2011 February : US PTO Litigation Alert™

Virginia Patent Foundation’s Motion for Reconsideration Denied – Intervening Rights Still Absolve GE of Damages for Activities before Reexamination Certificate Issue Date

| February 10, 2011

On Tuesday, Judge Moon denied Virginia Patent Foundation’s (“VPF”) Motion for Reconsideration of his decision dated November 9, 2010 in which he had granted partial summary judgment for General Electric (“GE”) based on intervening rights stemming from VPF’s amendment “in effect” of claim 1.  The effect of a reexamined patent on alleged infringers during the period prior to issuance of the reexamination certificate is governed 35 U.S.C. § 307(b) that triggers 35 U.S.C. § 252.

Judge Moon decided in his original Opinion that this statute applies because Claim 1 was “amended in effect” as a result of the statements the patent owner made in reexamination, together with its cancellation of Claim 4, which altered the scope of Claim 1.  See Opinion 43-44.

The Patent Foundation predictably took issue with Judge Moon’s interpretation of §307(b), arguing that the term “amended” in the statute requires explicit change of the wording of a claim in reexamination, and that §252 is not triggered by §307(b) because the wording of Claim 1 was never explicitly changed during the reexamination.
Read More/続きを読む

Category: Reexamination Requests

Right of Appeal Notice in RIM Reexamination of Visto Patent

| February 10, 2011

A Right of Appeal Notice (RAN) has issued in the inter partes reexamination of Visto’s U.S. Patent No. 7,363,349 which claims gateway servers and methods for real-time data retrieval.  In the RAN, the examiner states that the amended claims are patentable over the prior art because of Visto’s amendment of each of the independent claims to recite a limitation from one of the dependent claims. The reexamination request had been filed by Research in Motion (RIM) who now has the option of appealing the examiner’s decision to the PTO Board. 

Who won?  The case demonstrates the uncertainty of “reexamination kill-rates.”  Assigning success in a case to one side or the other, where claims have been amended, depends on the commercial realities.  If the market for the claimed product is largely in the future, Visto is the winner as it emerges from reexamination (assuming that RIM does not pursue and win an appeal) with a patent enjoying an “enhanced presumption of validity.”  On the other hand, if the market for the claimed product is largely in the past, RIM is the winner – Visto’s damages for infringement of its independent claims for the period prior to the PTO’s issuance of the reexamination certificate are eliminated by Visto’s claim amendments.  That issuance date could be extended by a year or two if RIM appeals the examiner’s decision.

Visto had sued RIM for infringement of the ‘349 patent in 2008, but the case has been dismissed, apparently on the basis of a settlement agreement.

Category: Reexamination Requests

Acer & Microsoft Attacks on MedioStream Video Recording Patent among Reexamination Requests Filed Week of January 31, 2011

| February 8, 2011

On January 7, 2011, Apple requested reexamination of MedioStream’s U.S. Patent No. 7,843,508 covering a way of recording video data directly onto disks.  Now, both Acer and Microsoft have filed their own requests for reexamination of the ‘508 patent (inter partes Request Nos. (2) & (5)).  Each of these new requestors has been accused by MedioStream of infringing the ‘508 patent.  These requests continue a trend among the huge electronic companies, especially Apple, of using reexamination to reply to infringement allegations.  

As an update to our posts of June 30 & November 9, 2010 and January 19, 2011 – regarding inter partes reexamination requests filed by Whirlpool against four LG refrigerator patents – Judge Garrett Brown, in a parallel infringement action between the parties in the District Court of New Jersey, has denied Whirlpool’s motion to stay the case pending completion of the reexamination proceedings.  Judge Brown explained that inter partes reexaminations “could take more than five years if the parties fully exhaust their appeal rights” and that delay could cause LG irreparable loss because the parties are direct competitors: “[t]he goodwill lost during the reexamination proceedings could be difficult to measure and difficult to compensate fully with money damages after trial.”

The dispute we reported January 31, 2011, between Abbott Diabetes Care and DexCom, appears to have escalated last week (see ex parte Request Nos. (5) to (7)). 
Read More/続きを読む

Category: Recent Requests, Reexamination Requests

Was Reexamination the Answer in Tokai v. Easton?

| February 6, 2011

The CAFC’s 2-1 panel decision in Tokai v. Easton has caused quite a stir in the patent blogosphere.  The majority opinion affirming a summary judgment that the three patents-in-suit were obvious over the prior art, plus Judge Newman’s vigorous dissent, have raised concerns that KSR may be applied too broadly by the CAFC, to the detriment of worthy patents and worthy patent owners whose success is vital to economic recovery.

These concerns are serious and deserve debate.  But the question that interests us is whether the outcome would have been different if the obviousness issue had been determined in reexamination, rather than in the courts?  Could the accused infringer have obtained the same result through reexamination?  With 20-20 hindsight, plus a healthy amount of speculation, we conclude that it could have.
Read More/続きを読む

Category: Reexamination Requests

Prosecution Bar should not Apply to Reexamination, Judge Noel Rules

| February 4, 2011

The trend among the trial courts to permit the patentee’s litigation counsel to participate in a reexamination involving the patent-in-suit (see Shared Memory Graphics v. Apple et al., 3-10-cv-02475 VRW-EMC), continued this week in 3M v. Avery Dennsion, 310-2630-MJD-FLN.

There, the accused infringer, Avery Dennison, requested that the PTO reexamine one of 3M’s patents-in-suit.  Avery also asked that the provision of the protective order that bars 3M’s in-house patent counsel, with access to “highly confidential information,” from participating in patent prosecution, also bar that counsel from participating in the new reexamination.  Avery argued that reexamination is no different from routine patent prosecution, with the same potential for in-house counsel to abuse its access to confidential information covered by the protective order.  3M replied that the pending reexamination is merely “another aspect” of the pending litigation and that its in-house patent counsel should be allowed to participate in both.

Magistrate Judge Franklin Noel agreed with 3M, finding that it had “the more realistic view of the situation.”  The Judge was careful, however, to limit 3M’s counsel to participation to the specific reexamination now underway and not to all reexaminations involving 3M patents.

Accused infringers need to take this trend into account when they initially propose a protective order – patentee’s counsel granted access to protective order information are likely also to be permitted to participate in any reexamination of the patents-in-suit.

Category: Stays/District Courts

DNA Patents Dominate Reexamination Requests Filed Week of January 24, 2011

| February 2, 2011

In August, Helicos Biosciences sued Pacific Biosciences of California, Life Technologies and Illumina in Delaware for infringing four patents claiming methods for nucleotide sequencing.  Pacific Biosciences has now replied by requesting reexamination of each of the four patents-in-suit (inter partes Request Nos. (2) to (5)).

Also, a request was filed for one of the Ronald Katz telephone patents (see ex parte Request No. (3)).
Read More/続きを読む

Category: Recent Requests, Reexamination Requests
« Previous Page

Subscribe | 登録

Search

Recent Posts

Archives

Categories

辞書
  • dictionary
  • dictionary

  • 英語から日本語

Double click on any word on the page or type a word:

Powered by dictionarist.com