Internet privacy software and solutions specialist ContentGuard has confirmed that the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) issued final written decisions on June 26th 2014 and July 1st 2014 finding valid all claims of the ContentGuard digital rights management (DRM) patents at issue. These decisions follow patent trials conducted before the PTAB in February 2014.
The inter partes review (IPR) proceedings at the USPTO, through which these trials were conducted, were initiated in February 2013 by one of a handful of handset manufacturers who have not yet licensed ContentGuard’s DRM technologies. These unlicensed companies have put themselves at an unfair competitive advantage over the many companies who have licensed these technologies.
These decisions are extraordinary considering the track record of patentees in IPR proceedings. According to some estimates, based on data available from the USPTO, as of April 2014 only five per cent of patent claims in IPR proceedings that had been instituted since the IPR process was adopted in the fall of 2012 have been upheld by the PTAB in the face of validity challenges.
“We were confident in the strength of ContentGuard’s DRM patents and in the fundamental DRM patents that were the subject of this review given our rich history of innovation in rights protection technologies and our deep portfolio of more than 300 patents worldwide,” commented James Baker, ContentGuard’s vice president for licensing and strategic development. “These rulings confirm the relevance and importance of ContentGuard’s innovations in the DRM space and validate our continuing development of leading edge ephemeral content management mobile apps and content protection solutions with the knowledge that our intellectual property rights are protected.”
These innovations have their origin with a team of Xerox PARC inventors who are widely recognised as pioneers of DRM as we know it today.
Three of the four patents found valid at the PTAB trials, United States Patent Nos. 6,963,859; 7,269,576; and 7,523,072 are currently involved in patent infringement litigation ContentGuard brought against Apple, Amazon.com, Blackberry, Google, HTC, Huawei, Motorola Mobility and Samsung Electronics, following long standing efforts to avoid litigation through the grant of licenses. Another patent in the action, US Patent No. 7,225,160, was also the subject of such a request for IPR, which concluded in August 2013 with valid claims confirmed.
Additionally, a sixth patent in the IPR action concluded in November 2013 with valid claims confirmed.