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
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PTO Statistics
DexCom Wins Major Reexamination Victories over Abbott
| January 31, 2011
DexCom’s strategy for dealing with its litigation against Abbott Diabetes Care Inc. through reexamination has taken a major step forward – in separate opinions (here & here) the PTO Board of Appeals affirmed the final rejection of two Abbott patents, U.S. Patent Nos. 6,175,752 and 6,565,509 claiming an assembly for attachment to the skin of a patient and for sensing and reporting levels of specific substances in the patient, such as glucose levels.
In 2005, Abbott sued DexCom for infringing the ‘752 and ‘509 patents and two other patents, U.S. Patent Nos. 6,284,478 and 6,329,161, claiming subcutaneous glucose electrodes. Abbott subsequently sued DexCom for infringing three additional patents, U.S. Patent Nos. 5,899,855, 6,134,461 and 6,990,366 for related microprocessor video and electrochemical analyte monitoring equipment. DexCom replied by filing reexamination requests against each of Abbott’s seven patents, and each request was granted. The trial judge merged the two infringement cases and then stayed the litigation pending completion of all the reexaminations.
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Judge Ward Refuses to Stay Permanent Injunction Despite Pending Reexaminations
| January 28, 2011
On Monday, Judge John Ward of the Eastern District of Texas rejected defendants’ argument in SynQor v. Artesyn, 2011 U.S. Dist. LEXIS 6439 that a permanent injunction against future infringement should be stayed because of pending reexaminations of the patents-in-suit.
Judge Ward had issued the injunction after a jury found that defendants had infringed each of the patents. A series of motions for judgment as a matter of law were pending. Defendants argued that developments in copending reexamination proceedings justified staying the injunction: the PTO had found a substantial new question of patentability for each of the claims asserted at trial; six of the ten asserted claims had received non-final rejections; none of the asserted claims were found to be patentable; and the claims of one of the patents were found to be entitled to priority only as of the patent’s actual filing date.
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Patentee’s Recent Remarks in Reexamination do not Affect Claim Construction
| January 28, 2011
It is commonly held that a patentee’s remarks made during reexamination, like applicant’s remarks made during original prosecution, are relevant to a court’s construction of the claims. There are exceptions, however, such as where the patentee’s remarks are not directly related to pending rejections. (See post of October 28, 2010). Thus, a patentee’s remarks in reexamination, that do not appear to be necessitated by the examiner’s rejections, are suspect as being self-serving.
Another exception to the general rule occurred this Monday in Mondis Technology, Ltd. v. Hon Hai Precision Ind., 2011 U.S. Dist. LEXIS 7140, where the patentee supported its interpretation of several claim terms by citing its own remarks in a pending reexamination proceeding.
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RIM Attack on MobileMedia Image Data Compression Patent among Reexamination Requests Filed Week of January 17, 2011
| January 27, 2011
Late last year, MobileMedia Ideas filed law suits against RIM and Hyundai asserting infringement of its U.S. Patent No. 7,349,012 for an apparatus for compressing image data. RIM has now requested reexamination of the ‘012 patent (ex parte Request No. (18)), and may now file a motion to stay its case with MobileMedia.
Another reexamination request of obvious commercial significance was filed by Boston Scientific against Cordis regarding U.S. Patent No. 5,922,021 for intravascular stents. (ex parte Request No. (2)). The parties are currently in litigation regarding the ‘021 patent. Requests were also filed against patents owned by Ronald Katz (ex parte Request No. (1)) and David Breed (ex parte Request Nos. 13 & 14)).
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PTO Gives Advice on Reexamination Petitions and Cautions the Bar
| January 24, 2011
The PTO has become something of a punching bag among patent practitioners in recent years for the length of time it requires to complete the typical reexamination, especially the typical inter partes reexamination. Long reexamination proceedings, however, are in part caused by the unduly aggressive petition practice of some patentees and requestors. The PTO, through a recent presentation by Senior Legal Adviser Kenneth Schor, has now issued specific guidelines of what it regards as legitimate petitions and illegitimate petitions – this distinction being backed by the possibility of the PTO’s referring lawyers who file the latter to the Office of Enrollment and Discipline. The guidelines need to be studied carefully since much of the advice contained therein will not be intuitive for many practitioners.
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再審査でのクレーム補正に起因する損害賠償の免責
| January 24, 2011
再審査で特許権者が直面する大きな問題は、先行技術を克服するためにクレームを補正する必要が生じるかも知れないが、その反面そのようなクレーム範囲の変更によって、再審査以前の期間すべてについて損害回復の機会を失う可能性があることである。たとえイ号製品が元の特許クレームと補正後のクレームの双方の範囲内であっても、侵害者は「中用実施件（intervening right）」を有する。また時として、クレーム補正から再審査終了まで時間が経過する間に、侵害者に補正クレームを回避するデザイン変更の時間を許し、あるいは市場が別の技術の方向へ動き出すこともあるであろう。
先週、特許庁再審査で必要とされることと、後日訴訟で生じる不都合な結果の間のテンションが明白となった。
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The Doors of the U.S. International Trade Commission Are Open to non-U.S. Plaintiffs: Standing and the ITC’s Domestic Industry Requirement
| January 19, 2011
ITC practitioner Merritt Blakeslee has written the following article on the “domestic industry requirement” that a patent owner must satisfy to successfully pursue an infringement case at the U.S. International Trade Commission. This is not our normal fare of reexamination, reissue and interference matters. Still, the issue addressed – standing to sue at the ITC – is of such obvious importance to patent holders both foreign and US that we post it today.
Companies whose U.S. intellectual property rights are being infringed by imported products are seeking relief at the U.S. International Trade Commission in ever-greater numbers. Section 337 cases filed at the ITC, so-called because they are authorized by Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337), have doubled since 2005 and more than tripled since 2000. Indeed, the ITC, which is the only specialized trial level patent adjudication forum in the United States, now conducts more full patent adjudications on an annual basis than any federal district court in the nation. [1] In 2008, one out every seven patent infringement cases that went to trial in the United States was tried at the ITC.
The reasons for the ITC’s popularity are self-evident, at least to those familiar with the forum. The ITC offers numerous, significant advantages to a plaintiff (called a “complainant” at the ITC): speedy adjudication, relaxed rules on personal jurisdiction and service of process, no opportunity for a defendant (called a “respondent”) to seek a change of venue, short discovery deadlines, no rule-based impediments to taking discovery abroad, no counterclaims, [2] administrative law judges who are specialists in intellectual property law, and broad, vigorous injunctive relief that is enforced by U.S. Customs and Border Protection and the ITC. Although the ITC cannot award monetary damages, such relief may be, and routinely is, sought by the complainant in a parallel federal district court action.
Section 337 was originally conceived as a piece of highly protectionist legislation; its framers intended that its powerful remedies would be available only to U.S.-based manufacturing firms. Over time, however, the so-called “domestic industry requirement” has been relaxed to such an extent that today non-U.S. firms holding U.S. intellectual property rights routinely bring suit at the ITC. In both 2009 and 2010, in fully one third of the Section 337 investigations instituted by the ITC, a least one of the complainants, usually the parent, was a non-U.S. company. The present article discusses the rules under which a non-U.S. rights holder may gain access to the ITC and its truly remarkable mechanisms for the enforcement of U.S. intellectual property rights.
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PTO Director Initiates Reexamination against Gift Tax Patent in Week of January 10, 2011
| January 19, 2011
In a very unusual step, the Director of the PTO has initiated a reexamination of U.S. Patent No. 6,567,790 claiming a method of estate planning (ex parte Request No. (17)). In its reexamination order, the PTO explained that Director initiates reexamination when it appears “that an examining procedure has not been followed which has resulted in the issuance of a claim in a patent that is prima facie unpatentable, and there is a compelling reason to order reexamination at the Director’s initiative.”
In this instance, the original examiner’s failure to consider a specific article “has created an extraordinary situation” requiring reexamination. According to the reexamination order, the article was not considered or discussed in the original prosecution, even though it disclosed the claimed feature noted by the original examiner as the reason for allowance. Whether such methods related to legal and tax matters should be eligible for patent protection has been hotly disputed.
Whirlpool requested reexamination of an LG refrigerator patent (inter partes Request No. (2)). The two companies have been in litigation regarding refrigerator patents in the past. A request was filed against a Nikon patent, but it is not yet clear who filed it (inter partes Request No. (3)).
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Claim Amendments in Reexamination Eliminate Patentee’s Right to Past Damages
| January 18, 2011
A major challenge facing patentees in reexamination is the dilemma that they may need to amend a claim to distinguish it over the cited prior art, and yet such a change in the scope of the claim eliminates the possibility of the patentee’s recovering damages for the entire period preceding conclusion of the reexamination. An infringer is entitled to such an “intervening right” even where the accused product falls within the scope of both the originally issued claim and the amended claim. In some cases, the length of time between the claim amendment and the end of the reexamination affords the patentee ample time in which to design around the amended claim, or perhaps the market simply moves on to a different technology.
This tension between what needs to be done at the PTO and the adverse consequences in a later court case was clearly in evidence last week.
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Acushnet Breached Agreement by Requesting Reexamination, Judge Rules
| January 17, 2011
In May we reported the patent dispute between golf ball-makers Callaway and Acushnet – Callaway accused Acushnet of selling golf balls that infringed four Callaway patents, and Acushnet requested inter partes reexamination of each of Callaway’s patents. A jury found all four patents to be invalid over the prior art, and the reexamination examiner rejected the claims of all four patents. The jury’s verdict for Acushnet is now on appeal to the CAFC, and the examiner’s rejections are before the PTO Board where oral argument is scheduled for January 19th. What interested us in the case was the trial judge and the examiner had construed the claims differently.
The case took a dramatic turn on Thursday when Judge Sue Robinson of Delaware ruled that Acushnet had breached a contract with Callaway by filing its reexamination requests. In 1996 the parties had entered into an agreement to end an earlier dispute regarding the patents. The agreement included a dispute resolution clause stating that “either party may initiate legal proceedings but only in the United States District Court for the District of Delaware, and no other.” The agreement also provided that the procedures specified for dispute resolution “shall be the sole and exclusive procedure for resolution of such disputes.”
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