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
Reexamination Requests Filed the Week of August 16th
| August 25, 2010
Most notable among last week’s requests is one filed by Sprint attacking an EMSAT patent for a cellular telephone system. EMSAT’s patent is the subject of no less than eight separate law suits. Let’s not forget Rambus, whose patents are reexamined more often than those of any other company. Last week the requester was Hynix, not NVIDIA.
The following inter partes requests were made:
(1) 95/001,420 (electronically filed) – U.S. Patent No. 6,163,816 owned by FlashPoint Technology, Inc. and entitled SYSTEM AND METHOD FOR RETRIEVING CAPABILITY PARAMETERS IN AN ELECTRONIC IMAGING DEVICE. Filed August 18, 2010.
(2) 95/000,562 (paper filed) – U.S. Patent No. 7,002,533 entitled DUAL-STAGE HIGH-CONTRAST ELECTRONIC IMAGE DISPLAY. Filed August 2, 2010 by Dolby Laboratories, Inc.
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How not to Ask for a Stay?
| August 25, 2010
Last Friday, in 3M Innovative Properties v. Envisionware, a court in Minnesota denied the accused infringer’s motion to stay the case pending completion of two reexaminations.
In June 2009 3M Innovative sued Envisionware for infringement of three patents related to RFID electromagnetic systems that help libraries to oversee the location of their books. Envisionware filed its Answer and five months later, in April 2010, it requested reexamination of two of the three patents-in-suit. In August it asked the Court for a stay, noting that reexamination had been ordered for one patent and that all the claims of the other patent had been rejected.
The Court has now denied that motion.
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“Substantial New Question”: Still a Loser for Patentees?
| August 20, 2010
The PTO’s decision this June to allow patentees to challenge the examiner’s determination of a “substantial new question of patentability” (SNQ) in its appeal of a final rejection to the PTO Board – as opposed to the previous practice of requiring the patentee to make such a challenge in a petition filed within two months of the reexamination grant – was met with some fanfare in the Blogosphere. Yet, whether the challenge is by petition or appeal, the hurdle faced by the patentee remains quite high.
The difficulty of that burden was demonstrated in the Board’s decision in Ex parte Buttercup Legacy, 90/008,820 (August 19, 2010). There, the claimed invention was a “lubrication sheet for lubricating a paper shredder.” The claim included the limitation of “one or more shell layers [proving] mechanical stiffness and rigidity to the lubrication sheet.” The primary reference relied upon in the Request and by the examiner, “Zettler,” disclosed a “thin sheet” which could be made from paper, foil or magnetic tape. This disclosure was used by the Requester and the examiner to satisfy the shell layer stiffness limitation.
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Update on Furuno Requests against Honeywell Marine Navigation Patents
| August 19, 2010
In June we reported that Furuno had filed reexamination requests against five Honeywell patents claiming marine display and navigation systems. Honeywell had previously sued Furuno in Minnesota for infringing those five patents. Judge Michael Davis has now stayed that case pending completion of the five reexaminations.
In granting the stay, Judge Davis recited the familiar three-part test for determining whether to grant a stay: whether there would be prejudice to the patentee, whether a stay would simplify the issues, and the stage of the litigation. The stay order is noteworthy, however, in that the PTO had granted reexamination for only one of the five Honeywell patents. To reject Honeywell’s argument that a stay with respect to all five patents would therefore be premature, Judge Davis relied heavily on the PTO statistics showing that reexamination is granted in the great majority of cases.[1] This reliance on PTO reexamination statistics contrasts markedly with the skepticism recently expressed by Judge Keith Ellison in Tesco v. Weatherford Int’l (Civ. No. 08-cv-2531).
The stay order is also interesting in that Judge Davis noted a passage from the PTO’s reexamination grant “that Furuno U.S.A.’s marine navigation software, MaxSea, which Honeywell has accused of infringement, ‘is directed to a different field of endeavor, namely a seas based charting system rather than the flight display system as claimed.’” (Emphasis added). The reexamination may therefore have an effect on the infringement issues when the case returns to the court after the stay is lifted.
[1] Since Judge Davis granted the stay, reexamination has been granted for three of the remaining Honeywell patents, and the request for the fifth is still pending.
Reexamination Requests Filed the Week of August 9th
| August 18, 2010
The pace of new reexamination requests slowed a bit this past week. One of the more interesting is the request filed August 9th against a design patent owned by Durham for a portion of a cabinet shelf. As we have previously reported, reexamination of design patents tends to be much more rigorous than original prosecution. In the case of the Durham patent, the third party requester characterized the patented design as “identical” to the prior art or at least “within the zone of obviousness.” Interestingly, the third party requester did not attempt, on the basis of recent case law, to assert that the features shown in the drawings are functional and therefore not available to support patentability over the prior art.
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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Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
| 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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Early August Developments
| August 11, 2010
1. Special Master Recommends Denying Stay
The Special Master Paul Beck has recommended in Grant Street v. Realauction.com (Civ. No. 2:09-cv-01407-DWA) that Judge Donnetta Ambrose deny Defendant’s motion to stay the case pending completion of reexamination of the patent-in-suit, U.S. Patent No. 7,523,063. Special Master Beck recites the familiar three-part test for determining whether to grant a stay: whether there would be prejudice to the patentee, whether a stay would simplify the issues, and the stage of the litigation.
What makes his recommendation interesting is his focus on the fact that the parties are “direct competitors in a two-supplier market.” Accordingly, the patentee would face a potential loss of market share during the delay created by a stay, with a resulting injury that would be difficult to calculate or prove. Thus, a stay could “cause irreparable injury [to the patentee] that is not remediable by money damages.”
Special Master Beck concluded that the potential prejudice to the patentee trumped all other considerations and recommended denial of the Defendant’s stay motion.
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Reexamination Requests Filed the Week of August 2nd
| August 11, 2010
Noteworthy are requests filed by Samsung against two Fractus patents that are the subject of a law suit between the two companies. Samsung has become a frequent user of the reexamination process.
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.
Some reexamination requests are still filed by paper. Because of the time required for the Patent Office to review such paper requests before posting on PAIR, our report may come three weeks after filing. The information available from the Patent Office may be incomplete in a few cases because not all the reexamination request papers have yet been posted on PAIR. There may also be gaps in the Patent Office docket numbers listed because, for any of various reasons, a reexamination request has been assigned a docket number but is not ready for posting.
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Reexamination Requests Filed the Week of July 26th
| August 4, 2010
An interesting request this week is one filed by Volkswagen against an Acacia patent that is also the subject of two law suits in the Eastern District of Texas.
To update our article of June 23rd where we reported requests by Furuno against five Honeywell patents, we note that Furuno has now obtained a stay of the litigation between the two companies involving those patents – the trial judge was not persuaded by Honeywell’s unusual argument that Furuno’s motion, filed six months after Honeywell’s complaint, was “premature.”
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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PTO Board Reconsiders, Sort Of
| August 2, 2010
Requests for reconsideration at the PTO Board are usually hopeless. The Board rarely reverses itself, but it did so earlier today in Ex parte Fisch, a case involving antiestrogen treatment of men, at least with respect to certain dependent claims. Today’s decision also involved the question of what constitutes “a new ground of rejection” by the Board.
Claim 1 of U.S. Patent No. 6,391,920 recites “A method of treating disorders related to androgen deficiency in men comprising administering a selective antiestrogen to men in need of such treating.” Independent claim 4 was substantially the same, except that it defined the disorder as male menopause and did not require that the antiestrogen be “selective.”
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