2010 November : US PTO Litigation Alert™

Examiner Applies Recapture Rule too Broadly

| November 9, 2010

The PTO Board ruled last week that the examiner in Ex parte James had misapplied the Recapture Rule when he rejected amended reissue claims under 35 U.S.C. § 251 for improper recapture.

The Recapture Rule prohibits a patentee from recapturing through a reissue application subject matter that it had surrendered by amendment or by argument during the prosecution of the original application to overcome prior art.  It is based on the right of the public to rely upon such amendments or arguments as a permanent surrender of that subject matter.  The question of whether “surrender” has occurred is considered from the perspective of “an ordinary observer viewing the prosecution history.”

The patent for which reissue was sought claimed a method for cutting and sealing two layers.  During the original prosecution, applicants distinguished their claimed method from the prior art because of the location of a heater in an air space between V-belts.
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Category: PTO Board, Reexamination Requests

Request for Reexamination of GE’s ‘985 Wind Turbine Patent among the Requests Filed the Week of October 25th

| November 3, 2010

Last January the U.S. International Trade Commission issued a Final Determination that Mitsubishi Heavy’s importation of wind turbines did not violate Section 337, as had been alleged by General Electric.  Part of the ITC’s Determination was a holding that there was no “domestic industry” with respect to GE’s U.S. Patent No. 6,921,985 because GE’s own turbines did not practice any claim of that patent.  A request for reexamination (Inter partes Request No. 6 below) has now been filed against GE’s ‘985 patent.  The ITC also found that GE’s two other patents – U.S. Patent Nos. 5,083,039 & 7,321,221 – in the investigation were not infringed by Mitsubishi’s turbines.

Also of special interest are requests for reexamination (Inter partes Request Nos. 2 & 3 below) filed by Hewlett-Packard and IBM against two ACQIS patents.  ACQIS has sued HP and IBM, among others, in the Eastern District of Texas for infringement of those patents.  We also note requests were filed (Inter partes Request Nos. 4 & 5 below) against a Netlist patent.  Netlist has sued Google for infringement of that patent.

The following inter partes requests were filed:

(1)   95/001,474 (electronically filed) – U.S. Patent No. 6,856,540 owned by Kilopass Technology, Inc. and entitled HIGH DENSITY SEMICONDUCTOR MEMORY CELL AND MEMORY ARRAY USING A SINGLE TRANSISTOR.  Filed October 25, 2010 by Sidense Corp.  The ‘540 patent is currently the subject of a litigation styled Kilopass Technology, Inc. v. Sidense Corp. (N.D. Cal., Case No. 3:10-cv-02066-SI, filed May 14, 2010).

(2)   95/001,475 (electronically filed) – U.S. Patent No. 7,376,779 owned by ACQIS LLC and entitled MULTIPLE MODULE COMPUTER SYSTEM AND METHOD.  Filed October 27, 2010 by Hewlett-Packard Company and International Business Machines Corporation.  The ‘779 patent (along with the ‘416 patent – see below) is currently the subject of a litigation styled ACQIS LLC v. Appro International, Inc. et al. (E.D. Tex., Case No. 6:09-cv-00148-LED, filed Apr. 2, 2009).

(3)   95/001,476 (electronically filed) – U.S. Patent No. 7,363,416 owned by ACQIS LLC and entitled COMPUTER SYSTEM UTILIZING MULTIPLE COMPUTER MODULES WITH PASSWORD PROTECTION.  Filed October 27, 2010 by Hewlett-Packard Company and International Business Machines Corporation.  The ‘416 patent (along with the ‘779 patent – see above) is currently the subject of a litigation styled ACQIS LLC v. Appro International, Inc. et al. (E.D. Tex., Case No. 6:09-cv-00148-LED, filed Apr. 2, 2009).
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Category: Recent Requests, Reexamination Requests

Steve Jobs Patent Stands out in Apple Infringement Case against Motorola

| November 3, 2010

Apple filed two complaints (here and here) in the Western District of Wisconsin last Friday, accusing Motorola of infringing a series of Apple patents.  The accused products are imported “mobile devices and related software,” specifically, “the Droid, Droid 2, Droid X, Cliq, Cliq XT, BackFlip, Devour A555, Devour i1, and Charm.”

One patent in particular stands out – U.S. Patent No. 7,479,949, entitled “Touch Screen Device, Method, and Graphical User Interface for Determining Commands by Applying Heuristics” – because it has already survived a reexamination request.  In April EMG Technology filed a substantial reexamination request, asserting a long series of potential prior art rejections against each of the ‘949 claims.  In June the PTO refused to grant reexamination, finding that the request had failed to raise even a single substantial new question (SNQ) of patentability with respect to the ‘949 claims.  EMG has not petitioned the PTO to reconsider.  The PTO’s refusal to grant reexamination will certainly enhance the validity of the ‘949 claims.

Apple may also enjoy a certain psychological victory with respect to its other patents-in-suit – presumably Apple’s opponents selected for reexamination the patent most vulnerable to attack.  Accordingly, the failure to obtain a grant of reexamination against the ‘949 patent may make Apple’s other patents seem more formidable.

The ‘949 patent also stands out because it names 25 inventors, among them Steve Jobs.

Earlier this year, Apple sued Nokia and HTC for infringement of a number of patents, including the ‘949 patent.

Category: Reexamination Requests

Precision BioSciences Wins Victory over Cellectis

| November 1, 2010

The PTO has issued a Right of Appeal Notice (RAN) in the inter partes reexamination of Cellectis’ U.S. Patent No. 7,309,605 entitled “Nucleotide Sequence Encoding the Enzyme I-SceI and the Uses Thereof.”  The ‘605 patent now joins three other related Celectis patents – U.S. Patent Nos. 6,610,545, 6,833,252 and 7,214,536 – that have been rejected in reexamination and are now on appeal before the PTO Board. The reexamination proceedings were requested by Precision BioSciences.

Cellectis had filed a Complaint against Precision in the Eastern District of North Carolina in March 2008 for infringement of the ‘605 and ‘545 patents.  Precision’s accused product is called a “Directed Nuclease Editor” (DNE). According to Cellectis, Precision’s DNE makes Group I intron coded endonucleases used to target site-specific DNA breaks and modify the genome of plants.  The ‘605 and ‘545 patents are owned by Institut Pasteur and Universitie Pierre et Marie Currie; Cellectis is the exclusive licensee.
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Category: PTO Board, Reexamination Requests, Stays/District Courts

Developments at the End of October

| November 1, 2010

1.  Judge Refuses to Consider “Gamesmanship” Remarks in Claim Construction

Last week we reported the Dura Global case in which Judge Cox defined the standard by which a court may determine whether to construe claim terms in light of a patentee’s remarks in a reexamination proceeding.  The patentee’s remarks in the reexamination of the patent in Beneficial v. Blockdot et al., 2:07-cv-263-TJW-CE, clearly failed that standard.

There, the patentee responded to a rejection in the reexamination of the patent-in-suit, stating that there was no disclosure in the cited reference of “‘unrequested’ advertising (e.g., advertising that just appears and is not in response to any immediately previous user input, e.g. a pop-up ad).” A week later, Judge Ward construed the claims.  The accused infringer then requested reconsideration of that claim construction, and Judge Ward changed his construction of “unrequested” to mean “not in response to any immediate previous input by the user,”  relying upon the patentee’s statements in reexamination.
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Category: Reexamination Requests, Stays/District Courts
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