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
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PTO Refuses Microsoft Request for 2nd Reexamination of i4i Patent, but Supreme Court Grants Cert on Clear & Convincing Standard
| November 29, 2010
At the end of August, after the CAFC had affirmed a $290 million verdict for infringement of i4i’s U.S. Patent No. 5,787,449, and after the PTO had confirmed the validity of the ‘449 claims in reexamination, Microsoft requested that the Supreme Court review the verdict to determine whether a judgment of patent invalidity requires proof by “clear and convincing evidence.” This morning the Supreme Court granted Microsoft’s petition.
Of greater interest to this Blog, however, Microsoft also requested that the PTO conduct a second reexamination of those claims. The PTO, however, has now refused to grant any reexamination of the ‘449 claims.
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Judge Lifts Stay of Case against Facebook
| November 29, 2010
There is now a substantial body of case law on the issue of whether a court should stay a case pending completion of reexamination, but there is much less law on when a stay should be lifted. Last week Judge John R. Padova of the Eastern District of Pennsylvania, in a very thoughtful decision in Cross Atlantic Capital Partners v. Facebook, 2010 U.S. Dist. LEXIS 124120, chose the date the examiner files an answering brief on appeal to the PTO Board as a suitable moment to lift a reexamination stay.
Cross Atlantic sued Facebook for patent infringement in 2008. Facebook replied by requesting inter partes reexamination of the patent, and Judge Padova shortly thereafter stayed the law suit pending completion of the reexamination proceeding. The PTO initially rejected the claims over the prior art cited by Facebook, but later changed her mind and confirmed the patentability of most of the original claims and of the remaining claims after amendment. Cross Atlantic then moved to the lift the stay, but Judge Padova said no, finding that “each party [still] had the opportunity to submit comments, which the examiner was obligated to consider,” and that further reexamination “could result in additional complexities.” The PTO issued a Right of Appeal Notice (RAN), and Facebook filed its Appeal Brief with the Board.
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Apple Files Nine Reexamination Requests
| November 23, 2010
Apple has been especially active lately in defending against charges of patent infringement by filing requests for reexamination. In response to two separate infringement suits in Texas, it filed requests against two Mirror Works patents and three Affinity Labs patents, and for an ITC investigation, it filed requests against four S3 Graphics patents (See Inter partes Request Nos. (1) to (3) & (6) to (7), and Ex parte Request Nos. (16) to (19)).
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Using Reexamination to Turn up the Heat on the Patentee
| November 22, 2010
Reexamination is often touted as part of a strategy for an accused infringer to reduce the intensity and risk of litigation, and rightfully so. For instance, a company sued for infringement in the patent-friendly Eastern District of Texas might consider seeking transfer to a more convenient forum. It might then request reexamination, followed by a motion to stay the court case pending completion of the reexamination. If successful, this strategy shifts the action from the court to the less expensive, more defendant-friendly Central Reexamination Unit at the PTO.
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Reexamination Files Admitted for Issues of Willfulness, Estoppel & Inequitable Conduct, but not Validity
| November 18, 2010
Last week, Tesco won its trial in Texas against Weatherford Int’l and several tool companies with a jury verdict that Defendants had infringed at least some valid claims of Tesco’s two patents – U.S. Patent Nos. 7,140,443 & 7,377,324 – related to drilling rig pipes. What interests us, however, is Judge Keith Ellison’s pre-trial order granting in-part/denying in-part Defendants’ motion to strike “as summary judgment evidence” the PTO files for the reexamination of those two patents.
Prior to consideration of a series of summary judgment motions, Judge Ellison found that “the examiner’s rejections and confirmations of claims in the reexamination proceedings are inadmissible for purposes of proving invalidity of patents at the summary judgment stage.” He explained that PTO examiners follow standards different from those applied by the courts because the statutory presumption of validity and the requirement of clear and convincing evidence are not followed in reexamination. Accordingly, the examiner’s conclusions regarding validity “have no probative value.” Judge Ellison added that even if that they had some probative value, that value would be outweighed by the “serious risk that a jury would view the examiners as expert and authoritative.”
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Patentee’s Litigation Counsel Allowed to Participate in Reexamination, but with Limitations
| November 17, 2010
The recent trend among the trial courts is to draft protective orders to permit the patentee’s litigation counsel to participate in any reexamination involving the patent-in-suit. Magistrate Judge Edward Chen of the Northern District of California continued that practice this past Friday in Shared Memory Graphics v. Apple et al., 3-10-cv-02475 VRW-EMC.
The parties agreed that the protective order should contain a “prosecution bar” preventing litigation counsel for the patentee Shared Memory from participating in the prosecution of new applications related to the patents-in-suit. The parties disagreed, however, on whether Shared Memory’s litigation counsel, who had access to Defendants’ confidential information pursuant to the protective order, would be barred from participating in any reexamination proceedings regarding those patents.
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Samsung Attack on Two Mobile Phone Antenna Patents Owned by Fractus among the Reexamination Requests Filed the Week of November 8th
| November 17, 2010
Last year Fractus S.A of Spain sued Samsung and a host of other mobile telephone makers in the Eastern District of Texas for infringing nine patents related to internal antennas for mobile telephones. Samsung has now filed reexamination requests against two of those Fractus patents (Inter partes Request Nos. (1) & (2) below). Requests for reexamination have now been filed against all nine Fractus patents-in-suit.
Also of special interest are reexamination requests filed by TiVo against two EchoStar patents for TV programming (Ex parte Request Nos. (3) & (5) below).
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TiVo Files New Requests to Extend Reexamination of EchoStar Patents
| November 12, 2010
TiVo is now testing in EchoStar v. TiVo, (E.D. Tex., 5:05-cv-00081) the limit to which an accused infringer may stay litigation pending completion of the reexamination process.
EchoStar sued TiVo in 2005 for infringement of U.S. Patent Nos. 5,774,186 and 6,208,804 related to direct access TV technology. TiVo replied by requesting reexamination of the patents, and the trial court stayed the litigation pending completion of the reexaminations. After vigorous and prolonged prosecution, the PTO issued Notices of Intent to Issue a Reexamination Certificate (NIRC) for the ‘186 and ‘804 patents, in August and July respectively. It appeared that the patents were on their way out of reexamination, and on October 29th, EchoStar asked the trial judge to lift the stay and resume the litigation.
TiVo, however, moved quickly to keep the patents in reexamination and the litigation in check.
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Intervening Rights Absolve GE of Damages for Activities before Reexamination Certificate Issue Date
| November 11, 2010
Judge Norman K. Moon of the Western District of Virginia has held in University of Virginia Patent Foundation v. General Electric Company, et al., that pursuant to 35 U.S.C. §252, GE has “intervening rights” and cannot be held liable for any infringement of Claim 1 of U.S. Pat. No. 5,245,282 (“282 patent”) prior to issuance of the reexamination certificate.
In other words, GE gets a pass for the near 17-year period between issuance of the original ‘282 patent and its conversion through reexamination to a valid patent.
This pass is typically given when the claims at issue have been amended (more than insubstantially) or added during an ex parte reexamination request. 35 U.S.C. §307 and 35 U.S.C. §252.
However, in this case, the claim at issue (Claim 1) was not amended (or added) during the reexamination proceeding. The only thing that appears to have changed is the scope of Claim 1.
§307(b) governs the effect of a reexamined patent on alleged infringers during the period prior to issuance of the reexamination certificate and triggers §252. Judge Moon decided that this statute applies in this case because Claim 1 was “amended in effect” as a result of the cancellation of Claim 4, which altered the scope of Claim 1.
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Reexamination Requests by Whirlpool against Two LG Refrigerator Patents among those Filed the Week of November 1st
| November 9, 2010
The most commercially significant requests filed last week are likely the ones filed by Whirlpool against two LG refrigerator patents (Inter partes Nos. (4) & (5) below). LG sued Whirlpool for infringement of those patents a little more than a year ago. In early 2008, Whirlpool filed an ITC complaint against LG for several patents covering refrigerators (Inv. No. 337-TA-632), and in February of this year, the Commission issued its final determination finding no violation of Section 337.
Also of interest is a request filed by DexCom against an analyte sensor patent owned by TheraSense (Ex parte No. (9)).
The following inter partes requests were filed:
(1) 95/001,477 (electronically filed) – U.S. Patent No. 7,588,048 having Ying-Che Huang as its first named inventor and entitled AIR PUMP NOZZLE. Filed November 2, 2010 by Jiun-Wei Chang.
(2) 95/001,478 (electronically filed) – U.S. Patent No. 7,062,514 owned by Elbert Harris Living Trust and entitled CONSTRUCTION PROJECT SUBMITTAL MANAGEMENT. Filed November 2, 2010.
(3) 95/001,479 (electronically filed) – U.S. Patent No. 7,316,614 having Michael J. Dietz as its first named inventor and entitled METHOD AND APPARATUS FOR CONDUCTING A SWEEPSTAKES. Filed November 2, 2010 by VS2 Worldwide Communications, Inc. The ‘614 patent is currently the subject of a litigation styled Houchin v. VS2 Worldwide Communications, LLC et al. (M.D.N.C., Case No. 1:08-cv-00368-WO-PTS, filed June 3, 2008).
(4) 95/001,480 (electronically filed) – U.S. Patent No. 7,484,382 owned by LG Electronics Inc. and entitled REFRIGERATOR. Filed November 3, 2010 by Whirlpool Corporation. The ‘382 patent (along with the ‘475 patent – see below) is currently the subject of a litigation styled LG Electronics U.S.A., Inc. et al. v. Whirlpool Corporation et al. (D.N.J., Case No. 2:09-cv-05142-GEB-ES, filed Oct. 7, 2009).
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