Featured : US PTO Litigation Alert™

VirnetX again Sues for Infringement, and again Faces Reexaminations

Scott Daniels | September 12, 2011

VirnetX is the company that successfully sued Microsoft for patent infringement, that guided its patents through reexamination without cancelation or amendment, and that later collected $200 million in royalties from Microsoft.  The VirnetX patents cover aspects of 4G telecommunications technology.  Freelance author and analyst Dustin Moore describes the apparent significance of those patents:

The 3GPP, a collaboration between key telecommunication groups across the globe, is standardizing next generation wireless technology. The systems they are crafting will become the global mobile standard. The 3GPP has created the 4G LTE Series 33 specifications, which map out the security platform for companies to build their LTE compliant chips, servers, smart phones, etc. VirnetX has declared its patents as essential to this standard, which lays out an environment of automatic establishment of secure connections between trusted users. No other company has declared essential patents for these series 33 security specifications. This announcement notifies the telecommunication industry that it must license to avoid infringing VirnetX’s IPR when companies begin rolling out secure networks.


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How Strong are Google’s Requests for Reexamination of the Lodsys Patents?

Scott Daniels | September 6, 2011

How does one assess the strength of a reexamination request?  The typical request is intimidatingly long and technically involved.  It is simply impossible, without devoting an enormous amount of (billable) time, to estimate the likelihood that a specific request will force the cancelation or amendment of the claims.  Still, if only a bit of insight, not “metaphysical certitude,” is needed, there are certain signs that even a casual observer will spot.

(1)    Do all the primary references or all the secondary references recite essentially the same subject matter?  If so, the patentee might be able to overcome all the rejections by citing a single patentable distinction over the prior art, just as in original prosecution, an applicant can sometimes dispatch a large number of rejections with a single argument.

(2)   Does the cited prior art disclose the feature of the claimed invention that appeared to be the basis for allowance of the original application?  If so, there is likely to be a substantial new question of patentability and chances for a successful reexamination are greater.

(3)   Do the prior art columns of the claim charts quote the references or do they simply repeat the wording of the claims?  If the latter, the technical analysis in the reexamination request might be weak.

(4)   Are the proposed rejections for anticipation or obviousness?  Even if the latter, the proposed rejections might be strong, provided that there is a KSR reason for combining the references.

(5)   Is legal argument needed to establish the references are prior art?  Or are the references prior art under § 102(a) or § 102(e)?  If either, the patentee might have an easy legal, non-technical, basis for overcoming the prior art.


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PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents

Scott Daniels | September 2, 2011

Yesterday the PTO Board handed NVIDIA victories (here, here) against two DRAM patents: the Board affirmed the examiner’s rejection of claims 1-25 of U.S. Patent No. 7,287,109 and reversed the examiner’s refusal to adopt proposed rejections of claims 1-37 of U.S. Patent No. 6,470,405, the so-called “Barth I Patents.”  Rambus may now appeal the rejection of the ‘109 claims to the CAFC.  Since the Board’s reversal of the examiner regarding the ‘405 herepatent constitutes a new ground of rejection, Rambus may argue that rejection with the examiner.

The ‘109 and ‘405 patents were the subject of an ITC investigation that concluded last August with a determination that the patents were valid and infringed.  On the basis of that determination, the ITC issued a limited exclusion order prohibiting NVIDIA, HP and a host of other companies from importing infringing DRAMs into the United States.  It also issued separate cease & desist orders against the individual respondents forbidding them from selling infringing DRAMs already in the United States.  NVIDIA was reported to have taken a license under the Barth I Patents, thereby exempting it from the ITC’s remedial orders.


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Oracle ‘520 Moves toward Confirmation in Reexamination

Scott Daniels | August 31, 2011

Oracle is likely to get a shot in the arm in its pending action in the Northern District of California, where it accuses Google of infringing seven patents and a series of copyrights related to the Java platform.  Google replied to that infringement action by, inter alia, initiating reexamination of the seven patents.  But it now appears that the validity of Oracle’s U.S. Patent 6,061,520 is headed to confirmation.

The PTO has already indicated that claims 1-4, 8, 10, 12-17, 20 and 22 of the ‘520 patent are valid over the prior art; claims 6-7, 9, 11, 18-19, 21 and 23 were rejected, and claim 5 was not subjected to reexamination.  Earlier this month, lawyers for Oracle interviewed the examiners with the goal of persuading them to withdraw the prior art rejection, but no agreement was reached.  Last Tuesday, Oracle filed an Amendment continuing to assert the validity of the rejected claims, but nonetheless canceling those claims.  This cancelation of the rejected claims means that the PTO will now issue a reexamination certificate confirming the validity of the remaining claims.


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Google Gets Mixed Result against Oracle’s Seventh Patent

Scott Daniels | August 23, 2011

Oracle’s action in the Northern District of California, where it accuses Google of infringing seven patents related to the Java platform, is proceeding apace with a trial scheduled to start at the end of October.  In the meantime, Google’s requests for reexamination are also moving quickly at the Patent Office.  As of last week, the PTO had granted reexamination and rejected the claims of five of the Oracle patents; for the sixth patent, it has confirmed the validity of many of the claims and rejected several others. 

On Friday, the PTO acted on Oracle’s remaining patent in dispute, U.S. Patent No. 6,910,205, rejecting each of the Oracle claims-in-suit.  Claims 1-4 and 8 were rejected as being anticipated by one reference, and claim 8 was rejected as being anticipated by a second reference. 

But the outcome was by no means a complete success for Google – the PTO refused to adopt a third anticipation rejection proposed by Google.  And, in a rather pointed manner, the PTO refused to adopt two proposed obviousness rejections, stating that Google’s Request had failed to provide “a legally tenable rationale for combining the cited teachings under § 103”  as required by KSR, and instead gave “mere conclusory statements.” 


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Did Google Request Reexamination of Lodsys Patents?

Scott Daniels | August 17, 2011

We’ve seen lots of reports in the media that Google finally took action last Friday against Lodsys – specifically, Reexamination Requests against two of the four patents that are the subject of Lodsys’ infringement actions against numerous small developers of Android® apps.  “We’ve asked the U.S. Patent Office to re-examine two Lodsys patents that we believe should never have been issued,” Google senior vice president and general counsel Kent Walker is reported to have told Wired.com, explaining that “[d]evelopers play a critical part in the Android ecosystem and Google will continue to support them.”

What we have not seen, however, are Google’s Requests.  So far there is no evidence that they were actually filed.  Of course, when they do surface, we will report our first impressions.

Also, one wonders about the other two Lodsys patents, given Google’s concern for the Android® app developers.

Incidentally, the best reporting and analysis of Lodsys’ case against the Android® developers is by our friend Florian Mueller at FOSS Patent Blog.

Two Updates

Scott Daniels | August 8, 2011

1.     Google Attacks Oracle ‘720 Patent

As Oracle’s action in the Northern District of California for infringement by Google of seven Java platform patents continues apace, the reexamination at the PTO of those patents grinds on as well.  Oracle’s U.S. Patent No. 7,426,720, for instance, stands rejected as being invalid over the prior art.  Oracle disputed that rejection in a paper filed in early July, and last Thursday, Google commented on Oracle’s filing.

Essentially, Google asserts (1) that the ‘720 patent claims were originally allowed as a result of Oracle’s adding the limitation of copy-on-write to the claims after a final rejection, and that Oracle relied on this copy-on-write limitation to distinguish the claims from the prior art of record, (2) that the copy-on-write technology central to alleged novelty of the ‘720 patent was present in most Unix operating systems as early as 1994, and was widely-known in the art at least as early as 1988, and (3) that Oracle’s filing in July admits that the Bach reference satisfies the copy-on-write limitation.

As always, it is difficult for an outsider to judge how a reexamination is proceeding.  Still, Google appears to be doing well, at least with respect to the ‘720 patent.


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Oracle v. Google Android® Update

Scott Daniels | June 30, 2011

Toward the end of May, we reported the status of Oracle’s patent infringement action against Google and its Android®, involving seven Java platform patents and a series of related copyrights. We also reported the reexaminations initiated by Google against each of Oracle’s patents.   Essentially, we advised that Judge William Alsup was concerned about the feasibility of an October trial involving the number of patent claims asserted by Oracle. 

Yesterday, the PTO issued a non-final rejection of Oracle’s U.S. Patent No. 6,125,447 (90/011,491).  The examiner found that all 24 claims of the ‘447 patent are anticipated by either of two prior art references.  Oracle may now traverse the rejection, and if the PTO maintains the rejection, Oracle may appeal it. 


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Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations

Scott Daniels | August 16, 2010

Traditionally, District Court judges have issued permanent injunctions to stop infringement of valid patents, regardless of any pending reexamination of the patent in question.  Only if the rejection of the patent claims in reexamination is “final,” would the courts refuse to enjoin the accused infringer.  A few judges – notably Judge James Cohn of the Southern District of Florida and Judge Sue Robinson of Delaware – have recently shown a willingness to defer a decision on injunctive relief even where the rejection of the patent in reexamination is not final.

The Rambus/NVIDIA investigation raises the question of the extent to which the ITC is willing to order relief on the basis of patents that are in reexamination at the PTO.  Unfortunately for NVIDIA, its argument to the ITC that it stay relief against NVIDIA was weak because its attack on the Rambus patents by reexamination has been “an incomplete success” (to borrow a phrase from President Carter).

That weakness may account, in part, for NVIDIA’s agreeing at the end of last week to a license to the Rambus patents, effectively concluding the dispute between the parties.  Still, the ITC’s analysis in the Rambus/NVIDIA investigation remains of great interest to the IP community, as it suggests that the ITC will be extremely reluctant to withhold relief against infringing imports on the basis of an uncompleted reexamination.
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最初が肝心:不備のない再審査請求書を作成するために

Darrin Auito and Yoshiya Nakamura | March 1, 2010

English Language Version

弊事務所は、過去数年間に請求された多くの再審査請求事件をレビューしてきましたが、かなりの割合で請求書が、何らかの記載不備を理由にUSPTOに受理(grant)されなかったことが分かりました。

このような問題を防ぐとともに、PTOにより請求が拒絶(denied)される事態を避けるために、弊事務所では、PTOルールに基づく再審査請求書の要件のチェックリストと、不備のない再審査請求書を提出するための助けとなる実践的なチェックリストを用意しました。以下では、その基本的な部分を紹介しましょう。
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