The U.S. Patent and Trademark Office’s Patent Trial and Appeals Board rejected a petition to institute an inter partes review filed by Volkswagen Group of America to invalidate a patent owned by Marathon Patent Group Inc.’s (MARA) Signal IP unit.
The patent U.S. Patent No. 5,714,927 B1 is one of several at issue in patent infringement litigation against Volkswagen and other car companies in which Signal IP was seeking $1.4 billion to $1.6 billion.
At stake for Volkswagen is $132 million to $146 million Signal IP said it was seeking in preliminary damages.
Signal IP has settled with Jaguar Land Rover North America LLC; Volvo Cars of North America, LLC and Porsche Cars North America for far less than its preliminary damages estimate.
The company said in a filing with the Securities and Exchange Commission that Signal IP received $275,000 from Volvo, which was only 2% of the $13 million to $14 million in initial damages it was seeking.
Marathon hasn’t disclosed the amounts it received from Jaguar or Porsche. Two percent of $20 million to $22 million sought from Jaguar would be $400,000 to $440,000, while 2% of the $23 million to $25 million sought from Porsche would be $460,000 to $500,000.
"We are not persuaded that the Petition demonstrates a reasonable likelihood that Petitioner would prevail in establishing unpatentability of claims 1, 2, and 6. For the foregoing reasons, we are not persuaded the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in establishing unpatentability of claims 1, 2, and 6 as obvious over Bernhard, Pakett, and Fujiki. For the foregoing reasons, it is ordered that the Petition is denied as to all challenged claims and no trial is instituted.”
Earlier this year, a U.S. District Court in Los Angeles denied Volkswagen’s motion to stay Signal IP’s case pending the outcome of the IPR petition.
Marathon CEO Doug Croxall said in a statement that Volkswagen’s IPR was the only one filed against the ‘927 patent.
“This ruling, along with those that have preceded it, continue to demonstrate the value of our proprietary process to assess, value, and acquire high quality patent assets that have the potential of generating meaningful return on investment for both the company and its shareholders.”
Signal IP has asserted the ‘927 patent against: Ford Motor Co.; Mercedes-Benz USA LLC; Fiat USA Inc.; BMW of North America, LLC; Jaguar Land Rover; Porsche; Volvo; Nissan North America; Mazda Motor of America Inc.; Kia Motors America Inc. and American Honda Motor Co. Inc.
Official of Marathon couldn't be reached for comments on whether a settlement or a trial was more likely with Volkswagen in the wake of the IPR denial.
—To reach the reporter responsible for this story please contact Dan Lonkevich at 707 318-7899 or at email@example.com