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Unified Patents Challenges Clouding IP Patent, Seeks to Push Patent Trolls Out of Cloud Storage
Tuesday, September 17, 2013
Unified Patents launches next phase of anti-troll solution and files first-of-its-kind Inter-Partes Review in defense of cloud storage technologies
Unified Patents (Unified) announced today it has filed an Inter-Partes Review (IPR) with the U.S. Patent and Trademark Office (PTO) requesting review of Clouding IP's U.S. Patent No. 6,738,799 (“‘799 Patent”). The IPR proceeding is a new PTO alternative to the high cost of patent litigation that is being utilized to break the business model of “patent trolls.”
The ‘799 Patent claims allegedly cover file synchronization technology deployed in the solutions of some of the most successful cloud storage companies. Unified’s request states that prior art references available before the ‘799 patent's earliest priority date raise substantial new questions about the patentability of the patent’s claims.
“Clouding IP has gained a reputation as a patent ‘troll’ and is pursuing litigation against a number of defendants for allegedly infringing a patent we firmly believe to be invalid,” said Kevin Jakel, founder of Unified. “We want all non-practicing entities to know that Unified will vigorously challenge invalid patents being asserted in cloud storage. We are pleased to be at the forefront of protecting strategic technologies from NPE activity.”
Clouding IP's ‘799 patent has been the subject of two previous IPRs (IPR2012-00073 and IPR2013-00261) filed by Oracle. In the prior proceedings, the PTO instituted trial for the first IPR and found the claims of the ‘799 to be reasonably likely to be unpatentable. Clouding IP subsequently attempted to amend its claims, thus conceding unpatentability of the challenged claims; yet Clouding IP continues its costly assertion of the ‘799 patent in district court. The second IPR challenged additional claims but, before consideration by the PTO, both IPRs ended in late July as a result of a settlement between Oracle and Clouding IP.
In addition to Oracle, Clouding IP has asserted this patent in district court litigation against Apple, Google, Microsoft, Amazon, Rackspace, SAP, Dropbox, Verizon, and EMC. Clouding IP has also sued over a dozen additional companies based on other patents.
“We are confident the Patent Trial and Appeal Board will institute review of the ‘799 patent and cancel the challenged claims,” commented lead counsel Michael Kiklis, a partner with Oblon Spivak’s leading post-grant practice group. “We are excited to support Unified Patents in its decision to challenge invalid patents in the hands of companies like Clouding IP.”
This new IPR against the ‘799 patent marks the first for Unified’s recently launched Cloud Storage Micro-Pool, which introduces a cost-effective solution for companies to protect strategic technologies from NPE encroachment, like cloud storage. Unified’s solution uniquely monitors a protected technology on behalf of large and small companies to identify NPE activity early, and efficiently confronts invalid patents using a host of defensive and offensive strategies.
Brad Lytle, managing partner at Oblon Spivak, commented, “Companies were previously forced to decide between paying to license patents they do not think are valid or paying to defend themselves in court. As the number one filer of post-grant challenges in the U.S., our firm has demonstrated that we can break this model by strategic use of post-grant filings. Unified Patents is doing a public service by protecting strategic technologies from NPE activity.”
“We are using all of the tools at our disposal to protect strategic technologies from NPEs,” said Jakel. “Inter-partes review, like the one we are pursuing against Clouding IP, is just one of those tools.”
ABOUT UNIFIED PATENTS
Unified Patents (Unified) counters the risk and cost of patent troll litigation by protecting strategic technologies. Unified’s unique solution partners startups, SMBs and large companies and then proactively deters patent troll activity using deep patent expertise, patent troll monitoring, market intelligence, advisory services, and USPTO challenges. By protecting a strategic technology, Unified mitigates patent troll risk for its members’ most important products and services. More information can be found at www.unifiedpatents.com
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