Microsoft, Sharp & Mitsubishi Electric Requests of their Own Patents, among Reexamination Requests Filed Week of November 21, 2011

Scott Daniels | November 28, 2011

It is somewhat unusual these days for a patent owner to seek reexamination of its own patents.  Yet last week, three sophisticated patent owners – Microsoft, Sharp and Mitsubishi Electric – did just that (see ex parte Request Nos. (3), (4) & (7)).  A patent owner might request reexamination of its own patent where a prospective licensee has asserted that certain prior art undermines the validity of the patent and the patent owner is confident that it can successfully test that assertion of prior art at the PTO. 

Taiwan Semiconductor has requested reexamination of Tela Innovations’ U.S. Patent No. 7,441,211 for digital circuit optimization (see inter partes Request No. (1)).  In 2009 the companies announced “a strategic partnership to develop co-optimized design solutions using Tela’s innovative and patented lithography-optimized design technology and TSMC’s derivative processes.”  There does not appear, however, to be any litigation between the two. 

Reexamination was requested of a design patent for a “Packaging Assembly” (see ex parte Request No. (6)).  It is surprising that there are not more reexamination challenges to design patents, given the rigorous review they receive in reexamination, as compared with the original examination of design patent applications.

Finally, Sierra Video Systems requested reexamination of an RGB Systems patent for an electronic connector (see ex parte Request No. (1)).  The ‘405 patent in question appears to be the subject of some serious litigation in Oregon.

The following inter partes requests were filed:

(1)         95/001,832 (electronically filed) – U.S. Patent No. 7,441,211 entitled GATE-LENGTH BIASING FOR DIGITAL CIRCUIT OPTIMIZATION and owned by Tela Innovations.  Filed November 18, 2011, by Taiwan Semiconductor Manufacturing

(2)         95/001,833 (electronically filed) – U.S. Patent No. 6,983,542 entitled METALLIZED CUTLERY AND TABLEWARE and owned by Societe Generale.   Filed November 22, 2011, by EMI Yoshi

The following ex parte requests were filed:

(1)         90/012,018 (electronically filed) – U.S. Patent No. 7,163,405 entitled CONNECTOR ASSEMBLY APPARATUS FOR ELECTRONIC EQUIPMENT AND METHOD FOR USING SAME and owned by RGB Systems.  Filed November 21, 2011, by Sierra Video Systems.   The ‘405 patent is currently the subject of a litigation styled RGB Systems v. Kramer Electronics, Kramer Electronics USA v. Sierra Video Systems (Case No. 1:11-cv-513 (D. Ore.)). 

(2)         90/012,019 (electronically filed) – U.S. Patent No. 7,403,192 entitled PORTABLE ELECTRONIC DEVICE and owned by Getac Technology.  Filed November 22, 2011.  

(3)         90/012,020 (electronically filed) – U.S. Patent No. 7,949,263 entitled IMAGE FORMING APPARATUS HAVING MAINTENANCE METHOD SETTING FUNCTION and owned by Sharp.  Filed November 22, 2011, by Owner.  

(4)         90/012,021 (electronically filed) – U.S. Patent No. 7,287,524 entitled INTERNAL COMBUSTION ENGINE IGNITION DEVICE and owned by Mitsubishi Electric.  Filed November 22, 2011, by Owner.  

(5)         90/012,023 (electronically filed) – U.S. Patent No. 7,640,664 entitled PROCESS FOR MANUFACTURING WOOD-BASED COMPOSITE PANEL WITH REDUCED TOP SURFACE EDGE FLARE and owned by Ainsworth Lumber.  Filed November 23, 2011.  

(6)         90/012,024 (electronically filed) – U.S. Patent No. D463,273 entitled PACKAGING ASSEMBLY and owned by Diversified Repackaging.  Filed November 23, 2011.  

(7)         90/012,025 (electronically filed) – U.S. Patent No. 7,804,954 entitled INFRASTRUCTURE FOR ENABLING HIGH QUALITY REAL-TIME AUDIO and owned by Microsoft.  Filed November 23, 2011, by Owner.  



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