the Motorola failed to prove that the software related patents held by Intellectual Ventures were “covered business patents” under the American Invents Act.

Both patents are also part of lawsuits filed by both parties in federal courts. The patents involved are US Patent Numbers 6,577,054 and 6,658,464, both being software related. The ‘054 patent is for protection of a method for distributing updates via a software directory while the ‘464 patent covers user station software for controlling remote content.

Motorola Falls Short

The three judge panel observed that Motorola had failed to establish that the patents were eligible for the covered business method patent review program. According to the USPTO, the program targets patents that claim financial service data processing methods, and excludes patents pertaining to technological inventions.

Just Art!

Motorola’s review petitions were filed around three months after a Delaware federal judge had declared a mistrial in an infringement suit filed by Intellectual Ventures patent attorneys over a number of patents that included the two that Motorola sought a review. In Motorola’s defense, the company’s patent lawyers argued that the patent claims were not technological inventions since the technologies incorporated in them were prior art.

The company’s lawyers tried to convince the judge to decide as a matter of law that its products did not infringe on the patents held by Intellectual Ventures. In its finding, the Patent Trial and Appeal Board observed that Motorola had not carried the burden of establishing that the ‘464 patent is a covered business method patent.

The rulings come at a time when both Motorola and Intellectual Ventures are fighting patent lawsuits in federal courts. Motorola has filed for ex part re-examinations of the three patents. The proceedings began in May. The latter was the first to file a lawsuit against Motorola in 2011 for patent infringement of six of its patents. Of the six, three went to trial. However, failure of the 10-person jury to reach a decision forced the district judge to declare a mistrial.

Motorola is still hanging in there.

Motorola is still hanging in there.

Decision Diagnostics Wins Battle Against Johnson & Johnson Lifescan

The manufacturer of the popular GenStrip(TM) glucose test strip, Decision Diagnostics Corp., recently announced that the United States Patent and Trademark Office, Patent Trial and Appeal Board, has sustained the company’s challenge to Johnson & Johnson Lifescan’s Patent 7,250,105. In its final ruling, the USPTO ruled the three claims used by J&J Lifescan in their patent lawsuit against Decision Diagnostics and Pharma Tech as ‘unpatentable’. GenStrip(TM is a glucose test strip designed to work with glucose testing meters of the Johnson’s LifeScan Ultra series. According to the company’s patent attorneys, GenStrip test strips are not manufactured , distributed or associated with Johnson & Johnson’s LifeScan®, and is a sole product of Pharma Tech Solutions, Inc.

This is the third ruling by a higher court on the same J&J Lifescan Patent by the same USPTO three judge panel. Last year in August, the judges in their preliminary ruling observed that Pharma Tech demonstrated the likelihood of proving the unpatentability of claims 1-3 of the ‘105 patent based on a preponderance of evidence. The Federal Circuit Court reversed an earlier ruling made by a District Court judge in March of 2013 in California.

The judge ruled that the J&J Lifescan intellectual property rights under the ‘105 patent were subject to the policy of patent exhaustion. With the current USPTO ruling, significant parts of J&J Lifescan’s lawsuit have been resolved with the help of patent lawyers. The November 4th, 2013 and August 6th, 2014 rulings are days that strongly influence later developments for Decision Diagnostics Corp.