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
Reissue Applicant Loses to Recapture Rule
| June 30, 2010
Yesterday the PTO Board denied Appellant’s request for rehearing in Ex parte Hollingsworth, stating that rehearing is “limited to matters misapprehended or overlooked by the Panel” in original decision. (37 C.F.R. § 41.52(a)(1)). Appellant’s argument – that the Recapture Rule does not apply because the pending claims are patentably distinguishable over the prior art – was not “misapprehended or overlooked” for the simple reason that the argument did not appear in the original briefing. The case, however, is more than a lesson on the standard for rehearing: it recites the sequence of steps followed by the Board in determining whether the Recapture Rule applies.
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Fluxion Biosciences Files Four Reexamination Requests and Moves to Stay Infringement Suit
| June 30, 2010
Earlier this month, Fluxion Biosciences filed reexamination requests against four Cellectricon patents related to microfluidic structures involving cell-based biosensors. See “Recent Requests” below. The next day, Fluxion moved to stay a law suit that Cellectricon had filed last summer, accusing Fluxion of infringing those four patents. Cellectricon AB v. Fluxion Biosciences, Inc., 5:09-CV-03510-RMW (N.D. Cal.).
In its motion to stay, Fluxion asserts that each of the three familiar factors – possible prejudice to the patentee, simplification of issues, and the stage of the litigation – favors a stay. What makes Fluxion’s motion special, however, is that it also explains why the four requests are meritorious.
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Reexamination Requests Filed the Week of June 21st
| June 30, 2010
Notable among the reexamination requests from last week was one filed by Whirlpool attacking an LG refrigerator patent that is also the subject of a law suit between the two companies.
Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly for requests that involve copending District Court litigation, is too long. We therefore report new ex parte and inter partes reexamination requests filed electronically the previous week as they appear on the Patent Office PAIR system. Information on concurrent litigation is also provided, where available.
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Correction
| June 30, 2010
In our Practice Note of June 28, we cited a new Federal Register notice allowing patentees to attack a finding of an SNQ by an appeal to the Board.
We should have added that such an appeal is available for ex parte reexamination, but not inter partes reexamination. See 35 U.S.C. § 312(c).
A Practice Note
| June 28, 2010
On June 16, we reported the PTO Board decision Ex parte Yasukochi et al., in which the Board refused to consider the patentee’s argument that the examiner’s rejection was improper because it was based on a combination of references that did not constitute a substantial new question of patentability (SNQ) – according to the Board, the examiner’s determination of whether an SNQ exists may be reviewed through Petition to the Director, but not by appeal to the Board.
We are now informed by our good friend and reexamination scholar – Matt Smith – that the PTO issued a Federal Register notice published this past Friday stating that the Board does have jurisdiction to consider the SNQ issue. The only caveat is that for reexamination proceedings ordered on or after June 25, 2010, the patentee must have first requested reconsideration by the examiner to preserve the issue for appeal to the Board. Review by petition is still available, but only where the examiner’s finding of an SNQ is in “brazen defiance” of the standard for such a finding.
Board Limits Claims to Specification Disclosure
| June 23, 2010
Last week, the PTO Board picked up on the theme sounded earlier this year by the CAFC in Ariad Pharm. v. Eli Lilly, 598 F.3d 1336 (Fed. Cir. 2010), and repeated in a statement by Commissioner Kappos – “an adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.” Ariad 598 F.3d at 1349-50. In Ex parte Research Tech., the Board affirmed the reexamination rejection of claims of U.S. Patent No. 5,726,772 as being anticipated by a 1992 WO publication . The ‘772 patentee had asserted that it was entitled to benefit of its 1991 application, and that the WO publication was therefore not prior art.
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Reexamination Requests Filed the Week of June 14th
| June 23, 2010
Notable among the requests from last week is a request filed by Mylan against Pfizer for a patent covering Pfizer’s CADUET® blood pressure treatment composition, U.S. Patent No. 6,455,574. Pfizer sued Mylan earlier this year for infringement of that patent. Also notable are three requests filed by Furuno against Honeywell patents that are the subject of a law suit between the companies.
Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly for requests that involve copending District Court litigation, is too long. We therefore report new ex parte and inter partes reexamination requests filed electronically the previous week as they appear on the Patent Office PAIR system. Information on concurrent litigation is also provided, where available.
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久光製薬は、米国特許登録製品「粘着剤およびこれを用いてなる貼付製剤」における特許権を失った
| June 23, 2010
特許権者は、米国特許権に対する再審査請求により予想外の結果を生むことがある（Ex parte Yasukochi et al）。
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Developments in Mid-June
| June 23, 2010
1. Microsoft Files Request Against
On June 18th, Microsoft filed a request for reexamination against U.S. Patent No. 5,292,125. The ‘125 patent appears to be assigned to the law firm Brooks & Kushman and is entitled APPARATUS AND METHOD FOR ELECTRONICALLY CONNECTING REMOTELY LOCATED VIDEO GAMES. As reported above, the ‘125 patent is the subject of an infringement suit against Microsoft. There have been substantial disputes in the law suit regarding claim construction, and the present request may be an attempt to take advantage of the PTO claim construction arguments made on behalf of the patentee.
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Hisamitsu Loses Patent for Adhesive for Transdermal Drug Delivery Patent
| June 16, 2010
Requesting reexamination of one’s own patent can have unpredictable consequences, as demonstrated yesterday by the PTO Board’s decision, Ex parte Yasukochi et al.
Three years ago Hisamitsu Pharmaceutical requested reexamination of claims 1, 3 and 6 of its U.S. Patent No. 7,034,083, entitled PRESSURE-SENSITIVE ADHESIVE AND PATCH EMPLOYING THE SAME, in view of certain prior art references that had not been before the examiner in the original prosecution. Reexamination was granted, but for all six claims of the ‘083 patent.
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