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 Statistics
Rambus ‘918 Patent Healthy Despite Loss at PTO Board
| January 14, 2011
Despite a suggestion in the blogosphere that Rambus has been “tripped up” in reexamination, its U.S. Patent No. 6,034,918 for a method of operation of a semiconductor device remains commercially strong. Vigorously litigated patents are often tested on several fronts: in multiple District Courts cases, at the U.S. ITC, in reexamination at the PTO, and ultimately at the Federal Circuit. To assess a patent’s strength, its status in each forum must be considered.
On Wednesday, the PTO Board affirmed the reexamination examiner’s rejection of independent claim 18 as being invalid over the prior art. The examiner had already confirmed the validity, however, of the other two claims in reexamination, dependent claims 24 and 33. The reexamination had been requested by Hynix whom Rambus had sued for infringement of the ‘918 patent in the Northern District of California. In that case, Judge Ronald Whyte issued a judgment last March that claims 24 and 33 of the ‘918 patent, along with a number of claims from other Rambus patents, were valid and infringed. Thus, Wednesday’s Board decision, though favorable to Hynix, does not undermine Rambus’ position vis-a-vis Hynix.
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Galderma Wins Important Victory in Fight Against Psoriasis Patent
| January 11, 2011
The PTO has issued a Right of Appeal Notice (RAN) to Leo Pharmaceutical Products in the inter partes reexamination of its U.S. Patent No. 6,753,013. The ‘013 patent claims a composition for “dermal use” comprising a vitamin D analogue, a corticosteroid, and a selected solvent for “once daily” application, as well as methods for treating various skin conditions with that composition. Galderma requested the reexamination in 2006 and has vigorously contested Leo’s assertions of validity.
Leo had tried to overcome several prior art rejections by incorporating the “once daily” limitation from certain dependent claims into the independent claims, and by citing a series of articles and declarations to show that the claimed composition gave unexpectedly superior treatment results. The examiner refused to enter the simple incorporation-type amendments because of the advanced stage of the reexamination, finding that the amendments should have been made earlier and would change the scope of other dependent claims – the amendments would require “more than a cursory review by the examiner, as further consideration is necessary and new issues may arise.” (Perhaps). The examiner was also skeptical of the “once daily” limitation as a patentable distinction over the prior art because the ‘013 specification does not indicate that it “is an essential feature of the claimed invention.”
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Attack on Famous Funai Digital TV Patent, Among Reexamination Requests Filed Week of January 3, 2011
| January 11, 2011
Funai’s U.S. Patent No. 5,329,369 for digital television picture compression has been the subject of three District Court cases and an ITC investigation. In October, the PTO Board of Appeals ruled in a reexamination proceeding that claims 1-18 were invalid over the prior art. Now, a third party has requested reexamination of the remaining ‘369 patent claims 19-29 for a video signal processor (see ex parte Request No. (8)).
Apple requested reexamination of MedioStream’s U.S. Patent No. 7,843,508 (see inter partes Request No. (4)), in response to MedioStream’s infringement action against Apple, Microsoft and others.
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Microsoft Files Petition in i4i Reexamination
| January 7, 2011
Subscribers may be interested in our report on Microsoft’s petition in the reexamination of i4i’s ‘449 patent, which was posted on IPWatchdog Thursday.
Sony Attack on L-3 Communications Patents Among Reexamination Requests Filed Week Of December 27, 2010
| January 5, 2011
The most commercially significant reexamination requests last week may be Sony’s filings against two L-3 Communications patents, following that company’s suit against Sony for infringement (see ex parte Request Nos. (6) & (7)). But standing out among last week’s new requests, at least in the size department, was a 697-page block-buster proposing 25 substantial new questions of patentability, filed by CME Group against a Realtime Data patent claiming data compression systems (see inter partes Request No. (1)). Finally, information became available from the PTO about yet another reexamination request against a Fractus patent, this time filed by HTC.
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Two Items of Interest
| January 5, 2011
1. Smucker Case at the Board
Subscribers may be interested in our report on the surprising outcome at the Board in the Smucker case, which was posted on IPWatchdog this Monday.
2. New Comments on Reexamination Stays
Judge Neil V. Wake made some interesting observations on the factors of “simplification of issues” and “prejudice to the patentee” in his recent decision to stay in Caron v. QuicKutz, Inc., 2010 U.S. Dist. LEXIS 137786.
He had initially denied a motion by the accused infringer to stay the case pending completion of the reexamination of the patent-in-suit, in part, because the PTO proceeding had just begun. Since then, however, the PTO has issued a non-final rejection of all the claims. Judge Wake stated that “the Court presumes that an all-inclusive non-final rejection suggests that the PTO will finally reject at least some claims. Such [a] rejection would simplify the issues in this litigation.”
Regarding the “prejudice” factor, Judge Wake took a little poke at the PTO, commenting that “the PTO’s pledge to reexamine the Caron patent with ‘special dispatch’ is boilerplate drawn from a statutory requirement,” but he then found that “it appears that the PTO has moved more quickly than usual on this reexamination,” undermining “Plaintiffs’ previous estimates of the damage that may accrue during a stay period….” The Judge also ordered the parties to report the actual progress of the reexamination.
Facebook Advances Inequitable Conduct Allegation Through Reexamination Request
| January 3, 2011
A company accused of patent infringement requests reexamination with the obvious goal of invalidating the patent. But requesting reexamination may produce certain collateral benefits, such as establishing the “materiality” of a prior art reference for an inequitable conduct defense. Facebook has demonstrated the possibility of this collateral benefit in the pending case, Tele-Publishing, Inc. v. Facebook, Inc., et al., (Case No. 1:09-cv-11686-DPW (D. Mass.)).
There, Tele-Publishing (TPI) sued Facebook in October 2009 for infringing U.S. Patent No. 6,253,216 entitled “Method and Apparatus for Providing a Personal Page.” The invention claimed is for a method and apparatus for providing a personal page over a computer network, so that users may securely display personal information to other computer network users. In December 2009, Facebook requested reexamination of the ‘216 patent, asserting that it was invalid over an earlier patent to de Hond. The PTO granted reexamination. An initial rejection of all claims issued in April, and a final rejection issued in August.
Facebook now relies upon the results to-date from the reexamination for a motion for summary judgment that the ‘216 patent is unenforceable because of applicants’ inequitable conduct during the original prosecution. To show materiality, Facebook argues that the “reexamination proceedings and the PTO’s conclusions confirm that de Hond would have been important (and therefore material) during the original prosecution.”
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