Reexamination Requests : US PTO Litigation Alert™

Du Pont Attacks Five Monsanto Seed Patents, Among the Requests Week of January 6, 2014

Scott Daniels | January 13, 2014

The highlight last week was a set of inter partes review requests filed by du Pont against five Monsanto patents related to automated methods for sampling seeds (see inter partes review Request Nos. (3) through (7)).  There does not appear to be any litigation, as yet, regarding these Monsanto patents.

Last week also saw a challenge by Arthrex to a surgical method patent – Smith & Nephew’s U.S. Patent No. 5,601,557 (see ex parte reexamination Request No. (4)).  S&N has sued Arthrex for infringement of the ‘557 patent. 
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Toshiba Attack on Intellectual Ventures IC Patents, Among the Requests Week of December 30, 2013

Scott Daniels, Cindy Chen and Jerome Bushnell | January 6, 2014

This past March, Intellectual Ventures I and II sued Toshiba for infringement of ten circuits patents, most of them related to memory.  This past week, Toshiba requested inter partes review of two of those ten patents, U.S. Patent Nos. 5,687,132 and 7,836,371 (see inter partes review Requests No. (2) & (9)).  The ‘132 patent claims “multiple-bank memories and systems” and the ‘371 patent claims an integrated circuit for “testing and debugging of electronic systems, and, in particular, to on-chip circuits for the test and diagnosis of problems in an integrated circuit.” Toshiba has previously requested inter partes review of two other IV patents (IPR2014-00113, and -00201), and will likely be filing further requests against the other six remaining patents, as well.

Apple filed two petitions for inter partes review of a Rensselaer Polytechnic Institute patent (see inter partes review Request No. (10)). RPI’s patent relates “to user interfaces … that recognize natural language.”  Apple asks that these new requests be joined with previously filed request IPR2014-00077. RPI has sued Apple for infringement of the patent. 
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Attack by Honda & Others on Cruise Control Patent, Among the Requests Week of 23 December 2013

Scott Daniels, Cindy Chen and Jerome Bushnell | December 30, 2013

Last Monday American Honda Motor requested inter partes review of U.S. Patent No. 6,324,463 (see inter partes review Request No. (4)) The ‘463 patent is owned by Cruise Control Technologies that has sued 15 car companies for infringement; the patent claims “a system for indicating the operational status and parameters of a cruise control system for use in a human operated vehicle.”  Simultaneously, Nissan North America and six other automakers filed their own petitions for inter partes review of the ‘463 patent (see inter partes review Request No. (5)). These petitions come on the heels of two requests filed the previous week by Subaru and Toyota.  Each of the four petitions proposes a different set of prior art rejections.  This approach of multiple petitions against a single patent has become a common method for requestors to avoid the page limit on inter partes requests.


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TRW Challenges 10 Car Headlight Patents, among the Requests Week of December 16, 2013

Scott Daniels, Cindy Chen and Jerome Bushnell | December 23, 2013

Over a two-day period, TRW requested inter partes review of 10 Magna Electronics patents, filing two requests against three of those patents (see inter partes review Request Nos. (2) and (4) through (15)).  The patents all relate to systems for controlling automobile headlights.  Magna has sued TRW for infringement of the patents in the Western District of Michigan.

Subaru, Toyota and Ford each requested inter partes review of U.S. Patent No. 6,324,463 that claims a “system for indicating the operational status and parameters of a cruise control system for use in a human operated vehicle” (see inter partes review Request Nos. (24), (25) & (26)).  The owner of the ‘463 patent, Cruise Control Technologies, has sued 15 car companies for infringement.  Each of the three Requests proposes distinct prior art rejections of the claims.  These filings follow Cruise Control’s amendment of the ‘463 claims in late October in a pending ex parte reexamination.

And Netflix filed requests against four OpenTV patents (see inter partes review Request Nos. (2), (16), (18) & (23)), Ford against two TMC Fuel Injection patents (see inter partes review Request Nos. (21 & (22)), and Apple against a WhitServe patent (see inter partes review Request No. (17)).
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Cisco Seeks Inter Partes Review of Networks Patent, Requests Filed the Week of December 9, 2013

Scott Daniels, Cindy Chen and Jerome Bushnell | December 16, 2013

Cisco petitioned for inter partes review of U.S. Patent No. 7,724,879 which claims a method for determining “the availability of a called party before placing a communication from the calling party to the called party” (see inter partes review Request No. (5)).  The ‘879 patent is owned by AIP Acquisition who has sued several large cable companies for infringement.  The ‘879 patent is also the subject of a pending inter partes review, IPR2013-00296, filed by Level 3 Communications and instituted by the APJs on October 31, 2013.

The following inter partes review requests were filed:

  1. IPR2014-00243 (electronically filed) – U.S. Patent No. 7,303,992 entitled COPPER ELECTRODEPOSITION IN MICROELECTRONICS, which is owned by Enthone Inc.  Filed by Moses Lake Industries, Inc. on December 10, 2013.  The ‘992 patent is asserted in the patent infringement action styled Enthone Inc. v. Moses Lake Industries, Inc.(Case No. 1:13-cv-1054-TJM-RFT (N.D.N.Y.)).
  2. IPR2014-00244 (electronically filed) – U.S. Patent No. 5,793,302 entitled METHOD FOR SECURING INFORMATION RELEVANT TO A TRANSACTION, which is owned by Leon Stambler.  Filed by Fifth Third Bank on December 9, 2013.  The ‘302 patent is asserted in the patent infringement action styled Leon Stambler v. Fifth Third Bancorp and Fifth Third Bank (Case No. 2:12-cv-675-JRG (E.D. Tex.).  The Federal Reserve had previously petitioned for inter partes review of the ‘302 patent in IPR2013-00341 and IPT2013-00409, to which the present request raises identical issues; and as well the Federal Reserve had previously challenged the other patent at issue in the infringement litigation, U.S. Patent  No. 5,936,541, in IPR2013-00344 and IPR2013-00406.
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Fifty-Three Patents Challenged, Week of December 2, 2013

Scott Daniels and Cindy Chen | December 9, 2013

The number of new patent challenges continues to accelerate – last week saw thirty-two requests for inter partes review, three for post-grant review, and eighteen for ex parte reexamination.  Most notably, Apple, either alone or with one or more co-requesters, attacked six patents owned by either Arendi, THX, or VirnetX (see inter partes review Request Nos. (1), (4), (5), (25), (26), & (28)).  In each instance, Apple is being sued for infringement of the respective patent now being challenged.  Apple was also the target of an anonymous 180-page request for ex parte reexamination (see ex parte Request No. (7)) against its U.S. Patent No. 8,463,238 claiming a mobile device base station.

There is also an increasing pattern of companies filing joint requests.  For instance, Samsung, LG and HTC teamed up to request inter partes review of two content delivery patents owned by Affinity Labs of Texas (see inter partes review Request Nos. (6) & (8)).

Toshiba Samsung Storage requested inter partes review of two LG recording media patents (see inter partes review Request Nos. (2) & (3)).  The companies are involved in an infringement action in Delaware.
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Inter Partes Review Requested for Two Planet Blue Lip Sync Patents, Week of November 25, 2013

Scott Daniels and Cindy Chen | December 2, 2013

Video game-maker Naught Dog, Inc., a wholly owned subsidiary of Sony Computer Entertainment, has requested inter partes review of U.S. Patent Nos. 6,611,278 and 6,307,576 that claim methods for lip synching sound with the facial expressions of animated characters (see inter partes review Request Nos. (3) & (4)).  The owner of the patents, Planet Blue, has sued Naughty Dog for infringement.  Planet Blue’s infringement action has been consolidated, along with fourteen other cases, into McRO, Inc. v. Namco Bandai Games America, Inc. (Case No. 2:12-cv-10322-GW-FFMx (C.D. Cal.)). Planet Blue has also asserted the ‘278 and ‘576 patents against Sony Computer Entertainment in a patent infringement action styled McRO, Inc. d/b/a Planet Blue v. Sony Computer Entertainment America, LLC and SCE Santa Monica Studio, Inc. (Case No. 1:12-cv-01514-LPS (D. Del.)); and against Sucker Punch Productions in an action styled McRO, Inc. d/b/a Planet Blue v. Sucker Punch Productions, LLC (Case No. 1:12-cv-01515-LPS (D. Del.)).  These infringement actions have not made much progress, and Respondents’ motions to stay pending completion of the inter partes reviews seem likely to be granted.

 

Inter partes review was also requested for another Intellectual Ventures II patent, this time by Toshiba (see inter partes review Request No. (7)).  This past March, Intellectual Ventures I & II sued Toshiba for infringement of the patent, plus nine other patents, related to computer bus interfaces for use in hard disk drives.
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RPX Takes on Four VirnetX Patents, Week of November 18, 2013

Scott Daniels | November 25, 2013

Last Monday we reported that RPX had petitioned for inter partes review of MacroSolve patent that had been the basis for 67 infringement actions against a wide range of financial and retail concerns.  This past week, RPX filed seven inter partes review requests against four network protocol patents owned by VirnetX (see inter partes review Request Nos. (15), (16), (17) & (18)).  The patents have been the source of an enormous flow of licensing revenue for VirnetX, resulting from a series of highly successful infringement actions in the Easter District of Texas.

At the same time, the four VirnetX patents have been involved in various reexaminations in which the claims are under either non-final rejection or final rejection.  Apple and New Bay Capital LLC have also filed inter partes review petitions against the VirnetX patents.  RPX explains “that the grounds presented in this petition closely parallel the grounds presented in the petitions filed by Apple and New Bay Capital.”  RPX states that it “has established a Research & Development program (“RPX R&D”) through which it advances a variety of initiatives [with the goals of] increasing transparency by collecting information regarding enforcement activities of entities or patents, tracking patent sales, collecting and evaluating prior art, and compiling databases of this information, which RPX makes available to its clients. In addition, as part of its RPX R&D program, RPX contests patents of questionable validity by filing requests for post-issuance review with the PTO.”

Nintendo requested inter partes review of three patents related to methods for determining orientation in space of hand-held devices in video games (see inter partes review Request Nos (9), (10) & (11)).  The owner of the patents, Motion Games, has sued Nintendo and three other companies in the Eastern District of Texas for infringement of the patents.


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Reexamination Requests Filed Against Two Apple iPhone Design Patents

Scott Daniels | June 4, 2013

Ex parte reexamintion requests were filed Friday against Apple’s D618,677 and D618,678.

The ‘677 patent was one of the Apple patents in its successful case last year against Samsung in the Northern District of California.  And ALJ Pender at the U.S. International Trade Commission has determined that Samsugn infringes the ‘678 patent, a determination now before the Commission for review.

It is not yet clear from the PTO files who filed the requests, and in fact, ex parte reexamination might have been chosen to avoid disclosure of the filer’s identity.  Inter partes review is normally the weapon of choice for companies like Samsung.

Drawings from the two patents are shown below.

The ‘677 Patent

apple iphone (1)

The ‘678 Patent

apple iphone (2)

Can a Patentee Request Reexamination for an Improper Purpose?

Scott Daniels | November 8, 2012

Reexamination of a patent is normally sought by a prospective infringer who wishes to invalidate the patent or to achieve one of the numerous collateral benefits of reexamination.  Occasionally, though, it is the patentee who requests reexamination.  Is it possible for a patentee to make such a request for an “improper purpose?”  If so, does that improper purpose render the patent unenforceable?

The issue arose Tuesday in Exelis v. Cellco, 2012 U.S. Dist, LEXIS 158842 (D. Del.)).  The patent-in-suit had been the subject of an initial patent infringement action that settled, but not before Judge Sleet had construed the claims.  After that initial case was dismissed, the patentee Exelis requested reexamination of its claims.  Over the course of the reexamination, Exelis amended certain claims, added new claims, and presented arguments distinguishing its claims from the prior art.  The reexamination examiner at first rejected the claims, but later allowed them.  After the conclusion of the reexamination, Exelis filed a second infringement action, the current case in which Cellco is of accused of infringement.


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