Featured Posts
- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
Favorite Patent Blogs
- All Things Pros
- CAFC Alert
- FDA Law Blog
- IPWatchdog
- Patent Docs
- Patently-O
- PLI Patent Law Practice Center
- Think IP Strategy
- US Patent Post-Grant Opposition
Recent Requests
PTO Statistics
Google, Microsoft, Sony, Facebook & Samsung Gang Up on Two B.E. Tech. Patents, Week of October 7, 2013
| October 14, 2013
Last year, Memphis-based B.E. Technologies sued 19 social media/smartphone companies for infringement of two patents (U.S. Patent Nos. 6,628,314 & 6,771,290) claiming targeted advertising systems. Last week, Google, Microsoft and Facebook requested inter partes review of the ‘314 patent, and Google, Sony, Microsoft and Samsung requested inter partes review of the ‘290 patent (see inter partes review Request Nos. (5), (7), (11), (12), (13), (17), & (20)). Clearly, inter partes review has become the weapon of choice for the Internet giants of the world.
Separately, Google filed inter partes review requests and covered business method post-grant review requests against three Unwired Planet patents claiming systems for providing location information for wireless devices (see inter partes review Request Nos. (4), (9) & (10) and CBM Request Nos. (1), (2) & (3)). Last week saw six requests altogether for covered business method post-grant review, which has become more popular of late in light of the APJ’s broad construction of the statutory phrase “financial product or service.”
Samsung Seeks Inter Partes Review of Four Fractus Antenna Patents, Week of September 30, 2013
| October 7, 2013
Last week Samsung filed inter partes review requests against four patents owned by Spanish antenna-maker Fractus (see inter partes review Request Nos. (8), (9), (10) & (11)). The requests are the latest in a long-standing dispute between companies. The highlight of that dispute, so far, has been a $23 million jury verdict based on the four Fractus patents in May 2011 in the Eastern District of Texas. Judge Leonard Davis later added $15 million to the verdict after finding that Samsung’s infringement was willful. A few months before that verdict, Samsung had requested inter partes reexamination of those patents. The reexaminations resulted in rejection of key claims and Fractus has appealed to the PTO Board of Appeals, with oral argument scheduled for November 20th. Earlier this year, Fractus filed a second infringement action against Samsung, also in the Eastern District of Texas – the idea behind Samsung’s inter partes review requests might be to attack the Fractus claims that are the subject of this new infringement action, but have not been addressed in the reexaminations.
The Federal Circuit’s recent holding in Fresenius v. Baxter might determine whether the 2011 verdict survives the Samsung’s challenges at the Patent Office to Fractus’ patents.
ZOLL Lifecor Seeks Inter Partes Review of Eight Philips Electrotherapy Patents, Week of September 23, 2013
| September 30, 2013
Almost exactly a year ago, Koninklijke Philips N.V. and Philips Electronics North America Corp. sued. ZOLL Lifecor Corp for infringement of eight patents claiming various electrotherapy methods. Last week, ZOLL retaliated by requesting inter partes review of each of those patents (see inter partes review Request Nos. (4) to (6), (9) to (10) & (12) to (14)). Presumably, ZOLL will also seek a stay of the litigation, and the dispute will shift to the Patent Office.
Dell, Hewlett-Packard and NetApp teamed up to request inter partes review of a network patent owned by Electronics and Telecommunication Research Institute (see inter partes review Request No. (23). the patent is the subject of 19 separate infringement actions, all in Delaware.
Unified Patents Adopts Earlier Inter Partes Review Requests, Week of September 16, 2013
| September 23, 2013
An interesting inter partes review request was filed by Unified Patents last week against Clouding IP’s U.S. Patent No. 6,738,799 (see inter partes review Request No. (2)). Oracle had filed two inter partes review petitions against the ‘799 patent, that were later terminated by the Patent Office on the basis of a settlement agreement Oracle and Clouding IP. On Monday Unified essentially refiled Oracle’s petitions against the ‘799 patent. Unified explained that the “instant petition challenges the same claims under the same grounds on which the PTAB instituted trial in the IPR-073 petition. The instant petition also includes an additional ground from the IPR-261 petition that directly refutes the arguments that the Patent Owner made to distinguish its claims in the IPR-073 petition.” (Emphasis in original).
Clouding IP has sued a number of Internet companies for infringement of the ‘799 patent, including EMC, Verizon, Amazon.com, and Google. Unified’s tactic of copying Oracle’s petitions is similar to the recent approach of major companies that have replied to infringement lawsuits by joining together in inter partes reviews of those patents. We expect to see this trend – of one company stepping into the shoes of another company in an inter partes review proceeding – to accelerate.
Inter Partes Review Sought for Honeywell Refrigerant Patent, Week of September 9, 2013
| September 16, 2013
Mexichem Amanco Holding requested inter partes review of Honeywell’s U.S. Patent No. 8,444,874 (see inter partes review Request No. (1)). The ‘874 patent claims a specific tetrafluoropropene used in heat transfer systems such as refrigerators. Such fluorocarbons are considered to be more environmentally friendly than traditional CFCs and have been the subject of intense litigation in recent years, though the ‘874 patent does not appear to be the subject of any infringement actions.
GSI Commerce Solutions requested post-grant review of a Clear With Computers patent (see CBM Request (2)). CWC has sued 17 companies for infringement of the patent.
And Fritsch of Germany filed for ex parte reexamination of a General Mills dough cutter patent (see ex parte Request No. (1)). The two companies are in litigation over the patent in Minnesota.
Samsung Requests Inter Partes Review of Five Multimedia Display Patents, Week of September 2, 2013
| September 9, 2013
This past Thursday, Samsung requested inter partes review of five patents, owned by Virginia Innovation Sciences, that claim methods and computer readable media for converting video signals on a mobile terminal so that they may be reproduced on other display terminals (see inter partes review Request Nos. (8) through (12). Virginia Innovation has sued Samsung in the Eastern District of Virginia for infringement of the patents. Last month, Samsung filed a motion for summary judgment that the Virginia Innovation patents were invalid over the prior art (“VIS accused Samsung’s products of infringing the asserted claims based on their supposed use of well-known industry standard specification, notwithstanding that these same industry standard specifications were prior art”; emphasis in original). The District Court is likely to move more quickly than the Patent Office, in this race of filings.
Microsoft requested inter partes review of two information storage and retrieval patents (see inter partes review Request Nos. (4) & (5)). The owner of the patents, Enfish, has sued Microsoft in the Central District of California for infringement.
The ex parte reexamination request filed Tuesday by Brookwood against a silicone coated web patent owned Nextec Applications (see ex parte Request No. (2)) is interesting because there is parallel infringement action pending against the United States in the Court of Federal Claims. How might the Court consider a stay request?
Section 101 Eligibility Challenge to Versata Patent, Week of August 26, 2013
| September 3, 2013
Nucleotide Sequencing Patent Dispute Escalates, Week of August 19, 2013
| August 26, 2013
The litigation heated up last week between Illumina Cambridge on the one hand, and Intelligent Bio-Systems (IBS) and its partner Columbia University, on the other, when IBS filed two inter partes review requests against Illumina’s U.S. Patent 7,566,537 (see inter partes review Request No. (1)). The ‘537 patent claims “nucleotides having a removable label and their use in polynucleotide sequencing methods.” IBS had previously requested inter partes reviews for two other Illumina patents that were asserted against IBS in the Delaware action (see IPR2013-00128 and IPR2013-00324 (US Patent No. 7,057,026); IPR2013-00266 (US Patent No. 8,158,346)). Meanwhile, Illumina has previously sought inter partes review of several of Columbia University’s patents (see IPR2012-00006; IPR2012-000007; IPR2013-00011).
Clouding IP was once again the target of a review request, this one filed by Rackspace Hosting against U.S. Patent No. 7,032,089 (see inter partes review Request No. (2)). Clouding IP has sued several companies for infringement of the ‘089 patent, among them Amazon, Apple, Google, and Microsoft.
Sleep Apnea is Big Business at Patent Trial & Appeal Board, Week of August 12, 2013
| August 19, 2013
The pace of new inter partes review requests continues to be brisk, on par with the number of inter partes reexamination requests filed last year, despite the PTO’s substantial increase in filing fees. The clear leader last week was Apex Medical that requested inter partes review of six Resmed patents claiming various types of masks and humidifiers for sleep apnea devices (see inter partes review Request Nos. (7) through (12)). Apex Medical and Resmed are locked in parallel District Court and ITC actions involving those patents.
Dandruff was also big business at the Patent Office – Unilever petitioned for inter partes review of three Procter & Gamble shampoo patents (see inter partes review Request Nos. (3), (5) & (6)). The companies do not yet appear to be in litigation over the patents.
An undisclosed party requested ex parte reexamination of MobileMedia Ideas’ U.S. Patent No. 6,427,078 for personal communications data collection (see ex parte Request No. (6). MobileMedia has sued a number of companies for infringement of the ’78 patent, among them Apple, HTC and RIM. The ‘078 patent has emerged unscathed from two earlier reexamination proceedings, but it is currently facing a non-final rejection in a third reexamination (90/012,637). Last week’s request might be an attempt by the opposition to bolster that non-final rejection in the pending reexamination.
Finally, Medtronic opened a new front in its long-standing patent battle with NuVasive by requesting inter partes review of two patents related spinal fusion (see inter partes review Request Nos. (2) & (4)).
Reexamination Sought for BMW Wheel Design Patents, Week of August 5, 2013
| August 12, 2013
LKQ, which describes itself as “the largest nationwide provider of alternative collision replacement parts and a leading provider of recycled engines and transmission and remanufactured engines,” has requested ex parte reexamination of three design patents that are owned by BMW and that claim “wheel and wheel cover” designs (see ex parte Request Nos. (3), (4) & (5)). Reexamination has proven over the years to be an extremely effective weapon in the hands of design patent challengers. It does not appear that there is a parallel infringement case.
Sony and Hewlett-Packard have requested inter partes review of an Ethernet access patent owned by Network-1 Security Solutions, Inc. (inter partes review Request No. (3)). The request is based on grounds identical to that asserted in two earlier IPR proceedings initiated by Avaya and Dell (see IPR2013-00071 and IPR2013-00385), and which the Board has already instituted. Sony and Hewlett-Packard seek joinder with the Avaya and Dell’s IPR proceedings – they expressly state that their request for inter partes review does not alter or expand arguments that were previously presented by Avaya and Dell and that were considered by the Board. In recent cases, the Board has not permitted joinder without such a statement by the petitioner.
