Marathon Patent Group Inc. (MARA) the patent licensing company run by CEO Doug Croxall, said that on Tuesday the Patent Trial and Appeal Board denied Volkswagen Group of America Inc.’s petition for inter partes review of a patent related to occupant restraints for vehicles.
The patent at issue is U.S. Patent No. 6,012,007, “Occupant Detection Method and Apparatus for Air Bag System," which pertains particularly to a method of using seat sensors to determine seat occupancy for control of the deployment of vehicle airbags.
The denied IPR was one of two filed by Volkswagen to invalidate patents at issue in a number of infringement actions filed by Marathon unit Signal IP against Volkswagen and other car companies. The suits, which were filed in U.S. District Court in the Central District of California and in U.S. District Court in the Eastern District of Michigan were seeking $1.4 billion to $1.6 billion in preliminary damages, though settlements with individual car companies have been for a small fraction of the preliminary damages estimate.
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 only $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.
“Petitioner's challenge to claim 1 is unpersuasive. Claim 17 is similar to claim 1, but recites ‘a microprocessor...particularly programmed to’ perform the steps of the method of claim 1. Petitioner's contentions regarding claim 17 include the same deficiencies discussed above regarding claim 1. Pet. 26-27, 45-47. Accordingly, we are not persuaded that Petitioner has established a reasonable likelihood of success on its challenge to claims 1 and 17, or claims 19-21, which depend from claim 17, based on obviousness over Cashler and Schousek. For the foregoing reasons, we determine that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims…"
Croxall said Marathon was pleased with the PTAB's decision denying Volkswagen's IPR petition and noted it came after a previous IPR filed by Volkswagen against the '927 patent was denied.
"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 was represented by the Ascenda Law Group at the PTAB proceedings.
Signal IP has pending infringement actions against Ford Motor Co., Mercedes-Benz USA LLC, Fiat USA, BMW of North America, LLC, Volkswagen Group of America, Nissan North America, Inc., Mazda Motor of America, Kia Motors America,. American Honda Motor Co., Subaru of America, Hyundai Motor America, and Toyota North America.
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