Attack by eBay on Automatic Auction Patents, among 28 Reexamination Requests Filed Week of March 28, 2011

Scott Daniels | April 4, 2011

Late last year eBay was sued by XPRT for infringement of four patents claiming aspects for automatic auctioneering.  Last week, eBay requested inter partes reexamination of each of those patents (inter partes Request Nos. (2), (3), (4) & (8)).   

There was also a race to the PTO.  On Monday Vorsteen Consulting filed a request for ex parte reexamination of its U.S. Patent No. 6,878,358 (that claims a process for removing mercury from flue gases), together with a preliminary amendment narrowing the original claims and adding 33 new claims (see ex parte Request No. (2)). The same day, a third party requested reexamination of the same patent (see inter partes Request No. (1)), presumably presenting a different perspective on the validity issue.

Last week also featured requests for reexamination of a number of medical/biotechnical patents, including commercially significant patents claiming adipose-derived stem cells (inter partesRequest No.(6) and methods for treating cancer with hyaluronic acid and NSAIDS (ex parte Request No. 13).

The following inter partes requests were filed:

(1)         95/001,587 (electronically filed) – U.S. Patent No. 6,878,358 entitled PROCESS FOR REMOVING MERCURY FROM FLUE GASES and owned by Vosteen Consulting.  Filed March 28, 2011, by Nalco

(2)         95/001,588 (electronically filed) – U.S. Patent No. 7,567,937 entitled SYSTEM AND METHOD FOR AUTOMATICALLY EFFECTING PAYMENT FOR A USER OF AN ELECTRONIC AUCTION SYSTEM and owned by XPRT Ventures.  Filed March 29, 2011, by eBay.  The ‘937 patent is currently the subject of a litigation styled XPRT Ventures v. eBay et al. (Case No. 1:10-cv-595-SLR (D. Del.)). 

(3)         95/001,589 (electronically filed) – U.S. Patent No. 7,512,563 entitled SYSTEM AND METHOD TO AUTOMATE PAYMENT FOR A COMMERCE TRANSACTION and owned by XPRT Ventures.  Filed March 29, 2011, by eBay.  The ‘563 patent is currently the subject of a litigation styled XPRT Ventures v. eBay et al. (Case No. 1:10-cv-595-SLR (D. Del.)).

(4)         95/001,590 (electronically filed) – U.S. Patent No. 7,627,528 entitled SYSTEM AND METHOD FOR EFFECTING A REAL-TIME PAYMENT FOR AN ITEM WON ON AN ELECTRONIC AUCTION and owned by XPRT Ventures.  Filed, by eBay.  The ‘528 patent is currently the subject of a litigation styled XPRT Ventures v. eBay et al. (Case No. 1:10-cv-595-SLR (D. Del.)).

(5)         95/011,591 (electronically filed) – U.S. Patent No. 6,936,268 entitled SHEET-FORM ADHESIVE PREPARATION and owned by Hisamitsu Pharmaceutical.  Filed April 1, 2011, by Kowa

(6)         95/011,592 (electronically filed) – U.S. Patent No. 6,777,231 entitled ADIPOSE-DERIVED STEM CELLS AND LATTICES and owned by University of California. Filed April 1, 2011, by Cellerix.   

(7)         95/011,593 (electronically filed) – U.S. Patent No. 6,879,055 entitled BASE FRAME FOR MOUNTING THE SHAFT OF THE ROTOR OF A WIND POWER PLANT ONTO THE PLANT TOWER and owned by General Electric.  Filed April 1, 2011.  The ‘055 patent is currently the subject of a litigation styled General Electric v. Mitsubishi Heavy(Case No. 10-cv-00276 (N.D. Tex.)).

(8)         95/001,594 (electronically filed) – U.S. Patent No. 7,483,856 entitled SYSTEM AND METHOD FOR EFFECTING PAYMENT FOR AN ELECTRONIC AUCTION COMMERCE TRANSACTION and owned by XPRT Ventures.  Filed April 1, 2011, by eBay.  The ‘856 patent is currently the subject of a litigation styled XPRT Ventures v. eBay et al. (Case No. 1:10-cv-595-SLR (D. Del.)).

(9)         95/000,621 (paper filed) – U.S. Patent No. 7,729,863 entitled METHODS AND MATERIALS FOR CANINE BREED IDENTIFICATION and owned by NIH.  Filed March 8, 2011, by Bio Pet Vet Lab Corp. & Radio Systems.  The ‘683 patent is currently the subject of a litigation styled Fred Hutchinson Cancer Research Center at al v. Bio Pet Vet Lab Corp. and Radio Systems Corp. d.b.a. Pet Safe.

(10)     95/000,622 (paper filed) – U.S. Patent No. 6,820,454 entitled “S” SHAPED CAST IN WIRE and owned by Lincoln Global.  Filed March 30, 2011. 

(11)     95/000,623 (paper filed) – U.S. Patent No. 7,391,409 entitled METHOD AND SYSTEM FOR APPLYING GEARING EFFECTS TO MULTI-CHANNEL MIXED INPUT and owned by Sony Computer Entertainment.  Filed March 29, 2011.

The following exparte requests were filed:

(1)         90/011,603 (electronically filed) – U.S. Patent No. 7,024,387 entitled AUTOMATED SYSTEM FOR CONDITIONAL ORDER TRANSACTIONS IN SECURITIES OR OTHER ITEMS IN COMMERCE and owned by 5th Market Inc.  Filed March 28, 2011.  

(2)         90/011,604 (electronically filed) – U.S. Patent No. 6,878,358 entitled PROCESS FOR REMOVING MERCURY FROM FLUE GASES and owned by Vosteen Consulting GmbH.  Filed March 28, 2011, by owner.  

(3)         90/011,605 (electronically filed) – U.S. Patent No. 6,725,427 entitled DOCUMENT STREAM OPERATING SYSTEM and owned by Mirror Worlds.  Filed March 29, 2011, likely by Apple.   The ‘427 patent is currently the subject of a litigation styled Mirror Worlds v. Apple(Case No. 6:08-cv-88-LED (E.D.Tex.)).

(4)         90/011,606 (electronically filed) – U.S. Patent No. 6,241,927 entitled METHOD OF PRODUCING CELLULOSE FIBERS and owned by Lenzing Aktiengesellschaft.  Filed March 30, 2011.  

(5)         90/011,607 (electronically filed) – U.S. Patent No. 6,057,221 entitled LASER-INDUCED CUTTING OF METAL INTERCONNECT and owned by U.S. Air Force.  Filed March 30, 2011, by owner.  

(6)         90/011,608 (electronically filed) – U.S. Patent No. 7,321,846 entitled TWO-WIRE PROCESS CONTROL LOOP DIAGNOSTICS and owned by Rosemount.  Filed March 31, 2011.  

(7)         90/011,609 (electronically filed) – U.S. Patent No. 7,682,828 entitled METHODS FOR REPROGRAMMING SOMATIC CELLS and owned by Whitehead Institute for Biomedical Research.  Filed March 31, 2011.

(8)         90/011,610 (electronically filed) – U.S. Patent No. 7,899,511 entitled LOW OXYGEN IN VIVO ANALYTE SENSOR and owned by DexCom.  Filed March 31, 2011.

(9)         90/011,611 (electronically filed) – U.S. Patent No. 7,168,643 entitled LEAF SNATCHER and owned by Fiducie Familiale Mercer.  Filed March 31.  

(10)     90/011,612 (electronically filed) – U.S. Patent No. 7,124,088 entitled APPARATUS FOR INTERNET ON-LINE INSURANCE POLICY SERVICE and owned by Progressive Insurance.  Filed March 31, 2011 by Liberty Mutual.

(11)     90/011,613 (electronically filed) – U.S. Patent No. 6,690,141 entitled MULTI-FUNCTIONAL CHARGER WITH POWER GENERATING AND ILLUMINATION FUNCTIONS and owned by Original Creations.  Filed April 1, 2011.  

(12)     90/011,614 (electronically filed) – U.S. Patent No. 6,690,141 entitled MULTI-FUNCTIONAL CHARGER WITH POWER GENERATING AND ILLUMINATION FUNCTIONS and owned by Original Creations.   Filed April 1, 2011.

(13)     90/011,615 (electronically filed) – U.S. Patent No. 5,639,738 entitled TREATMENT OF BASAL CELL CARCINOMA AND ACTINIC KERATOSIS EMPLOYING HYALURONIC ACID AND NSAIDS and owned by Jagotec AG. Filed, April 1, 2011.  

(14)     90/011,616 (electronically filed) – U.S. Patent No. 7,037,543 entitled Method of EXTENDING COLOR LIFE OF MODIFIED ATMOSPHERE PACKAGED FRESH RED MEAT USING LABIATAE PLANT EXTRACTS and owned by Kalsec.  Filed April 1, 2011.

(15)     90/011,617 (electronically filed) – U.S. Patent No. 6,050,348 entitled DRILLING METHOD AND APPARATUS and owned by Canrig Drilling.  Filed April 1, 2011.

(16)     90/011,618 (electronically filed) – U.S. Patent No. 6,418,419 entitled AUTOMATED SYSTEM FOR CONDITIONAL ORDER TRANSACTIONS IN SECURITIES OR OTHER ITEMS IN COMMERCE and owned by 5th Market Inc.  Filed April 2, 2011.

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