Patent litigators Meredith Addy, Robert P. Hart, and Gregory B. Gulliver of AddyHart P.C. are counsel for Thales DIS AIS Deutschland GmbH on nine new petitions for inter partes review filed in the US Patent and Trademark Office’s Patent Trial and Appeals Board (PTAB) in the first half of 2021 against US patents of Luxembourg-based patent assertion entity Sisvel International or its affiliate, Luxembourg-based 3G Licensing S.A.
Thales DIS AIS joins other petitioners including Cradlepoint, Inc., Dell, Honeywell Int’l., Sierra Wireless, TCL Communication Technology Holdings, ZTE Corp. and ZTE USA, and four entities of TCT Mobile. The nine new IPRs filed on behalf of Thales DIS AIS follow six prior IPRs that AddyHart filed in 2020, for a cumulative total of fifteen petitions for IPR for its client in the past twelve months.
Thales DIS AIS Deutschland GmbH, based in Amsterdam, The Netherlands, provides digital identity and security solutions to financial services clients and other companies. Formerly Gemalto N.V., Thales DIS in April 2019 became a subsidiary of Thales Group, a global provider of defense, aerospace and space technologies and other solutions.
The nine IPRs in which Thales DIS AIS Deutschland Gmbh is joining Petitioners are:
- Cradlepoint, Inc. et al. v. Sisvel S.P.A. (IPR2021-00580) U.S. Patent No. 7,869,396. “Data Transmission Method and Data Re-transmission Method.”
- Cradlepoint, Inc. et al. v. 3G Licensing S.A. (IPR2021-00584) U.S. Patent No. 7,551,625 “Method of Scheduling an Uplink Packet Transmission Channel in a Mobile Communication System.”
- Cradlepoint, Inc. et al. v. 3G Licensing S.A. (IPR2021-00639) U.S. Patent No. 8,189,611 “System and Method for Resolving Contention Among Applications Requiring Data Connections Between a Mobile Communications Device and a Wireless Network.”
- Cradlepoint, Inc. et al. v. 3G Licensing S.A. (IPR2021-00640) U.S. Patent No. 8,600,383 “Apparatus and Method for Making Measurements in Mobile Telecommunications System User Equipment.”
- TCT Mobile US Inc. et al. v. Sisvel S.P.A. (IPR2021-00678) U.S. Patent No. 8,971,279 “Method and Apparatus for Indicating Deactivation of Semi-persistent Scheduling.”
- Cradlepoint, Inc. et al. v. Sisvel Intl. S.A. (PTAB Case No. IPR2021-00815) U.S. Patent No. 7,979,070 “Method and Apparatus for Providing Enhanced Messages on Common Control Channel in Wireless Communication System.”
- Cradlepoint, Inc. et al. v. 3G Licensing S.A. (IPR2021-00906) U.S. Patent No. 7,580,388 “”
- Honeywell International, Inc. et al. v. 3G Licensing S.A. (IPR2021-00908) U.S. Patent No. 7,319,718 “CQI Coding Method for HS-DPCCH.”
- Cradlepoint, Inc. et al. v. 3G Licensing S.A. (IPR2021-01141) U.S. Patent No. 7,215,653 – “Controlling Data Transmission Rate on the Reverse Link for Each Mobile Station in a Dedicated Manner.”
Thales DIS AIS’s IPRs were filed in response to a series of litigations filed against Thales DIS AIS’s customers by Sisvel International in the US. Sisvel has asserted that its patents are standard essential patents (SEP). Each litigation asserted infringement of nine to twelve patents by customers using products that incorporate Thales’ family of Internet of Things (IoT) modules.
“Sisvel’s contention that our customers infringe Sisvel’s patents is unfounded,” notes Addy. “We remain confident that Thales DIS and its fellow Petitioners will succeed in invalidating the claims at issue, many of which are nearing the end of their patent term.”
Meredith Addy, co-founder of AddyHart P.C., leads the firm’s IP litigation practice group of six experienced attorneys who handle complex intellectual property matters for clients in diverse industries. She focuses her practice on appeals at the US Court of Appeals for the Federal Circuit, and has been trying cases across a range of industries for over 25 years. Addy first-chaired some of the most notable patent litigations and appeals, including Thales Visionix v. United States and Elbit, Abbott v. Sandoz, and Chiron v. Genentech. Her experience includes more than 80 cases in the federal district courts and more than 100 appeals to the Federal Circuit. She has also guided several Abbreviated New Drug Applications (ANDA) pharmaceutical cases under the Hatch-Waxman Act through trial and appeal, and she handles cases before the Court of Federal Claims and the PTAB.
Robert Hart, co-founder of AddyHart P.C., is an experienced first-chair trial attorney with more than 30 years’ experience in private practice and as in-house counsel. He focuses his practice in corporate law and intellectual property trials and strategy. Licensed by the USPTO and the Canadian IP Office, he is former Chief IP Counsel for Harman International and before that was division IP counsel for a major semiconductor company. Hart has led and managed international patent and trademark cases in Germany, Japan, China, France and Italy, and advises on transactions including mergers and acquisitions. His corporate law experience includes counseling companies on entity formation, compliance and corporate governance, securities filings, transactional matters and mergers and acquisitions.
Gregory Gulliver, a founding member of AddyHart P.C., is a licensed patent attorney with a strong technical background. Gulliver focuses his practice on complex patent prosecution and patent-related client counseling, opinion work, clearance, and strategies; transactional matters related to patents; trademarks, copyrights, and licensing issues, and business methods. He has also litigated in state and federal courts. His experience includes nine years as a software engineer at Motorola and Bell Northern Research. He previously practiced IP law at Eclipse Group LLP; Sonnenschein, Nath & Rosenthal (now Dentons), and at Wildman Harrold Allen & Dixon (now Locke Lord).