Several tech companies have devised a novel approach to tackling Uniloc's Patent '216.
By resorting to the Patent Trademark and Appeals Board (PTAB), instead of the federal courts, several tech companies have gained a favorable ruling in a case involving the use of a product activation software.
Among the companies involved in the successful case are Sega of America, Ubisoft, Cambium Learning, and other online distributors.
Local lawyers from Overland Park and Irvine, California have challenged the case by focusing on the way Patent '216 was lodged in the U.S. Uniloc originally filed the patent for the product in Australia in September 1992 and used existing intellectual property ad copyright laws to claim priority for its U.S. filing date, based on the Australian filing date. The procedure used is called the "inter partes review."
The PTAB ruled in favor of the tech companies opposing Uniloc, but this does not mean that the battle is over. Uniloc may still challenge PTAB's ruling, which goes against the decisions by federal courts.
"The PTAB decision is inconsistent with two prior rulings by the Federal Circuit, and with the opinions of seven patent examiners who previously upheld the validity of the '216 patent in multiple re-examinations," said Sean Burdick, president of Uniloc USA. "[T]he PTAB gave undue credibility to a lone expert opinion that was authored by petitioners' counsel."
U.S. Patent No. 5,490,216 held by Uniloc has been used for quite some time to sue major software and tech companies such as Microsoft, Mojang, and Electronic Arts into paying millions of dollars in damages.
In the case of Microsoft, the case led to damages amounting to $388 million dollars, a verdict that was appealed by the company, but was later upheld on appeal and eventually settled for an undisclosed sum.
Patent '216 involves the use of trial based software registration system, which requires potential buyers to enter codes that will allow them to test the software in trial mode before purchase. The system lets the manufacturer to offer software product and applications, while protecting its intellectual property rights at the same time.
Photo: Chris Potter | Flickr
