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 Admissible as Evidence to Negate Willfulness
| September 7, 2010
Judge Roslyn Silver ruled last Thursday in Integrated Technology v. Rudolph Technologies that the accused infringer Rudolph could introduce evidence at trial of a reexamination against one of the two patents in dispute.
Integrated sued Rudolph in 2006 for infringement of two patents related to systems for inspecting integrated circuit probe cards, including U.S. Patent No. 6,118,894. In July 2009, Rudolph filed a request for reexamination against the ‘894 patent (90/009,551). The PTO granted reexamination against all 22 claims of the ‘894 patent. Since then, however, the patentability of claims 4-22, several of which are independent claims, has been confirmed. Only claims 1-3 stand rejected.
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Judge Robinson Comments on Reexamination Pendency Periods
| September 7, 2010
Trial court decisions on motions to stay a patent case pending completion of reexamination have become common place and do not normally attract attention. Judge Sue Robinson’s denial of a motion to stay last Thursday in Belden Technologies Inc. v. Superior Essex Communications LP, however, included some noteworthy analysis of the length of reexamination proceedings.
Judge Robinson duly noted the statistic published by the PTO, that inter partes reexamination has an historical average pendency of 31.4 months. But this average is only part of the story; a judge must also consider the time required for an appeal.
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Preliminary Injunction Denied Because of Reexamination Grant
| September 2, 2010
A reexamination request is an obvious way for an accused infringer to attack the validity of a patent during litigation. But reexamination may also have collateral benefits for the accused infringer. For instance, a court’s analysis of a motion for a preliminary injunction may be affected by a reexamination, as was demonstrated this week in Fusilamp, LLC v. Littelfuse, Inc., Case No. 10-20528-CIV-Altonaga, in the Southern District of Florida.
There, the patentee Fusilamp moved in June for a preliminary injunction to stop Littelfuse from selling the products alleged to infringe the patent. Littelfuse opposed the motion, asserting that Fusilamp had failed to show “a substantial likelihood of success on the merits of the underlying claim.” Littelfuse relied, in part, on the fact that the PTO had granted a request for reexamination of the patent.
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Microchip Wins Second Reexamination Victory at Board
| September 2, 2010
Microchip Technology won today its second victory at the PTO Board of Appeals in less than a month.
Microchip’s U.S. Patent No. 6,483,183 claimed an integrated circuit package with an IC chip including a microcontroller having an n-bit data bus and up to n pins electrically coupled to the microcontroller. The examiner had determined that the claimed IC package was obvious over the prior art. Significantly, the examiner found that the “microcomputer” disclosed in the primary reference corresponded to the “microcontroller” recited in the pending claims.
The Board has now reversed the examiner, holding that one skilled in the art would construe “microcontroller” as having all the functions of a complete computer, essentially, a computer-on-a-chip that includes a central processing unit, a memory, and input/output interfaces.
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Applied Materials Loses Four Appeals
| September 2, 2010
On Tuesday the PTO Board affirmed the obviousness rejections of four Applied Materials patents related to chemical-mechanical polishing of substrates.
The four appeals raised quite similar issues. The decisions are significant in that they show the difficulties faced by a patentee in reexamination attempting to overcome a prima facie case of obviousness with a showing of commercial success. As is common with such attempts, the Board found a lack of nexus between the claimed invention and the asserted success.
Reexamination Requests Filed the Week of August 23rd
| September 1, 2010
Traditionally, reexamination requests have been the province of U.S. companies – foreign companies are among the leading filers of patent applications, but they have been reluctant to use reexamination as a means of attacking the patents of others. That has begun to change in recent years, as more and more foreign companies have started to use reexamination. This week, for instance, Taiwan Fulgent Enterprise Co., Ltd. filed requests against two patents of a U.S. competitor.
Also of interest is a request filed by Google against a Xerox patent for “generating queries” that is the subject of a law suit between the companies. We also see requests, likely filed by Ninestar Image, against two Canon patents – the requests were filed less than two months after Canon filed complaints against Ninestar and others, in both the Southern District of New York and the U.S. International Trade Commission, alleging infringement of those patents. On August 18, Judge Robert W. Sweet stayed the District Court case pending final determination of the ITC investigation.
The following inter partes requests were filed:
(1) 95/001,421 (electronically filed) – U.S. Patent No. 7,635,665 having John Raymond Keim as its first named inventor and entitled METHOD AND APPARATUS FOR TREATING STORED CROPS. Filed August 24, 2010 by Aceto Corporation.
(2) 95/001,422 (electronically filed) – U.S. Patent No. 7,618,303 owned by Ganz and entitled SYSTEM AND METHOD FOR TOY ADOPTION MARKETING. Filed August 24, 2010 by Hasbro, Inc.
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When Should a Stay be Lifted?
| September 1, 2010
The reexamination process concludes with the PTO issuing a “Notice of Intent to Issue a Reexamination Certificate” (a NIRC). About three months pass, and then the PTO issues the actual reexamination certificate. If the patent has been involved in a law suit that has been stayed pending completion of the reexamination, the patentee typically waits until receipt of the reexamination certificate (assuming that it has been successful in the reexamination), to apply to the court to lift the stay.
In her recent decision in JAB Distributors, LLC v. London Luxury, LLC, 2010 U.S. Dist. LEXIS 88806 (N.D. Ill. June 29, 2010), Judge Amy J. St. Eve concluded that the patentee need not wait for the certificate to issue; rather, the NIRC date may be the appropriate date to resume the litigation.
There, Judge St. Eve had stayed the case for the reexamination, citing the lack of prejudice to the patentee, likely simplification of the issues, and reduction of litigation burdens. The PTO later issued a NIRC, and the patentee petitioned the court to lift the stay. Judge St. Eve did so, even though the reexamination certificate had not yet issued.
She explained that the original justification for the stay no longer existed. “Because the PTO is unlikely to reconsider its reexamination decision and subsequently simplify the issues or reduce the burden of litigation, staying the case is no longer appropriate.” Judge St. Eve cited the wording of the NIRC that prosecution is “closed” and that a reexamination certificate “will be issued.” Although the PTO retains jurisdiction over the reexamination until the certificate issues, the PTO is unlikely to change its decision regarding the validity of the claims.
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