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
Alza Overcomes Obviousness Rejection at Board for its Patented Method for Treating Depression
| December 8, 2010
Earlier today, the PTO Board reversed the examiner’s obviousness rejection of the sole claim of Alza’s U.S. Patent No. 6,440,457. The reversal demonstrates the skillful use of declaration evidence to overcome a prima facie case of obviousness.
The ‘457 patent claims a method of orally administering the anti-depressant drug venlafaxine (Effexor®) in the form of “a sustained-release dosage” or “a controlled-release dosage.” Administration occurs “over an extended period of time in a therapeutically responsive dose to produce [an] antidepressant therapy.”
The reexamination examiner rejected the claim as being obvious over a combination of references. First, he relied on certain primary references for the disclosure venlafaxine for use in treating depression. The examiner acknowledged that these references failed to disclose administration of the drug in “a sustained-release dosage form” or “a controlled-release dosage form.” To fill this gap, the examiner cited certain secondary references that disclosed the advantage of controlled drug release and showed that those skilled in the art were familiar with the specifics of controlled and sustained release delivery systems. The examiner concluded that the references would make the ‘457 claimed invention obvious.
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HTC Attacks on Fractus Patents among Reexamination Requests Filed Week of November 29
| December 8, 2010
In previous weeks, Samsung and Kyocera have requested reexamination of the patents that Fractus had accused them and other cell phone makers of infringing. Last week, it was HTC’s turn, as it requested reexamination of five of the nine Fractus patents-in-suit (see Inter partes Request Nos. (3), (4), (5), (6) and (7)). The infringement litigation is Fractus S.A. v. Samsung Electronics Co. et al. in the Eastern District of Texas.
Requests were also filed against four AT&T patents (see Ex parte Request Nos. (13) to (16)) that are the subject of AT&T Intellectual Prop. V. TiVo Inc. in the Northern District of California. Though the identity of the filer is not yet clear from PTO files, it is presumably TiVo, no stranger to reexamination proceedings.
Finally, LG is attacking Whirlpool’s ‘130 patent that LG was found by a Delaware jury to infringe earlier this year (see Ex parte Request No. (20)).
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CRU Denies Apotex Petition Challenging Denial of Second Request for Reexamination of PLAVIX® Patent
| December 3, 2010
The PTO’s refusal last week to grant Microsoft’s second request for reexamination of i4i’s U.S. Patent No. 5,878,449 because no substantial new question of patentability (SNQ) had been raised, reminds us that we need to update our report regarding Bristol-Myers/Sanofi’s U.S. Patent No. 4,847,265.
The ‘265 patent is the subject of an infringement suit between Apotex and Bristol in the Southern District of New York and is of even greater commercial significance than i4i’s ‘449 patent. It covers a chemical isomer clopidogrel bisulfate which is the active agent in the anti-blood clot drug, PLAVIX®. And as we reported in July, the examiner denied a second request filed by Apotex for reexamination of the ‘265 patent, finding no SNQ. Dissatisfied with the result, Apotex petitioned the Central Reexamination Unit (CRU) to reverse the examiner and to hold that Apotex’s request did, in fact, raise an SNQ regarding the patentability of the ‘265 patent.
The CRU has now denied Apotex’s petition. The CRU began its analysis with the definition of an SNQ: “when there is a substantial likelihood that a reasonable examiner would consider the prior art or printed publication important in deciding whether or not the claim is patentable.” Old art may be relied upon if presented “in a new light” as compared with previous examination, as opposed to art presenting “the same question of patentability” as before.
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Two Quick Updates
| December 3, 2010
1. Rambus Files Five Complaints
From time to time, we have reported Rambus’ efforts to enforce its portfolio of semiconductor patents, including the so-called “Barth I” patents that were the subject of an earlier ITC investigation. Rambus’ efforts have often in the face of numerous parallel reexamination proceedings.
Wednesday, Rambus filed five new complaints asserting infringement of a total of 19 patents, including the three Barth I patents: four complaints in the Northern District of California against Media Tek, STMicroelectronics, LSI and Broadcom, and a fifth at the U.S. ITC against those four companies and a long, long list of others. We strongly expect that reexamination will play a role in this conflict.
2. Cellectis Sues Precision BioSciences
At the beginning of November, we described Cellectis’ attempts to enforce four patents against Precision’s “Directed Nuclease Editor” for modifying plant genomes. Those attempts have been stymied so far by a series of reexamination requests filed by Precision.
On Tuesday, Cellectis received a new patent – U.S. Patent No. 7,842,489, entitled “Use of meganucleases for inducing homologous recombination ex vivo and in toto in vertebrate somatic tissues and application thereof” – and the same day filed a complaint against Precision accusing it of infringement of the ‘489 patent.
Fractus Patents Hit with Nine More Reexamination Requests, Among New Requests Filed Last Week
| December 1, 2010
In our post of November 22, 2010, we described Samsung’s strategy for defending against allegations that it and several other cell phone makers infringe nine antenna patents owned by Fractus – specifically by vigorously defending in the eastern District of Texas and requesting reexamination at the PTO against all nine Fractus patents. Now it appears that co-defendant Kyocera has filed its own set of reexamination requests against the “Fractus Nine” (Inter partes Nos. (4) to (11), (13) below). Not all the details of the new requests are publically available because these new requests were paper-filed and because of certain procedural problems. It is quite likely, however, that these requests will be granted and merged with Samsung’s earlier reexaminations.
Also of interest is a request filed by Abbott Diabetes Care Inc. against a DexCom patent for transcutaneous analyte sensors. Abbott and DexCom sparred in reexamination over that technology in the past, for instance regarding U.S. Patent Nos. 6,931, 327 and 7,276,029.
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Short Note on Stays and Lifting Stays
| December 1, 2010
On Monday we reported very favorably on Judge Padova’s decision in Cross Atlantic Capital Partners v. Facebook, 2010 U.S. Dist. LEXIS 124120, to lift a reexamination stay once the examiner files an answering brief on appeal to the PTO Board.
In a slightly different context Judge Claude Milton of the Eastern District of Virginia came to a similar conclusion in 01 Communique Lab. V. Logmein, Inc., et al. 2010 U.S. Dist. LEXIS 125513: he denied the motion of the accused infringer to stay the case pending a reexamination where the examiner’s confirmation of the validity of the claims was now on appeal. Judge Milton explained that “the chances of [the] BPIA reversing the PTO are remote. Moreover, awaiting a final confirmation from the BPAI could take years.”
Thus, at least two District Court judges have come to the conclusion that a stay pending reexamination makes sense, but not a stay pending a Board appeal of a reexamination. Both judges have frankly acknowledged the conflicting factors at play and attempted to balance those factors. Of course, each case raises its own considerations.
