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
TiVo’s Famous Time Warp Patent: from Setback to Comeback
| October 7, 2010
Last June we reported that TiVo had sustained a setback when the PTO made final its rejection of claims 31 and 61 of U.S. Patent No. 6,233,389. Claims 31 and 61 are the key patent claims for TiVo’s digital video software for simultaneously storing and playing multimedia data, e.g., for time-shifting television signals. But yesterday, the PTO indicated that it had mailed a Notice of Intent to Issue a Reexamination Certificate. Although not yet posted, the Notice is expected to state that the patentability of claims 31 and 61, without amendment, is confirmed.
TiVo’s present success is the result of an interview with the examiners, followed by two very powerful declarations.
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Samsung Attack on Antenna Patents among Reexamination Requests Filed Week of September 27th
| October 6, 2010
Samsung filed reexamination requests (Inter partes Nos. 4, 10 and 11) last week against three Fractus patents for antennas. Fractus had sued Samsung and quite a number of other wireless companies, including LG, Research in Motion, Kyocera, HTC, Sharp and Sanyo, for infringement of those patents.
Also of interest is a request (Inter partes No. 1) filed by CEJN AB against Westendorf Mfg.’s U.S. Patent No. 7,717,471 for a hydraulic line device. The two companies are already in a reexamination of Westendorf’s U.S. Patent No. 7,021,668 – the examiner’s rejection of the claims of the ‘668 is now before the PTO Board of Appeals.
Finally, Encore filed a request (Inter partes No. 12) against a Southwire patent for electrical cables. Southwire is noted among ITC practitioners for having filed in the late 1970’s the first major Section 337 complaint.
The following inter partes requests were filed:
(1) 95/001,446 (electronically filed) – U.S. Patent No. 7,717,471 owned by Westendorf Manufacturing Co., Inc. and entitled HYDRAULIC LINE ATTACHMENT DEVICE AND METHOD. Filed September 17, 2010 by CEJN, AB.
(2) 95/001,453 (electronically filed) – U.S. Patent No. 7,601,662 owned by BASF Catalysts LLC and entitled COPPER CHA ZEOLITE CATALYSTS. Filed September 28, 2010.
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Surviving Reexamination May Help Patentee Prove Willful Infringement
| October 6, 2010
The CAFC’s 2007 decision In re Seagate contains a passage suggesting that a patentee must successfully move for a preliminary injunction in order to show that the defendant’s infringement, after the filing date of the complaint, was willful. In dicta, the Court stated that a “patentee who does not attempt to stop an accused infringer’s activities in this manner [by seeking a preliminary injunction] should not be allowed to accrue enhanced damages based solely on the infringer’s post-filing conduct”).
Since Seagate numerous trial courts have considered this question of whether the patentee must seek preliminary relief. The consensus appears to be that there is no per se rule – whether post-complaint acts of infringement were willful depends on the facts of the individual case. Of special interest to us is the holding of the trial court in St. Clair Intellectual Prop. Consultants, Inc. v. Palm, Inc., specifically that when a patent has emerged from reexamination without narrowing amendment of the claims, the patentee had thereby established sufficient likelihood that the defendant infringed a valid patent, so that the patentee could assert willful infringement without first seeking a preliminary injunction.
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Who is Responsible for Reexamination Delays?
| October 4, 2010
A number of patent bloggers criticize the PTO for the long pendency of reexamination proceedings. The statutory requirement of “special dispatch” for reexaminations is often uttered in tones oozing with sarcasm. But who is responsible for the length of reexaminations?
Surprisingly (or unsurprisingly), at least part of the blame lies with the large number of papers filed by the private parties. In recent years the docket sheets of some reexaminations have come to resemble the docket sheets of heavily litigated District Court cases. Lawyers in disputes over commercially important patents “leave no stone unturned” in pursuit of their clients’ interests.
An example of such zealous representation is summarized in the PTO Director’s denial of the patentee’s petition for reconsideration in Inter partes Reexamination 95/000,332. The ‘332 reexamination involved U.S. Patent No. 7,228,383 which was the subject of an infringement action between Visto and Research in Motion, that settled in July 2009.
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C2 Communications Patent Claims Rejected
| October 4, 2010
In February we reported that two requests for reexamination had been granted against C2 Communications’ U.S. Patent No. 6,243,373 which claims a method for routing a call between two telephones over a public computer network, a so-called “voice-over-Internet protocol.” The ‘373 patent has been the subject of a number of successful law suits, including cases against AT&T, Verizon and Qwest. The PTO has now rejected all 24 claims of the ‘373 patent.
For the most part, the PTO adopted the rejections proposed in the requests: one set of rejections based on the request was filed by the “patent buster” Electronic Frontier Foundation, and three sets of rejections based on the request filed by PAETEC.
C2 Communications had sued PAETEC for infringement of the ‘373 patent, but the case was dismissed at the end of August, presumably on the basis of a settlement agreement.
