Evidence : US PTO Litigation Alert™

Update on Facebook’s Inequitable Conduct Case after Therasense

Scott Daniels | July 8, 2011

In January we reported on the case Tele-Publishing, Inc. v. Facebook, Inc., et al., No. 1:09-cv-11686-DPW, in which Facebook is accused of infringing U.S. Patent No. 6,253,216 entitled “Method and Apparatus for Providing a Personal Page.”  Facebook defended by requesting reexamination of the ‘216 patent, asserting that it was invalid over an earlier patent to de Hond.  The PTO granted reexamination.  An initial rejection of all claims issued in April, 2010, and a final rejection issued in August of that year. An appeal is currently pending at the PTO Board.

What will interest reexamination lawyers, however, is Facebook’s allegation that the ‘216 patent is unenforceable because of applicant’s inequitable conduct during the prosecution of that patent.  Facebook asserts that the ‘216 applicant was aware of the de Hond patent because that reference was cited and distinguished in several related applications, and that the applicant intentionally withheld de Hond in the ‘216 prosecution. 

How does Facebook’s inequitable conduct defense stand up in light of the but-for standard for materiality now required by Therasense?  Pretty well, actually.   The CAFC described the materiality standard in Therasense as calling for a court to “determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.”  The CAFC seemed almost to have reexamination in mind when it added that “the court should apply the preponderance of the evidence standard and give the claims their broadest reasonable construction” (emphasis added).  The closest answer to the CAFC’s hypothetical question – what would the PTO have done with the undisclosed reference – might be found in reexamination. 

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What Does Therasense Mean for Reexamination?

Scott Daniels | June 1, 2011

Last week’s en banc decision by the CAFC in Therasence v. Becton, Dickinson, establishing a “but-for” test for the materiality prong of inequitable defenses, promises to ease substantially the burden on patent applicants to flood the examiner with prior art references.  Applicants still must submit references that are material under PTO Rule 1.56, but no longer face the prospect of unenforceability if they err in doing so – a reference is material for an inequitable conduct defense in litigation only if the patent would not have issued “but-for” the non-disclosure of that reference to the PTO. 

What about reexamination?  For the most part, there will be little change.  Certainly, the possibility of establishing that a reference is material is one of the collateral benefits from requesting reexamination for an accused infringer.  Yet, establishing materiality is rarely the primary motivation for filing a request. 

Nonetheless, to determine whether an undisclosed reference would have blocked issuance of a patent, a court must place itself in the shoes of the original examiner.  The issue is patentability, not validity.  A court must give the patent claims their “broadest reasonable scope,” not their scope under Markman as in litigation.  Further, the standard of proof for patentability at the PTO is preponderance of the evidence, not clear and convincing evidence. 

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Summary Judgment of Non-Infringement because of Reexamination Disclaimer

Scott Daniels | May 11, 2011

Last year, 01 Communiqué sued LogMeIn and Dell in the Eastern District of Virginia for infringing U.S. Patent No. 6,928,479 claiming a system, method, or program for providing access to a personal computer from a remote computer over the Internet.  That case, 01 Communiqué Laboratory v. LogMeIn and Dell, came to an abrupt end last week when Judge Claude Hilton granted LogMeIn’s motion for summary judgment of non-infringement. 

 The ‘479 patent had previously been the subject of a reexamination in which the claims were rejected over certain prior art.  The ‘479 patentee overcame the rejection by submitting expert declarations, asserting that one skilled in the art would understand the claims to exclude the embodiments disclosed by the cited prior art, specifically embodiments in which more than one device performed the functions of the “location facility.”  The PTO acquiesced and issued a reexamination certificate confirming the validity of the claims. 

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Boston Scientific Wins Summary Judgment of Willfulness despite Rejection of Patent Claim in Reexamination

Scott Daniels | May 3, 2011

The trial in cardiovascular stent case, Boston Scientific v. Cordis, is scheduled to start this Thursday.   Last Thursday Judge Sue Robinson granted summary judgment that Cordis’ 2.25 mm Cypher stent infringes Boston’s U.S. Patent No. 5,922,021 and that Cordis’ infringement was willful. 

Cordis had argued that if there were infringement of the ‘021 patent, that infringement was not willful because the ‘021 claims-in-suit have been rejected by examiner in the reexamination proceeding currently pending before the PTO.  Cordis pointed specifically to a non-final rejection of the claims, dated February 18th, in which the examiner found Boston’s main claim to be anticipated by the newly considered Richter patent.  According to Cordis, the examiner “found that Richter ‘404 discloses the exact feature that [Boston] has touted as the novel aspect of claim 36.”  Cordis also asserted that the examiner was applying the broad claim construction asserted by Boston in an earlier infringement case between the two parties, in fact a construction broader than in the original ‘021 patent prosecution – “[t]he pending reexamination is the first time that the PTO has considered the patentability of claim 36 under the broader construction that was adopted in” the earlier litigation. 

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Could the PTO’s Proposed Rule Changes Increase Courts’ Reliance on PTO Reexamination Decisions?

Scott Daniels | April 28, 2011

On Monday the Patent Office published for public comment a long list of proposed changes to the rules by which it conducts ex parte and inter partes reexamination proceedings.  Essentially, the changes would reduce the complexity of various steps in the typical reexamination and thereby significantly shorten reexamination pendency.  Such changes are necessary in a time of reduced budgets and increased filings, and reexamination practitioners are now busily preparing their comments on the Office’s proposals.

The rule changes will of course have a significant impact on the mechanics of reexamination practice.  But the greater effect might be on the inclination of trial judges in their patent infringement cases to defer to, or at least consider, PTO reexamination decisions – specifically, judges may be more inclined to wait for the PTO to resolve issues in reexamination if reexaminations are completed more quickly

Over the past several years, we have seen an increasing tendency among trial judges to defer to PTO determinations of the basic reexamination issues of claim construction and patent validity.  In some instances, this deference is shown when a judge stays an infringement action pending completion of a reexamination proceeding.  In other cases, courts cite reexamination decisions as support for their conclusions on claim construction, anticipation and obviousness, and sometimes even on issues of willfulness, preliminary relief, and materiality in inequitable conduct defenses.

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Scott Daniels | April 11, 2011

Judge Douglas Woodlock has denied the patentee’s motion for a preliminary injunction in Red Bend v. Google, 2011 U.S. Dist. LEXIS 36217  (D. Mass.), finding that Red Bend was unlikely to succeed on the merits, specifically, unlikely to establish that Google’s software infringes.  What will interest reexamination practitioners, however, is Judge Woodlock’s analysis of the prior art validity issue.  On that question, he found that Red Bend was likely to succeed on the merits because the “PTO has … issued a Reexamination Certificate as to all claims.”  In contrast to the Judge’s quite detailed analysis of the claim construction, infringement, and irreparable harm issues, his analysis of the validity issue relied solely upon the PTO’s confirmation of the validity of the claims in reexamination.

Perhaps if Judge Woodlock had concluded that Red Bend was likely to succeed on the merits with respect to the infringement issue, he would have addressed the specific application of the patent claims to the prior art references in greater detail, rather than merely cite the outcome of the PTO’s reexamination.  On the other hand, the Judge’s reliance upon “the ‘current posture’ of the Reexamination process,” suggests an interesting deference to the conclusions obtained in reexamination proceedings.  Or perhaps I am reading too much into the Judge’s decision.

Hyundai/Kia Infringement Willful Despite Rejections of Patent Claims in Pending Reexaminations

Scott Daniels | April 1, 2011

Last October a jury found that Hyundai and Kia had willfully infringed two patents owned by Affinity Labs of Texas, claiming systems for integrating a portable electronic device, such as an MP3 player, with a second electronic device such as car sound system.  The verdict awarded Affinity $2.4 million from Hyundai and $0.4 million from Kia.  Judge Ron Clark determined not to enjoin Hyundai and Kia, but did assess them an on-going post-judgment royalty of $14.50 per accused Hyundai/Kia vehicle sold with an iPod cable.

What interests us is a post-trial motion by Hyundai/Kia that their infringement could not have been willful because the PTO had issued non-final rejections of the claims of both patents in co-pending reexamination proceedings – their argument was that they could not have acted in an objectively willful manner if PTO examiners believed that the claims were obvious over the prior art.  We have seen in recent months a greater willingness among trial judges to take reexamination decisions into account when considering issues such as willfulness (here). 
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Scott Daniels | March 29, 2011

In January U.S. International Trade Commission Administrative Law Judge Paul Luckern issued his initial determination (ID) finding that Kodak’s U.S. Patent No. 6,292,218 was obvious over the prior art and not infringed by Apple and RIM mobile telephones with digital cameras – these findings were contrary to an ID (by ITC ALJ Carl Charneski) in an earlier investigation that Kodak’s ‘218 patent was valid and infringed by mobile telephones from Samsung and LG.  This past Friday, the Commission announced that it would review Judge Luckern’s determination in favor of Apple and RIM.  As is customary, the Commission’s review focuses on specific aspects of Judge Luckern’s ID, asking the parties to address five specific legal issues – among them, the extent to which the ITC should consider reexamination proceedings (90/010,899) in its analysis of claim construction and validity issues.

The ITC does not have authority to award Kodak money damages for past infringement, even if it does determine that Kodak’s ‘218 patent is valid and infringed.  It can, however, stop infringing telephones from entering the United States and order Apple and RIM to stop selling infringing telephones already in the United States.  One official at Kodak has stated publicly that if the ITC rules in its favor against Apple and RIM, those companies would likely accept a license to the ‘218 patent, resulting in nearly $1 billion in royalties for Kodak.

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InnovaSystems Requests Reexamination after being Held in Contempt for Violating Injunction not to Infringe Proveris Patent

Scott Daniels | March 24, 2011

In our post Friday we discussed the increasing possibilities for using reexamination to affect issues, in addition to patent validity, in parallel infringement cases.  The same day InnovaSystems requested reexamination of Proveris’ U.S. Patent No. 6,785,400 (95/001,578) which has been the subject of a five-year infringement dispute between the companies.  InnovaSystems’ request may have been filed for the purpose of responding to a contempt order issued against it in an infringement action.

That action began in December 2005 when Proveris sued InnovaSystems in Massachusetts for selling its Optical Spray Analyzer (OSA) (a high-speed digital camera with a low power laser designed to capture the image of a spray) that infringes the ‘400 patent.  In 2007 the trial judge issued a judgment of infringement and enjoined InnovaSystems from further acts of infringement.  InnovaSystems then undertook to modify its original OSA and soon began to market its Aerosol Spray Drug Analyzer (ADSA). 

Proveris took InnovaSystems back to court arguing that ADSA infringed the ‘400 patent.  The trial judge agreed and in June last year he held InnovaSystems in contempt: “because nothing more than merely colorable differences exist between the OSA and the ADSA, and because those differences do not affect any element of claims 3, Innova’s making, using, offering for sale, numerous sales, and exporting of the ADSA amount to contempt for which a significant sanction is warranted.”  The trial judge has not yet applied a specific sanction because InnovaSystems appealed the contempt order to the CAFC, thereby depriving him of jurisdiction until the case is returned to him by the CAFC.

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Three Items of Interest

Scott Daniels | March 23, 2011

1.   How Long can a Reexamination Request Be?

A very rough indicator of the extent to which reexamination is supplanting traditional litigation is the length of some requests.  One of the longest we have ever seen was filed Monday by CME against Realtime Data’s U.S. Patent No. 7,777,651, over 2,100 pages not counting the exhibits. 

The ‘651 patent is one of three patents that are the subject of an infringement litigation in the eastern District of Texas between those companies.  Thomson Reuters and Morgan Stanley have also been sued for infringement.  Requests have already been filed against the other two patents in the litigation. 

2.   Trial Courts Take PTO Reexamination Decisions into Account

Last Wednesday in 3M Innovative v. Gerson, 8-cv-4960 (March 16, 2011), Judge John Tunheim denied a motion by the accused infringer for summary judgment that the patent was invalid as obvious over the prior art.  Judge Tunheim began his analysis of whether the prior art references disclosed one of the steps of the claimed method by stating that the patent had been the subject of a parallel inter partes reexamination.  He noted that he was not required to defer to the PTO’s analysis in that reexamination, but then quoted from that analysis at length, concluding that he agreed with the PTO that the art did not disclose the claimed step.

 It is likely that Judge Tunheim would have arrived at the same conclusion without the reexamination.  Still, the impact of PTO reexamination decisions on infringement cases is becoming more and more evident.

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