Vringo Confirms US PTO Validity of '664 Patent Asserted in Litigation with AOL, Google
Vringo, Inc. (NASDAQ: VRNG), a company engaged in the innovation, development and monetization of intellectual property and mobile technologies, today announced that on November 5, 2013, the United States Patent and Trademark Office mailed a notice that it will issue a certificate confirming that all of the claims of U.S. Patent No. 6,775,664 challenged by Google remain valid and unchanged.
Background on U.S. District Court and Court of Appeals Proceedings
On November 6, 2012, a jury in U.S. District Court in Norfolk, Virginia ruled in favor of I/P Engine, Inc., a wholly-owned subsidiary of Vringo, and against defendants AOL, Inc., Google, Inc., IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation (collectively, "Defendants") with respect to Defendants' infringement of the asserted claims of U.S. Patent Nos. 6,314,420 and 6,775,664.
After upholding the validity of the patents-in-suit, and determining that the asserted claims of the patents were infringed by Defendants, the jury found that reasonable royalty damages should be based on a "running royalty," and that the running royalty rate should be 3.5%. The jury also awarded I/P Engine a total of approximately $30.5 million. On November 20, 2012, the clerk entered the District Court's final judgment.
I/P Engine and the defendants have appealed the case to the Court of Appeals for the Federal Circuit.
On August 1, 2013, the District Court found that I/P Engine is entitled to supplemental damages from October 1, 2012 to November 20, 2012; prejudgment interest from September 15, 2011 to November 20, 2012; and post-judgment interest for Defendants' infringement. The amounts for each of the foregoing shall be determined by the District Court.
On August 16, 2013, the District Court found that I/P Engine is entitled to an award of post-judgment royalty, and that additional discovery and briefing is necessary to determine the precise amount of the royalty.
Google has asserted that, as of May 2013, it implemented a "design around" to its system such that it no longer infringes the asserted patents. To resolve the ongoing royalty rate and whether Google's alleged design around is more than colorably different than the previously adjudicated infringing system, the district court set a discovery and briefing schedule.
* I/P Engine served its expert reports on September 25, 2013.
* Defendants served their expert reports on October 15, 2013.
* The parties then submitted briefs to the district court on October 30, 2013.
* The parties' responsive briefs are due on November 10, 2013.
The District Court has also ordered the parties to attempt to set their own royalty rate before the District Court imposes one. To that end, the District Court ordered that within five days of completing the aforementioned discovery and briefing schedule, the parties shall meet to negotiate an appropriate ongoing royalty rate, using 20.9% of U.S. AdWords revenues as the appropriate royalty base.
The U.S. District Court proceedings are pending in the Eastern District of Virginia, Norfolk Division. The case number is 2:11cv512RAJ. Appellate proceedings are pending in the United States Court of Appeals for the Federal Circuit. The docket numbers are 13-1307 and 13-1313. The court dockets for the foregoing cases are publicly available on the Public Access to Court Electronic Records website, www.pacer.gov, which is operated by the Administrative Office of the U.S. Courts.
Background on United States Patent and Trademark Office Proceedings
On March 15, 2012, Google submitted a request to the USPTO for ex parte reexamination of certain claims of U.S. Patent No. 6,314,420. On July 18, 2012, the USPTO issued a determination ordering a reexamination. On September 25, 2012, the USPTO issued a first, non-final office action where it adopted the rejections proposed by Google. I/P Engine's response was filed on November 26, 2012. A final, appealable office action maintaining the rejections was mailed on May 3, 2013. An interview was held with the Examiner and on July 3, 2013 I/P Engine filed a response. On September 13, 2013, the USPTO issued a certificate confirming that all of the claims in the '420 patent challenged by Google remain valid and unchanged. On September 20, 2013, the USPTO ordered a second reexamination of certain claims of the '420 patent based on a reference not relied upon by Google in the first reexamination. To date, the USPTO has not determined whether to reject the claims of the '420 patent.
On November 20, 2012, Google submitted a request to the USPTO for ex parte reexamination of certain claims of U.S. Patent No. 6,775,664 based on four prior art references. On January 17, 2013, the USPTO ordered reexamination based on only one of the four references submitted by Google. On February 8, 2013, Google filed a second request for reexamination based on the three references not adopted by the USPTO in the first proceeding. On March 7, 2013, the USPTO ordered a second reexamination proceeding. On May 10, 2013, the USPTO issued a first, non-final office action in the first reexamination. On June 13, 2013, the USPTO decided to merge the two reexamination proceedings. On June 25, 2013, the May 10 office action was rescinded and a new non-final office action was issued, rejecting the challenged claims based on two of the four references originally cited by Google. I/P Engine's response was timely filed on August 26, 2013. An interview was subsequently held with the Examiner on September 16, 2013. On November 5, 2013, the USPTO mailed a notice that it will issue a certificate confirming that all of the claims in the '664 patent challenged by Google remain valid and unchanged.
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