Apple Files Reexamination “RCE”

Scott Daniels | February 25, 2013

An aspect of patent prosecution – much-discussed of late in some circles – is the Request for Continued Examination (RCE).  An RCE allows a patent applicant, unhappy with the developments in its prosecution, to begin prosecution of its application anew.  A similar phenomenon sometimes occurs in reexamination, where a Requester, dissatisfied with the progress of its reexamination, requests a new reexamination rather than acquiesce in an adverse ruling from the PTO.  There was an example of such an “RCE” last week.

In 2007 MedioStream sued Apple and a number of others for infringement of U.S. Patent No. 7,009,655.  Apple replied by requesting inter partes reexamination of the patent and was largely successful: the examiner rejected all the claims and the PTO Board affirmed the rejection, except for claims 10 and 11 which the Board found to be patentable over Apple’s prior art.  Evidently, claims 10 and 11 are of some commercial significance because Apple requested that the Board reconsider its adverse decision, specifically, to find that claims 10 and 11 are inherently anticipated or made obvious by the prior art.  Apple added that “[d]esignating a new ground of under 103 in this instance [would] also serve the interests of judicial economy as it [would] avoid the inefficiency of piecemeal appellate review that would result if Requester must institute a new reexamination proceeding to determine the obviousness of claims 10 and 11.”  MedioStream opposed Apple’s reconsideration request, describing it an attempt to “assert[] new arguments not previously raised in the appeal.”

The Board has not yet ruled on the reconsideration request, but such requests are very, very rarely successful; and so, a new reexamination request was filed Friday (see ex parte Request No. (2)).  The PTO records are, so far, minimal, but it seems quite likely that the new request was filed by Apple and that it contains the obviousness arguments which Apple wished it had made in the appeal in the first reexamintion.

In an another development, Zynga requested inter partes review of U.S. Patent No. 7,860,131 that is owned by Personalized Media Communications and that claims “a method of enabling a station of a particular kind to deliver complete programming” (see inter partes review Request No. (3)).  Personalized Media has sued Zynga for infringement of the patent.  The ‘131 patent is notable in that, among other aspects, it occupies 288 columns.

The following inter partes review requests were filed:

(1)         IPR2013-00154 (electronically filed) – U.S. Patent No. 7,335,996 entitled METHOD OF ROOM TEMPERATURE COVALENT BONDING and owned by Ziptronix, Inc.  Filed February 20, 2013 by Taiwan Semiconductor Manufacturing Company, Ltd.  Although Ziptronix does not appear to have sued anyone for infringement of the ‘996 patent, it has sued Omnision Technologies and Taiwan Semiconductor for infringement of related patents.

(2)         IPR2013-00155 (electronically filed) – U.S. Patent No. 8,180,489 entitled COMMUNICATION SYSTEM FOR A WATER SOFTENING SYSTEM and owned by Culligan International Company.  Filed February 21, 2013 by EcoWater Systems LLC.

(3)         IPR2013-00156 (electronically filed) – U.S. Patent No. 7,860,131 entitled SIGNAL PROCESSING APPARATUS AND METHODS and owned by Personalized Media Comms.  Filed February 22, 2013 by Zynga.  The ‘131 patent is the subject of the infringement action styled Personalized Media Comms. V. Zynga (Case No. 1:12-cv-68 (E.D. Tex.)).

The following ex parte requests were filed:

(1)         90/012,799 (electronically filed) – U.S. Patent No. 5,684,863 entitled TELEPHONIC-INTERFACE STATISTICAL ANALYSIS SYSTEM and owned by General Electric Capital Corporation.  Filed February 18, 2013. The ‘863 patent is currently the subject of a litigation styled Katz Interactive Call Processing Litigation (Case No. 07-ml-01816-B-RGK (C.D. Cal.)).

(2)         90/012,800 (electronically filed) – U.S. Patent No. 7,009,655 entitled METHOD AND SYSTEM FOR DIRECT RECORDING OF VIDEO INFORMATION ONTO A DISK MEDIUM and owned by MedioStream, Inc.  Filed February 21, 2013. The ‘655 patent is currently the subject of a litigation styled Mediostream, Inc. v. Acer America Corp. et al. (Case No. 2:07-CV-376 (E.D. Tex.)). Apple is among the defendants named in the litigation.

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