Reexamination Requests : US PTO Litigation Alert™

Amendment of Claims in Reexamination Precludes Award of Royalties for Pre-Issuance Infringement

Scott Daniels | October 30, 2012

In certain circumstances, a patentee may recover for acts of infringement that occur before issuance of its patent.  Section 154(d) states that a patentee may obtain a reasonable royalty for acts of infringement occurring between the patent’s publication date and its issuance date.  The statute adds that a patentee may “obtain reasonable royalties for activities amounting to infringement of the [patent application’s claims] if: (1) the issued patent claims are substantially identical to the claims in the published application; and (2) [defendant] had actual notice of the published patent application.” 
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LG Challenge to Four Lighting Patents among the Reexamination Requests Filed Week of September 4, 2012

Scott Daniels | September 10, 2012

LG has frequently resorted to reexamination as part of its litigation strategy to defend against patent infringement allegations.  So it was no surprise last week when LG requested reexamination of four patents related to LED and/or LCD technology (see inter partes Request Nos. (2) & (3) and ex parte Request Nos. (6) & (13)).  The patents are owned by Industrial Technology Research Institute that has sued LG in New Jersey for infringement of the patents.

Research In Motion, also a frequent requester, sought reexamination of three wireless communications patents owned by Innovative Sonic (see inter partes Request Nos. (14), ((20) & (24)).  The two companies are involved in an infringement action in Dallas.

CBS Interactive requested reexamination of a Microsoft information transmission patent that issued in July (see inter partes Request No. (8)).

Finally, our friends at Troll Busters were busy attacking two adenovirus patents (see ex parte Request Nos. (7) & ((8)).

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Nintendo Attack on Video Game Patents, Among the Reexamination Requests Filed Week of August 27, 2012

Scott Daniels | September 6, 2012

Nintendo requested reexamination of two patents that claim handheld pointing systems for use with video games and that are owned by ThinkOptics (see inter partes Request Nos. (12) & (14).  The companies are involved in an infringement action in the Easter District of Texas.

Apple requested reexamination of a caller-ID patent owned by ClassCo (see inter partes Request No. (7)).  Classco has sued Apple for infringement in Illinois.

And Motorola Mobility has requests against three patents, two owned by Bandspeed and one owned by Effingo Wireless (see inter partes Request Nos. ((5), (6) & (9)).


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DIRECTV Reexamination Request of Satellite Broadcast Patent, one of the Requests Filed Week of June 18, 2012

Scott Daniels | June 25, 2012

Last Monday DIRECTV asked for reexamination of a patent owned by Global Communications and claiming a satellite broadcast receiving and distribution system (see inter partes Request No. (1)).  Global has sued a number of companies – presumably DIRECTV partners – for infringing that patent, as well as seven others.

Reexamination was requested for U.S. Patent No. 6,770,748 owned by Santaris Pharma and claiming nucleotide analogues that suitable as antisense molecules for treatment of cancer and AIDS patients (see inter partes Request No. (2)).  The Patent Office records do not yet show the identity of the requester, but it might be Isis since Santaris and Isis have fought over rights to this technology in the past.

Yet another request for reexamination was filed against a MobileMedia Ideas patent, perhaps by Apple or HTC – the Patent Office records do not say (see ex parte Request No. (6)).

Finally, DuPont and Monsanto are tussling over a soybean oil patent (see inter partes Request No. (7)).

The following inter partes requests were filed:

(1)         95/002,022 (electronically filed) – U.S. Patent No. 6,397,038 entitled SATELLITE BROADCAST RECEIVING AND DISTRIBUTION SYSTEM and owned by Global Communications.  Filed June 18, 2012, by DIRECTV.  The ‘038 patent is currently the subject of a litigation styled Global Communications v. PDI Communications et al. (Case No. 4:11-cv-451 (N.D. Fla.).

(2)         95/002,023 (electronically filed) – U.S. Patent No. 6,770,748 entitled BICYCLONUCLEOSIDE AND OLIGONUCLEOTIDE ANALOGUE and owned by Santaris Pharma.  Filed June 18, 2012, perhaps by Isis.

(3)         95/002,024 (electronically filed) – U.S. Patent No. 7,707,823 entitled METHOD AND APPARATUS FOR MANIPULATING AND DILUTING INTERNAL COMBUSTION ENGINE EXHAUST GASES and owned by Leseman Davis, LLC.  Filed June 19, 2012.

(4)         95/002,025 (electronically filed) – U.S. Patent No. 7,320,031 entitled AUTOMATIC, PERSONALIZED ONLINE INFORMATION AND PRODUCT SERVICES and owned by Personalized User Model (PUM).  Filed June 20, 2012, perhaps by Google.  The ‘031 patent is currently the subject of a litigation styled Personalized User Model v. Google (Case No. 09-cv-525 (D. Del.)).

(5)         95/002,026 (electronically filed) – U.S. Patent No. 7,917,401 entitled SYSTEMS AND METHODS FOR OBTAINING HEALTH AND FINANCIAL INFORMATION WITH A HANDHELD DEVICE and owned by Epic Technology.  Filed June 20, 2012, by eBay.  The ‘401 patent is currently the subject of a litigation styled Epic Technology v. Shapsavvy (Case No. 2:12-cv-249 (D. Utah)).

(6)         95/002,027 (electronically filed) – U.S. Patent No. 8,073,744 entitled METHOD TO PROVIDE LIQUID FUNDS IN THE ONLINE AUCTION AND MARKETPLACE and owned by Venture Lending & Leasing VI.  Filed June 22, 2012, by Capital Access Network.

(7)         95/002,028 (electronically filed) – U.S. Patent No. 7,790,953 entitled SOYBEAN SEED AND OIL COMPOSITIONS AND METHODS OF MAKING SAME and owned by Monsanto.  Filed June 22, 2012, by DuPont.

(8)         95/002,029 (electronically filed) – U.S. Patent No. 7,925,531 entitled METHOD OF DELIVERING GOODS AND SERVICES VIA MEDIA and owned by TrialCard Systems.  Filed June 22, 2012.  The ‘531patent is currently the subject of a litigation styled TrialCard Systems v. P.S.K.W. et al. (Case No. 3:11-cv-5693 (D.N.J.)).

 

The following ex parte requests were filed:

(1)         90/012,362 (electronically filed) – U.S. Patent No. 5,629,867 entitled SELECTION AND RETRIEVAL OF MUSIC FROM A DIGITAL DATABASE and owned by DigiMedia Holdings Group.  Filed June 18, 2012.   The ‘867 patent is currently the subject of a litigation styled Mission Abstract Data v. Beasly Broadcast et al. (Case No. 11-cv-176 (D. Del.)).

(2)         90/012,363 (electronically filed) – U.S. Patent No. 6,294,953 entitled HIGH SENSITIVITY DEMODULATOR FOR A RADIO TAG AND METHOD and owned by Axcess International.  Filed June 18, 2012, likely by Savi.   The ‘953 patent is currently the subject of a litigation styled Axcess International v. Savi (Case No. 3:10-cv-1033 (N.D. Tex.)).

(3)         90/012,364 (electronically filed) – U.S. Patent No. RE 40,281 entitled SIGNAL PROCESSING UTILIZING A TREE-STRUCTURED ARRAY and owned by Hybrid Audio.  Filed June 18, 2012, apparently by HTC.   The ‘281 patent is currently the subject of a litigation styled Hybrid Audio v. HTC (Case No. 6:11-cv-00195 (E.D. Tex.)).

(4)         90/012,365 (electronically filed) – U.S. Patent No. 6,200,216 entitled ELECTRONIC TRADING CARD and owned by Wildcat Intellectual Property Holdings.  Filed June 18, 2012, likely by 4Kids Entertaining.   The ‘216 patent is currently the subject of a litigation styled Wildcat Intellectual Property Holdings v. 4Kids Entertaining (Case No. 2:11-cv-305 (E.D. Tex.)).

(5)         90/012,366 (electronically filed) – U.S. Patent No. 6,349,291 entitled METHOD AND SYSTEM FOR ANALYSIS, DISPLAY AND DISSEMINATION OF FINANCIAL INFORMATION USING RESAMPLED STATISTICAL METHODS and owned by Investpic.  Filed June 21, 2012.

(6)         90/012,367 (electronically filed) – U.S. Patent No. 6,043,760 entitled LANGUAGE-DEPENDENT LETTER INPUT BY MEANS OF NUMBER KEYS and owned by MobileMedia Ideas.  Filed June 21, 2012.   The ‘760 patent is currently the subject of a litigation styled MobileMedia Ideas v. Apple (Case No. 1:10-cv-258 (D. Del.)); MobileMedia Ideas v. HTC (Case No. 2:10-cv-112 (E.D. Tex.)).

(7)         90/012,368 (electronically filed) – U.S. Patent No. 5,871,908 entitled PROCESS FOR THE DETERMINATION OF IN VITRO AMPLIFIED NUCLEIC ACIDS and owned by Evotec AG.  Filed June 21, 2012.

(8)         90/012,369 (electronically filed) – U.S. Patent No. 7,670,832 entitled SYSTEM FOR FLUORESCENCE MONITORING and owned by University of Utah Research Foundation.  Filed June 21, 2012.

(9)         90/012,370 (electronically filed) – U.S. Patent No. 5,437,722 entitled WATER-RESISTANT GYPSUM COMPOSITION AND EMULSION FOR MAKING SAME and owned by Henry Company Canada.  Filed June 22, 2012, likely by Sasol.  The ‘722 patent is currently the subject of a litigation styled Henry Company et al. v. Sasol Wax North America et al. (Case No. 2:11-cv-6444 (C.D. Cal.)).

(10)     90/012,371 (electronically filed) – U.S. Patent No. 5,974,621 entitled MOP WRINGER WITH MOP HANDLE SUPPORT and owned by Katy Industries et al.  Filed June 22, 2012, likely by Rubbermaid.   The ‘621 patent is currently the subject of a litigation styled Continental Commercial Prods. v. Rubbermaid (Case No. 4:11-cv-527 (E.D. Mo.)).

(11)     90/012,372 (electronically filed) – U.S. Patent No. 7,215,991 entitled WIRELESS MEDICAL DIAGNOSIS AND MONITORING EQUIPMENT and owned by Body ScienceFiled June 22, 2012, likely by Philips.   The ‘991 patent is currently the subject of a litigation styled Body Science v. Philips Electronics North America (Case No. 1:12-cv-10536 (D. Mass.)).

(12)     90/012,373 (electronically filed) – U.S. Patent No. 6,289,238 entitled WIRELESS MEDICAL DIAGNOSIS AND MONITORING EQUIPMENT and owned by Body Science.  Filed June 22, 2012, likely by Philips.   The ‘238 patent is currently the subject of a litigation styled Body Science v. Philips Electronics North America (Case No. 1:12-cv-10536 (d. Mass.)).

(13)     90/012,374 (electronically filed) – U.S. Patent No. 7,922,614 entitled CHAIN FOR A MACHINE DRIVE, TRANSPORT OF MATERIAL IN A MACHINE OR THE LIKE, AND PACKAGING MACHINE COMPRISING ONE SUCH CHAIN and owned by Multivac.  Filed June 22, 2012, by Owner.

Reexamination Requests against Abbott Labs’ HIV Drug Patents among those Filed Week of June 11, 2012

Scott Daniels | June 18, 2012

Earlier this year Abbott Labs sued Roxane Labs for infringement U.S. Patent Nos. 7,148,359 and 7,364,752 which claim the HIV protease inhibitor ritonavir, in one patent as a crystalline polymorph, and in the other as a solid dispersion in a water soluble carrier.  On Friday reexamination was requested for both patents (see inter partes Request Nos. (7) & (8)).  Although the Patent Office records do not yet show the identity of the requester, it is quite likely Roxane.
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New Inter Partes Reexamination Rules

Darrin Auito | September 22, 2011

The USPTO recently announced new rules governing the provisions of the America Invents Act (“AIA”) relating to inter partes reexamination that went into effect on September 16, 2011.

Inter partes reexamination requests submitted:

  • Prior to September 16, 2011:  The SNQ standard is applicable in determining whether the request for inter partes reexamination will be granted.  If reexamination is ordered based on the SNQ standard, then the SNQ standard will apply throughout the reexamination proceeding.
  • On or after September 16, 2011, but before September 16, 2012:  The “reasonable likelihood” standard (i.e., a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request) is applicable in determining whether the request for inter partes reexamination will be granted.  If reexamination is ordered based on the “reasonable likelihood” standard, then this standard will apply throughout the reexamination proceeding.
  • On or after September 16, 2012:   The Office cannot grant, or even accord a filing date to, the request, because the inter partes reexamination provisions of 35 U.S.C. chapter 31 are not available for any request for inter partes reexamination submitted on or after September 16, 2012.  The Office will only accept petitions to conduct inter partes review.  (*** The Office will implement the new inter partes review proceedings in a separate rule making.)


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Attacks on Two LSI Logic Video Decoder Patents, among Reexamination Requests filed Week of April 25, 2011

Scott Daniels | May 2, 2011

LSI Logic is pursuing an infringement suit against Vizio in the Central District of California (see ex parte Request Nos. (4) & (5)).  On Thursday, reexamination was requested for two of the patents in that suit, in all likelihood requested by Vizio

Also, Micro-Probe requested reexamination of another FormFactor patent – as previously reported, the two companies are in litigation in the Northern District of California (see inter partes Request No (3)).  And Funai requested reexamination of one of the Freescale computer patents in the case between the two companies in the Western District of Texas (see ex parte Request No (7)).


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Micro-Probe Attack on FormFactor Electrical Connection Patent, among Reexamination Requests Filed Week of April 18, 2011

Scott Daniels | April 25, 2011

Micro-Probe has requested reexamination of FormFactor’s U.S. Patent No. 7,225,538 that claims methods for making electrical connections in semiconductor packaging assemblies (see inter partes Request No. (11)). FormFactor has sued Micro-Probe in the Northern District of California for infringement of the ‘538 patent, as well as for infringement of six other patents and for a series of trade secret-type violations.  The PTO has ordered reexamination for five of those FormFactor patents, and Micro-Probe has moved Judge Phyllis Hamilton for a partial stay of the District Court case.  The ‘538 was the subject of an ITC investigation in 2009 that ended in a determination of no infringement by the importers.

The clear winner last week for the number of requests filed was Vesdia that sought reexamination of four TuitionFund patents related to merchant rebates and college tuition (see inter partes Request Nos. (1), (3), (5) & (6)).  The two companies are in litigation in Tennessee over those patents.

After requesting reexamination for a Hisamitsu transdermal adhesive patent three weeks ago, Kowa has now requested reexamination of a second Hisamitsu patent, this one claiming transdermal patches (see inter partes Request No. (2)).

Finally, reexamination was requested of two Sorenson patents that claim systems for exterminating pests (see ex parte Request Nos. (4) & (6)). 


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Reexamination Request against MobileMedia Smart-Phone Patent, among those Filed Week of April 4, 2011

Scott Daniels | April 11, 2011

An ex parte request has been filed – probably by HTC – against one of MobileMedia Ideas’ 11 smart-phone patents that are the subject of its pending infringement litigation against HTC (see ex parte Request No. (2) for U.S. Patent No. 5,915,239).  MobileMedia obtained the ‘239 patent from Nokia Capital.  Reexamination was ordered last month (90/011,436) for one of the other MobileMedia patents-in-suit, U.S. Patent No. 6,253,075; reexaminations against the other nine MobileMedia patents might be pending as well.  MobileMedia has two parallel smart-phone infringement law suits pending, one against Apple, and one against RIM.

On the heels of its earlier requests against three XRPT patents, eBay requested reexamination of two additional XPRT patents (see inter partes Request Nos. (2) & (3)).

Finally, Beckman Coulter requested reexamination of a GeneOhm Sciences Canada patent claiming a method for detection of certain methicillin-resistant bacteria (see inter partes Request No. (5)).


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EchoStar Challenge to Northpoint Set-Top Box Patent among 24 Reexamination Requests Filed Week of March 21, 2011

Scott Daniels | March 28, 2011

Friday afternoon EchoStar requested reexamination of Northpoint’s U.S. Patent No. 6,208,636 which claims a TV set-top box for processing multiple datastreams.(see ex parte Request No. (19)). Northpoint is suing EchoStar, DirecTV and Dish Network in the Western District of Texas for infringement of the ‘636 patent. According to Northpoint’s complaint, Dish Network has used the claimed box for 14.1 million direct broadcast satellite subscriptions as of December 2009.  

Reexamination was requested against AU Optronics’ U.S. Patent No. 7,125,157 (see inter partes Request No. (4)), probably by Sharp, though the accessible PTO records are not clear.  AU Optronics sued Sharp earlier this month in Delaware for infringement of the ‘157 patent, as well as five other patents.   

Formax and Prosure requested reexamination of four Patriot Universal Holdings patents related to machines for “molding food patties,” presumably hamburgers (see ex parte Request Nos. (6), (7), (8) & (9) – the two companies had been sued by Patriot in Wisconsin for infringement of the patents.  The same day Formax also filed in Wisconsin its own complaint for patent infringement against two additional companies.


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