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- 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)
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- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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再審査証の発効日前の行為に関する賠償責任を免責する中用実施権
| December 29, 2010
バージニアの西地区地方裁判所のNorman K. Moon判事は、University of Virginia Patent Foundation v. General Electric Company, et alのケースで、GEは、米国特許法252条に基づく中用実施権（intervening rights）を有していいるので、再審査証の発行前において米国特許5,245,282 (“282特許”)のクレーム1を侵害しないと判決した。換言すると、GEは、282特許の発行時から再審査で有効な特許になるまでの17年に及ぶ期間について実施権を得たことになる。
一般にこの実施権は、査定系再審査の間に問題の特許クレームが補正され（非実質的な補正では足りない）あるいはクレームが追加された場合に与えられる（米国特許法307条および252条）。しかしながら、本ケースでは、問題のクレーム（クレーム1）は再審査手続きで補正されていないし、クレームが追加もされてもいない。他方、再審査でクレーム1の或る文言を明確にするため、再審査手続きでクレーム4が削除された。これにより唯一変わったのはクレーム1の範囲（解釈）である。
米国特許法307条(b)項は、再審査証の発行前の侵害被疑者に対する再審査特許の効力を規定している。この条項が252条の権利を生じさせる。Moon判事は、クレーム4の削除の結果、クレーム1は事実上補正され（amended in effect as a results of ….）、これによりクレーム1の範囲が変わったので、本ケースに307条が適用されると判断した。
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TiVo Attack on AT&T Network Tracking Patent among the Reexamination Requests Filed the Week of December 20
| December 29, 2010
Earlier this year, AT&T Intellectual Property sued TiVo for infringement of U.S. Patent No. 6,983,478 entitled “METHOD AND SYSTEM FOR TRACKING NETWORK USE.” TiVo, which has enjoyed success in earlier reexaminations, has now requested reexamination of AT&T’s ‘478 patent (see Inter Partes Request No. (4)).
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Defendants’ Allegation of Fraud is one Reason to Deny Motion to Stay Pending Reexamination
| December 27, 2010
As we reported earlier this month, trial judges almost uniformly use the same three-factor test to determine whether to stay a suit for patent infringement pending completion by the PTO of a reexamination of the patent-in-suit. Yet judges differ greatly in how they apply that standard, often emphasizing completely different considerations. In Protective Industries, Inc. v. Ratermann Manufacturing et al., 2010 U.S. Dist. LEXIS 135757 (M.D. Tenn.), the allegation by defendants that the patent had been procured from the PTO “by fraud” seemed to weigh heavily in Judge Aleta Trauger’s decision to deny defendants’ motion to stay pending completion of the reexamination of the patent.
The patent issued in March and the patentee threatened suit in May. Defendants requested inter partes reexamination in July; the PTO found a substantial new question of patentability and concurrently rejected the claims. In November, the patentee sued, and three weeks later defendants moved to stay the case for the reexamination. Defendants answered by alleging, inter alia, that the patent had been obtained by inequitable conduct of the patentee, the inventor and the prosecuting attorney.
Judge Trauger acknowledged that reexamination had been filed in the “early stages” of the case, but concluded that this factor only “facially favors the defendants,” in view of the two other factors. First, Judge Trauger found that the patentee would be unduly prejudiced by a stay because the parties are direct competitors in the relevant market and because the average reexamination pendency of 37.6 months is too long. This delay, the Judge said, was particularly unfair since defendants had been selling the products allegedly covered by the patent claims for three years already. Moreover, the Judge found that “it is simply not fair for the plaintiff and associated individuals to be exposed to an allegation of fraud and not given an opportunity to respond for years.”
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ITC’s Treatment of Pending Reexaminations OK’d by CAFC
| December 22, 2010
In a case of great commercial significance involving the structure of computer chip “packaging,” the CAFC yesterday affirmed the International Trade Commission’s (ITC) determination that products imported by Spansion and other companies infringed two patents owned by Tessera, in violation of § 337. The CAFC also affirmed the ITC’s issuance of a limited exclusion order prohibiting future importation of the infringing products into the United States. As we reported in an earlier post, the case raised interesting issues for reexamination practitioners because, at the time of the exclusion order, the claims of both patents had been rejected in pending reexaminations. Should the ITC exclude imported products based on patent claims rejection as unpatentable? Would such exclusion contradict the ITC’s statutory obligation to consider the public interest in its determination of suitable remedies for violation of § 337?
In its decision ordering exclusion of the infringing imports, the ITC concluded that rejections in pending reexaminations would not affect its analysis of a suitable remedy: “Such adverse office actions in the reexamination process are fairly routine and are not an indication that the patent claims are necessarily going to be finally rejected.” The ITC acknowledged that the claims of one of Tessera’s patents had received a final rejection and that prosecution had been closed, but still the ITC found that “it would be premature to give undue weight to reexamination proceedings until or unless Tessera has exhausted its appeals.”
On appeal, the CAFC affirmed each of the ITC’s conclusions regarding the patent issues of validity and infringement. Importantly for us, it also found that the ITC had “a sufficient basis” for excluding the infringing imports. The CAFC explained that the eBay standard for injunctions, applicable to District Courts, does not apply to the ITC – unlike District Courts, the ITC is required by statute to issue an “injunctive-type” remedy. And although the statute requires that the ITC consider “the public interest,” the statute also specifically defines that public interest.
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Verizon Attack on EMSAT Cell Phone System Patent among Reexamination Requests Filed Week of December 13, 2010
| December 21, 2010
The most interesting reexamination request last week was filed by Verizon Wireless against EMSAT’s U.S. Patent No. 7,289,763 for a cellular telephone system (see Inter partes Request No. (6)). EMSAT had sued nine companies for infringement of the ‘763 patent, including Verizon.
But perhaps most noteworthy was the fact that Apple did not file any requests.
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Court Finds Claim Construction in Reexamination at PTO to be “Merely One Factor” in Determining Claim Meaning
| December 20, 2010
Judge Ralph Erickson of the District Court of North Dakota was presented in Alien Technology Corp. vs. Intermec, Inc. with an unusual request: the patentee asked him to reconsider a two-year old summary judgment of non-infringement that had been based on a narrow claim construction, in light of a recent PTO reexamination certificate affirming the patentability of most of the claims, based on a broad claim construction. The patentee characterized the reexamination certificate as “new evidence” and asked the Judge to “’harmonize’ the Court’s rulings with the USPTO’s findings.”
The patentee’s motion was immensely complicated by the fact that Judge Erickson and the accused infringer had not been previously informed of the pending reexamination. The Judge therefore denied the motion, finding that the reexamination was not new evidence, and that the patentee had “demonstrated a lack of diligence and candor” by “covertly participating in the reexamination process before the USPTO…” The Judge then listed the occasions over the course of the case when the patentee might have informed the Court of the reexamination, but failed to do so.
Even without this complication, however, Judge Erickson indicated that he would not have granted the motion. The Judge explained his understanding that whereas the PTO is required to give claims their broadest reasonable construction, courts must give claims their “correct construction.” The PTO’s “construction is merely one factor to be considered in the court’s determination.” The Judge concluded, with a hint of tartness, that “’findings’ of the USPTO do not constitute persuasive and binding evidence of the meaning of the disputed terms warranting amendment of reversal of the” earlier claim construction and summary judgment orders.
Hindsight is 20-20, and it is difficult for those not involved in a particular case to appreciate fully its unique complexities. Still, it might have been better for the patentee to have brought the reexamination to the Court’s attention sooner. Also, it is a little surprising in this Age of PAIR that the accused infringer was unaware of the reexamination.
Judge Refuses to Stay Infringement Case against Twitter
| December 15, 2010
Court rulings on motions to stay patent litigation pending completion of a reexamination proceeding are at least a weekly occurrence. And almost without exception, the trial judge applies the familiar three-part test for stay motions: whether the reexamination is likely to simplify the issues for trial, the stage of the litigation, and whether the stay would unduly prejudice the patentee. Still, it is interesting to see how an individual trial judge applies his or her own subjective impressions to these three considerations.
The subjectivity of judges’ analysis of stay motions was demonstrated by Judge Leonard P. Stark’s denial of a stay in Cooper Notification v. Twitter et al., Case No. 09-865-LPS, December 13, 2010 (D. Del.). Cooper had sued Twitter and several others in January for infringement of a single patent. In August the defendants requested inter partes reexamination of the patent, and in November the PTO granted reexamination and simultaneously rejected all claims.
With respect to whether reexamination would simplify issues for trial, Judge Stark noted that defendants had raised a number of issues – both as affirmative defenses and as counter-claims for declaratory judgment – that would not be addressed in the reexamination, specifically patent validity under §§ 101 & 112, patent enforceability, and declarations of non-infringement and unenforceability. Also, in an unusual step, the patentee Cooper stated that it would not amend its claims in reexamination, thereby eliminating the possibility of the court needing to construe the claims a second time in light of any reexamination amendments.
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Apple Requests for Reexamination of MONKEYMedia Patents among those Filed Week of December 6, 2010
| December 14, 2010
When sued for patent infringement, Apple’s strategy this year has been to request reexamination of the patents-in-suit as soon as possible. It repeated that strategy this week by filing inter partes requests against two MONKEYMedia patents (see Inter partes Request Nos. (3) & (5))..
DNA2.0, Inc. has requested reexamination of U.S. Patent No. 5,786,464 owned by NIH for “Over-expression of Mammalian and Viral Proteins” (see Ex parte Request No. (12)). An ironic aspect of this conflict is that DNA2.0 is a past recipient of grant money from NIH.
And finally, HTC appears to have completed its assault on Fractus by requesting reexamination of three more Fractus patents (see Inter partes Request Nos. (8) to (10)).
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Secondary Considerations a Tough Sell in Reexamination
| December 13, 2010
Traversing an obviousness rejection by arguing “secondary considerations” – such as the commercial success of the claimed invention – has always been difficult for patentees in reexamination, especially with the requirement of a nexus between the secondary considerations and the claimed invention. Just how difficult that argument can be was demonstrated today in the PTO Board’s analysis of the reexamination examiner’s obviousness rejection in Ex parte Smiths Interconnect Components, Inc.
The claimed invention was a “temperature variable microwave attenuator,” featuring resistors with different temperature coefficients. The examiner rejected the claims as being obvious over a series of prior art combinations. The patentee challenged the rejection with a variety of arguments, most notably an assertion that the claimed invention was nonobvious because it had enjoyed a remarkable commercial success: two declarations showed that 10,000,000 of the claimed attenuators had been sold since 1994 at strong profit margins; that the patentee once possessed 100% of the world market for commercial surface mountable temperature variable attenuators; that the patentee still retains substantial portions of that market; and that only the patentee’s attenuators have been certified for US and NATO military and space applications.
The patentee coupled these facts with citations to Federal Circuit precedent in which proof of commercial success of an embodiment of the claimed invention was held to constitute a prima facie case of nexus between success in the market and the claimed invention.
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Judge Attempts to “Synchronize” Trial Schedule and Reexamination Proceeding
| December 9, 2010
Trial judges face a difficult task when asked to balance the competing interests of a patentee entitled to speedy resolution of its infringement claim and the obvious desirability of waiting for the PTO to complete its reexamination of the validity of the patent. Judge Greg Kays of the Western District of Missouri may have hit on an approach that could appeal to other judges. Essentially, he plans to lift his order that had stayed the case pending completion of a reexamination, but also to set a trial date that is likely to occur after completion of the reexamination.
Earlier in Kinedyne Corp. v. Multiprens USA, Inc., Judge Kays stayed the case pending completion of a reexamination requested by the accused infringer “to conserve judicial resources while allowing the PTO to conduct reexamination.” The reexamination has reached something of a milestone: the examiner has confirmed the patentability of the claims of one patent and the dependent claims of a second patent, but maintained a rejection of the independent claim of that second patent. According to the Judge, this posture of the reexamination does not constitute a “material change of circumstances,” but he “does not intend to leave the stay in place indefinitely.”
Judge Kays has therefore ordered the parties to report on the status of the reexamination early next month. If there is “no material change in the status of the reexamination necessitating extension of the stay, the Court will lift the stay sua sponte…” The parties would then be required to propose a trial date “at a time when there is a substantial probability that the PTO will have completed its reexamination.” This synchronization of the litigation and reexamination schedules would certainly conserve judicial resources, but may be less helpful to the private parties.
