Scott Daniels | October 11, 2011
The final footnote in i4i’s case against Microsoft might have been written by the PTO. Microsoft had petitioned for reconsideration of the PTO’s earlier denial of Microsoft’s request for reexamination of the i4i ‘449 patent, and at the end of last month the PTO denied Microsoft’s petition. The PTO, through CRU Director Irem Yucel, explained in some detail that Microsoft’s asserted prior art failed to present any issues not already dealt with in earlier examinations.
The i4i dispute is, of course, better known as the Supreme Court case confirming that an accused infringer must present “clear and convincing” evidence to prove that an issued patent is invalid.
Oracle’s patent and copyright infringement action against Google and its Android® is set to go to trial on October 31, 2011, but is likely to be postponed because of a scheduling overlap with a criminal case.
Of interest to reexamination practitioners is Google’s intent to rely at trial on the PTO’s grant of reexamination of Oracle’s seven patents – Google hopes that these reexamination grants would weigh against Oracle’s allegation of willful infringement. Oracle has predictably moved to keep any mention of the reexaminations from reaching the jury, asserting that the jury would be confused and allow the reexaminations to influence its consideration of the validity issues. For its part, Google has made the eminently reasonable suggestion that the willfulness issue be joined with the damages issue which has been scheduled for a trial separate from the trial on validity and infringement. There is no ruling so far from Judge Alsup.
As previously reported, VirnetX is suing Apple, Cisco, NEC and Aastra in the Eastern District of Texas for infringement of five wireless telecommunications patents, hoping to repeat its earlier $200 million success against Microsoft. Apple and Cisco filed separate inter partes reexamination requests against the two most significant VirnetX patents, the ‘135 patent and the ‘151 patent.
Last Monday, the PTO granted both reexamination requests, substantially following analysis proposed by Apple and Cisco. A positive note for VirnetX is that the PTO did not also issue an Office Action rejecting its claims – it has become customary for the PTO to grant inter partes reexamination and issue an Action rejecting the claims, on the same day. There is no action from the PTO on the ‘151 patent. A chart showing the status of the VirnetX patents-in-suit is here, and a chart of the VirnetX patent family is here.