Micro-Probe Attack on FormFactor Electrical Connection Patent, among Reexamination Requests Filed Week of April 18, 2011

Scott Daniels | April 25, 2011

Micro-Probe has requested reexamination of FormFactor’s U.S. Patent No. 7,225,538 that claims methods for making electrical connections in semiconductor packaging assemblies (see inter partes Request No. (11)). FormFactor has sued Micro-Probe in the Northern District of California for infringement of the ‘538 patent, as well as for infringement of six other patents and for a series of trade secret-type violations.  The PTO has ordered reexamination for five of those FormFactor patents, and Micro-Probe has moved Judge Phyllis Hamilton for a partial stay of the District Court case.  The ‘538 was the subject of an ITC investigation in 2009 that ended in a determination of no infringement by the importers.

The clear winner last week for the number of requests filed was Vesdia that sought reexamination of four TuitionFund patents related to merchant rebates and college tuition (see inter partes Request Nos. (1), (3), (5) & (6)).  The two companies are in litigation in Tennessee over those patents.

After requesting reexamination for a Hisamitsu transdermal adhesive patent three weeks ago, Kowa has now requested reexamination of a second Hisamitsu patent, this one claiming transdermal patches (see inter partes Request No. (2)).

Finally, reexamination was requested of two Sorenson patents that claim systems for exterminating pests (see ex parte Request Nos. (4) & (6)). 

The following inter partes requests were filed:

(1)         95/001,602 (electronically filed) – U.S. Patent No. 7,653,572 entitled METHODS AND SYSTEMS FOR PROVIDING A REBATE PROGRAM and owned by TuitionFund.  Filed April 15, 2011, by Vesdia.  The ‘572 patent is currently the subject of a litigation styled TuitionFund v. SunTrust Banks et al. (Case No. 3:11-cv-69 (M.D. Tenn.)).

(2)         95/001,603 (electronically filed) – U.S. Patent No. 6,914,169 entitled PATCH AGENT and owned by Hisamitsu.  Filed April 15, 2011, by Kowa Company

(3)         95/001,604 (electronically filed) – U.S. Patent No. 7,499,872 entitled METHODS AND SYSTEMS FOR APPLYING REBATES TO HIGHER EDUCATION and owned by TuitionFund.  Filed April 18, 2011, by Vesdia.  The ‘872 patent is currently the subject of a litigation styled TuitionFund v. SunTrust Banks et al. (Case No. 3:11-cv-69 (M.D. Tenn.)).

(4)         95/001,605 (electronically filed) – U.S. Patent No. 7,645,213 entitled SYSTEMS AND INTERACTION WITH EXERCISE DEVICE and owned by ICON Health & Fitness.  Filed April 19, 2011, by Joseph Health Tech.  The ‘213 patent is currently the subject of a litigation styled ICON Health & Fitness v. Joseph Health Tech. North America (Case No. 1:10-cv-209-DB (D. Utah)).

(5)         95/001,606 (electronically filed) – U.S. Patent No. entitled METHODS AND SYSTEMS FOR PROVIDING A MERCHANT FUNDED REBATE PROGRAM and owned by TuitionFund.  Filed April 20, 2011, by Vesdia.  The ‘704 patent is currently the subject of a litigation styled TuitionFund v. SunTrust Banks et al. (Case No. 3:11-cv-69 (M.D. Tenn.)).

(6)         95/001,607 (electronically filed) – U.S. Patent No. 7,899,704 entitled METHODS AND SYSTEMS FOR PROVIDING A MERCHANT FUNDED REBATE PROGRAM and owned by TuitionFund.  Filed, by Vesdia.  The ‘704 patent is currently the subject of a litigation styled TuitionFund v. SunTrust Banks et al. (Case No. 3:11-cv-69 (M.D. Tenn.)).

(7)         95/001,608 (electronically filed) – U.S. Patent No. 6,860,050 entitled APPARATUS FOR SEPARATING LABEL ASSEMBLY and owned by Continental DataLabel.  Filed April 21, 2011, by Avery Dennison.  The ‘050 patent is currently the subject of a litigation styled Continental DataLabel v. Avery Dennison (Case No. 1:09-cv-5980 (N.D. Ill.)). 

(8)         95/001,609 (electronically filed) – U.S. Patent No. entitled METHOD AND APPARATUS FOR REMOTE BLOOD ALCOHOL MONITORING and owned by Alcohol Monitoring Systems.  Filed April 21, 2011. 

(9)         95/011,610 (electronically filed) – U.S. Patent No. 7,641,611 entitled METHOD AND APPARATUS FOR REMOTE BLOOD ALCOHOL MONITORING and owned by Alcohol Monitoring Systems.  Filed April 21, 2011. 

(10)     95/000,627 (paper filed) – U.S. Patent No. 6,745,899 entitled WIRE PAYOUT and owned by Lincoln Global.  Filed April 11, 2011, by National Standard.  The ‘899 patent is currently the subject of a litigation styled The Lincoln Electric Co. and Lincoln Global, Inc. v. National Standard (Case No. 1:09-cv-1886-DCN (N.D. Ohio)).

(11)     95/000,628 (paper filed) – U.S. Patent No. 7,225,538 entitled RESILIENT CONTACT STRUCTURES FORMED AND THEN ATTACHED TO A SUBSTRATE and owned by FormFactor, Inc.  Filed April 14, 2011 by Micro-Probe.  The ‘538 patent is currently the subject of a litigation styled FormFactor v. Micro-Probe & David Browne (Case No. 10-cv-3095-VRW (N.D. Cal.)). 

The following ex parte requests were filed:

(1)         90/011,648 (electronically filed) – U.S. Patent No. 5,375,006 entitled TWISTED NEMATIC LIQUID CRYSTAL DISPLAY DEVICES WITH OPTICAL AXIS OF BIREFRINGENT LAYER INCLINED WITH RESPECT TO BIREFRINGENT LAYER NORMAL and owned by Thomson Licensing.  Filed April 18, 2011.  

(2)         90/011,649 (electronically filed) – U.S. Patent No. 6,193,631 entitled FORCE SCRIPT IMPLEMENTATION OVER A WIDE AREA NETWORK and owned by Wilmington Trust FSB.  Filed April 19, 2011.  

(3)         90/011,650 (electronically filed) – U.S. Patent No. 6,253,075 entitled METHOD AND APPARATUS FOR INCOMING CALL REJECTION and owned by MobileMedia Ideas.  Filed April 19, 2011, likely by RIM.   The ‘075 patent is currently the subject of a litigation styled MobileMedia Ideas v. RIM (Case No. 2:10-cv-113-TJW (E.D. Tex.)).

(4)         90/011,651 (electronically filed) – U.S. Patent No. 5,843,698 entitled DELETERIOUSLY AFFECTING MEMBERS OF A TARGET SPECIES BY EXPOSURE TO A COMPONENT OF SYMBIONT OR FOOD SOURCE OF AN ADJOINER SPECIES THAT IS SYMBIOTIC WITH THE TARGET SPECIES and owned by Sorenson Research and Development.  Filed April 20, 2011.  

(5)         90/011,652 (electronically filed) – U.S. Patent No. 7,015,395 entitled COMPOSITE REINFORCED ELECTRICAL TRANSMISSION CONDUCTOR and owned by Gift Technologies.  Filed April 20, 2011.  

(6)         90/011,653 (electronically filed) – U.S. Patent No. 6,074,815 entitled SELECTION OF TEST SPECIES FOR TESTING TO IDENTIFY COMPONENTS THEREOF THAT DELETERIOUSLY AFFECT A TARGET SPECIES MEMBER and owned by Sorenson Research and Development.  Filed April 20, 2011.  

(7)         90/011,654 (electronically filed) – U.S. Patent No. 7,780,136 entitled SURGICAL TRAY CORNER PROTECTOR and owned by General Hospital Supply Corporation.  Filed April 20, 2011.  

(8)         90/011,655 (electronically filed) – U.S. Patent No. 6,070,068 entitled COMMUNICATION TERMINAL DEVICE AND METHOD FOR CONTROLLING A CONNECTING STATE OF A CALL INTO A DESIRED CONNECTION STATE UPON A PREDETERMINED OPERATION BY A USER and owned by MobileMedia Ideas.  Filed April 20, 2011.   The ‘068 patent is currently the subject of two litigations styled MobileMedia Ideas v. Apple (Case No. 1:10-cv-258 (D. Del)). & MobileMedia Ideas v. HTC (Case No. 2:10-cv-112 (E.D. Tex)).

(9)         90/011,656 (electronically filed) – U.S. Patent No. 7,430,519 entitled SUBSTITUTE FULFILLMENT SYSTEM and owned by Frontline Technologies. Filed April 21, 2011.  

(10)     90/011,657 (electronically filed) – U.S. Patent No. 7,906,463 entitled BIOCIDE FOR WELL STIMULATION AND TREATMENT FLUIDS and owned by Kemira Chemicals.  Filed April 22, 2011.  

(11)     90/009,892 (paper filed) – U.S. Patent No. 6,988,538 entitled MICROCHANNEL CONDENSER ASSEMBLY and owned by Hussman Corporation.  Filed April 14, 2011.

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