Caltech Prevails in IPR Proceedings
On April 21, 2016, the Patent Office issued a final written decision that brought to a close a dispute between California Institute of Technology (Caltech) and Hughes Communications, Inc., Hughes Network Systems LLC, DISH Network Corporation, DISH Network L.L.C., and dishNET Satellite Broadband L.L.C. (collectively, Hughes) involving six IPR proceedings. Caltech, represented by WSGR, successfully beat back patent challenges in all six IPRs at the Patent Office. The proceedings represented challenges to four Caltech patents in a battle related to error correction codes for data transmissions, including digital satellite communications. The PTAB substantially rejected the challenges, freeing Caltech to enforce its rights to its seminal inventions in district court.
At issue were four related Caltech patents: U.S Patent No. 7,116,710, No. 7,421,032, No. 7,961,781, and No. 8,284,833. In reaching its earlier decisions on whether to grant Hughes’ petitions and institute inter partes review, the PTAB rejected five out of the six petitions in their entirety. The sixth petition was instituted as to just two of twelve challenged claims. In its preliminary responses, Caltech pointed out a number of deficiencies in Hughes’ petitions. The PTAB decisions were based on many of the same deficiencies, including failure by Hughes to prove one of its main prior art references qualified as a printed publication, failure to support arguments regarding the content of the prior art and alleged lack of written description in the specification with adequate expert testimony, and numerous substantive issues with the underlying prior art analysis. In all, the PTAB denied institution as to 35 of the 37 challenged claims, including rejection of all challenges to claims asserted in the district court litigation.