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
Challenges to Two More Intellectual Venture Patents, among the Reexamination Requests Filed Week of February 21, 2011
| February 28, 2011
Last week Xilinx requested reexamination of one of the five patents that Intellectual Ventures has accused Xilinx and three other companies of infringing (here). The same lawyer who filed that request for Xilinx has now requested reexamination of a second Intellectual Ventures patent – U.S. Patent No. 5,687,325 – from the same case, as well of a third Intellectual Ventures patent not in the case, U.S. Patent No. 6,252,527 (see ex parte Request Nos. (8) & (9)). Since the requests are for ex parte, not inter partes, reexamination, the identity of the real party in interest need not be disclosed.
In August EVM Systems sued Cordis, Boston Scientific and Abbott for infringement of two patents related to stents having a “slotted memory metal tube,” U.S. Patent Nos. 6,780,175 and 7,037,321. Last week, Cordis requested reexamination of the ‘175 patent and Abbott requested reexamination of the ‘321 patent (see inter partes reexamination Request No. (5) and ex parte Request No. (15)). Although inter partes reexamination was possible for both patents, lawyers for Abbott chose ex parte reexamination. The choice between ex parte and inter partes reexamination is sometimes complex and one addressed in a recent post (here).
The leader, however, in the number of requests filed last week was Airbus Americas that sought reexamination of four Firepass patents related to fire suppression in certain structures, for instance in computers. Firepass has accused Airbus of infringing those patents.
Edwards Lifesciences’ Litigation Team may not Participate in Reexamination
| February 25, 2011
Earlier this month we reported (here) a trend among trial courts, allowing patentees’ litigation counsel to participate in parallel reexamination proceedings. Judge Sleet of Delaware, however, bucked that trend in his order Wednesday in Edwards Lifesciences v. CoreValve et al. (Case No. 08-91-GMS) (here), ruling that Edwards’ technical expert and trial attorneys could not assist in the reexamination of the patent-in-suit.
Edwards sued CoreValve and Medtronic CoreValve for infringement of three patents, including U.S. Patent Nos. 5,411,552 and 6,582,462 for implantable cardiac valve prostheses. CoreValve replied by requesting reexamination of the ‘552 and ‘462 patents. Reexamination was granted and prior art rejections are now pending. On February 9, counsel for Edwards wrote to Judge Sleet asking for a ruling on whether its expert witness and trial counsel were permitted, under the protective order, to assist in replying to the pending rejections.
Judge Sleet has now said NO. He explained that such participation “in the reexamination would create a high risk that confidential CoreValve/Medtronic information [obtained under the protective order] would be used or disclosed.” The Judge added that “the risk of the use of confidential information and the harm that the defendants might suffer as a result far outweighs the potential harm to Edwards of enforcing the prosecution bar in the reexamination.” Edwards’ reexamination attorneys would, of course, be permitted access to any “public record relating to this case in its reexamination response.”
Seagate Requests Reexamination of Convolve Data Storage Patent
| February 24, 2011
Success can be fleeting in cases involving parallel District Court and multiple reexamination proceedings. Last July the PTO issued a reexamination certificate confirming the patentability of the claims of Convolve’s U.S. Patent No. 6,314,473. Convolve had sued Seagate and Compaq in New York in 2000, and Dell, Western Digital, and Hitachi in Texas in 2008, for infringement of the ‘473 patent. Seagate replied to the infringement allegations, inter alia, by filing two requests for reexamination, one in 2006 and the other in 2008, both of which resulted in favorable rulings for Convolve.
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Patent Owner Requesting Reexamination may not Appeal to the Board the Examiner’s Grant of Reexamination
| February 23, 2011
The PTO Board’s second decision yesterday in Ex Parte Yasukochi – involving a patentee-requested reexamination of U.S. Patent No. 7,034,083 for an adhesive for a transdermal patch – instructs practitioners on how to challenge an examiner’s decision that a substantial new question of patentability (SNQ) is presented.
Last June, the Board issued its first decision in the Ex parte Yasukochi, concluding, inter alia, that may a patentee may challenge an examiner’s determination that a substantial new question of patentability has been presented, and the consequent grant of reexamination, by petition to the Commissioner, but not by appeal to the Board. Shortly after the first Yasukochi decision, the PTO Director issued a notice (75 Fed. Reg. 36,357 (June 25, 2010)) delegating authority to the Chief Administrative Law Judge “to review issues related to the examiner’s determination that a reference raises [an] SNQ.” The Board subsequently withdrew its first Yasukochi decision and ordered new briefing on whether the Director’s Order affected that decision.
The Board’s second Yasukochi decision yesterday reached essentially the same conclusion as its first: the Director’s notice provides for a challenge to an examiner’s determination of an SNQ. Here, the patentee challenges a particular rejection, not the original determination of an SNQ. The Board explained that “the Notice does not delegate authority to the Board to decide whether a particular initiated reexamination is outside the scope permitted in an ex parte reexamination.” It is only the threshold determination of an SNQ that the Director’s Notice permits to be appealed to the Board.
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Xilinx Attack on Intellectual Ventures Patent, among Reexamination Requests filed Week of February 14, 2011
| February 21, 2011
Intellectual Ventures shook up the patent world in December when it filed three separate infringement suits against a series of large electronics companies. In one of the cases, Intellectual Ventures accused Altera, Microsemi and Lattice Semiconductor of infringing four patents programmable logic devices. On Tuesday of last week, Intellectual Ventures filed an amended complaint to add Xilinx as a defendant. Well, Xilinx is wasting no time, and on Friday it asked the Patent Office to reexamine one of the five patents-in-suit, U.S. Patent No. 6,272,646. Requests for reexamination of the other four patents may come soon (see inter partes Request No. (8)).
The other big news, which we reported in two posts last week, were requests by Google for reexamination of five of the seven Oracle patents-in-suit in the their case in California. (See inter partes Request No. (6) and ex parte Request Nos. (4) to (7)).
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Google Requests Reexamination of Fifth Oracle Patent
| February 18, 2011
As an update to our post on Wednesday, we have learned that Google yesterday requested that the Patent Office conduct an inter partes reexamination of Oracle’s U.S. Patent No. 6,910,205. The ‘205 patent is one of seven patents that Oracle asserts are infringed by Google, Oracle America v. Google (Case No. 3:10-cv-3561-WHA). The Patent Office has three months in which to determine whether to grant reexamination, that is, to determine whether a substantial new question of patentability is raised by the requests. Google is likely to request inter partes reexamination of the remaining two Oracle patents, shortly. The four requests Google filed Tuesday were for ex parte reexamination of the Oracle patents.
Google Takes Oracle’s Android Case to the Patent Office
| February 16, 2011
Yesterday afternoon, Google requested ex parte reexamination of four Oracle America patents – U.S. Patent Nos. 5,966,702, 6,061,520, 6,125,447 & RE 38,104 – related to the “Java platform.”
Oracle America had sued Google in August in the Northern District of California for infringing these patents, as well as three other patents, plus a series of copyrights “in code, documentation, specifications, libraries, and other [components] of the Java platform” (Oracle’s Amended Complaint). According to Oracle America, the patents cover “a bundle of related programs, specifications, reference implementations, and developer tools and resources that allow a user to deploy applications written in Java programming language on servers, desktops, mobile devices, and other devices.” Oracle America asserts that Google infringes the patents and copyrights by distributing “Android (including without limitation the Dalvik VM and the Android software development kit) and promotes its use by manufacturers of products and applications.”
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Preliminary Injunction Softened after Claims are Rejected in Reexamination
| February 15, 2011
The list of possible benefits from reexamination for an accused infringer grew a little longer last week. In Celsis In Vitro v. CellzDirect, (Case No. 1:10-cv-004053), Judge Milton Shadur modified a preliminary injunction to permit defendants, under certain circumstances, to sell products made by their accused methods, in light of the PTO’s rejection of the claims-in-suit in a copending reexamination proceeding.
Celsis sued CellzDirect and Invitrogen in June 2010, for infringement of U.S. Patent No. 7,604,929, and in September Judge Shadur preliminarily enjoined defendants from selling the products made by the accused method during the pendency of the case. On October 8, the patentee Celsis requested ex parte reexamination of the ‘929 patent, and on December 16, the examiner rejected the claims-in-suit over a series of prior art references. The defendants then argued to the court that this rejection justified revision of the preliminary injunction. Judge Shadur agreed and has now revised his earlier order to allow defendants “to fill any outstanding or repeat orders from prior purchasers.” Defendants are also allowed to use their existing inventory, for instance in their own comparison testing.
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Should I Request Ex Parte or Inter Partes Reexamination?
| February 14, 2011
Each quarter, the PTO compiles its reexamination statistics showing the number of ex parte and inter partes reexamination requests filed, the number of cases where the claims are confirmed, amended or canceled, etc. In recent years, the total number of reexamination requests has trended slightly upwards, with inter partes requests accounting for 25 to 35 % of the total. In the last three months of 2010 (here, here), the inter partes request portion of the total was at the upper end of that range.
What interests us, though, is the fact that for those patents where the requestor has the option between ex parte and inter partes reexamination, ex parte reexamination is chosen at least 50% of the time. (Where the patent issues from an application filed before November 29, 1999, the requestor’s only choice is ex parte reexamination (see Cooper v. Dudas, 87 USPQ2d 1705, 1706 (Fed. Cir. 2008)). One might expect that inter partes reexamination, despite its hefty PTO filing fee of $8,800.00, would the overwhelming choice. Why is ex parte reexamination, with essentially no right for the requestor to participate, chosen so often?
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Facebook Challenges to Three “Human Relationships” Patents, among Reexamination Requests Filed Week of February 7, 2011
| February 14, 2011
This being Valentine’s Day, we couldn’t help noticing the requests (see inter partes Request Nos. (1) to (3)) filed last week by Facebook against three patents owned by Mekiki Creates for computer systems for “registering human relationships.” Facebook and Mekiki are currently in a relationship in an infringement suit in the Northern District of California. Also look at inter partes Request No. (6) for a gem cutting apparatus patent.
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