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- 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)
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- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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Updates on Stays for EchoStar v. TiVo, Sorenson ‘184 Patent, Alps v. Willow Wood
| March 30, 2011
1. EchoStar v. TiVo Case Resumes despite New Reexamination Requests
Last November (here) it appeared that EchoStar’s U.S. Patent Nos. 5,774,186 and 6,208,804 for direct access TV systems were about to emerge successfully from reexamination and that the trial judge would lift the stay of EchoStar’s case against TiVo for infringement of those patents. TiVo moved quickly, however, to try to stop the reopening of the litigation by filing new requests for reexamination of the ‘186 and ‘804 patents.
Magistrate Judge Caroline M. Craven has now lifted the stay of EchoStar’s case. She noted that the PTO has denied TiVo’s new request for reexamination of the ‘804 patent; and although a new reexamination was granted for one out of the five SNQs proposed by TiVo against the ‘186 patent, EchoStar has now provided TiVo with a covenant no to sue, thereby removing any reexamination of that patent as an obstacle to resumption of the litigation. Magistrate Judge Craven explained that “the current stay has been in place for four-and-a-half years,” so that to “continue the stay would only further delay this case without the likelihood of further simplification of the issues.” She also scheduled a June 2011 claim construction hearing and a June 2012 trial for the remaining ‘804 patent.
IMPACT OF PTO’S REEXAMINATION ANALYSIS ON ITC CASES, AT ISSUE IN KODAK’S “$1 BILLION CASE” AGAINST APPLE AND RIM DIGITAL CAMERA MOBILE TELEPHONES
| March 29, 2011
In January U.S. International Trade Commission Administrative Law Judge Paul Luckern issued his initial determination (ID) finding that Kodak’s U.S. Patent No. 6,292,218 was obvious over the prior art and not infringed by Apple and RIM mobile telephones with digital cameras – these findings were contrary to an ID (by ITC ALJ Carl Charneski) in an earlier investigation that Kodak’s ‘218 patent was valid and infringed by mobile telephones from Samsung and LG. This past Friday, the Commission announced that it would review Judge Luckern’s determination in favor of Apple and RIM. As is customary, the Commission’s review focuses on specific aspects of Judge Luckern’s ID, asking the parties to address five specific legal issues – among them, the extent to which the ITC should consider reexamination proceedings (90/010,899) in its analysis of claim construction and validity issues.
The ITC does not have authority to award Kodak money damages for past infringement, even if it does determine that Kodak’s ‘218 patent is valid and infringed. It can, however, stop infringing telephones from entering the United States and order Apple and RIM to stop selling infringing telephones already in the United States. One official at Kodak has stated publicly that if the ITC rules in its favor against Apple and RIM, those companies would likely accept a license to the ‘218 patent, resulting in nearly $1 billion in royalties for Kodak.
EchoStar Challenge to Northpoint Set-Top Box Patent among 24 Reexamination Requests Filed Week of March 21, 2011
| March 28, 2011
Friday afternoon EchoStar requested reexamination of Northpoint’s U.S. Patent No. 6,208,636 which claims a TV set-top box for processing multiple datastreams.(see ex parte Request No. (19)). Northpoint is suing EchoStar, DirecTV and Dish Network in the Western District of Texas for infringement of the ‘636 patent. According to Northpoint’s complaint, Dish Network has used the claimed box for 14.1 million direct broadcast satellite subscriptions as of December 2009.
Reexamination was requested against AU Optronics’ U.S. Patent No. 7,125,157 (see inter partes Request No. (4)), probably by Sharp, though the accessible PTO records are not clear. AU Optronics sued Sharp earlier this month in Delaware for infringement of the ‘157 patent, as well as five other patents.
Formax and Prosure requested reexamination of four Patriot Universal Holdings patents related to machines for “molding food patties,” presumably hamburgers (see ex parte Request Nos. (6), (7), (8) & (9) – the two companies had been sued by Patriot in Wisconsin for infringement of the patents. The same day Formax also filed in Wisconsin its own complaint for patent infringement against two additional companies.
TRIAL COURTS CONTINUE TO LOOK DIFFERENTLY AT REEXAMINATION STAY MOTIONS
| March 24, 2011
On a number of occasions we have described the difficulty faced by District Courts in trying to balance the conflicting interests of potential prejudice to the non-moving party and possible simplification of issues (here). In each case trial judges try to do what is just in view of their own judicial experience.
And yet, the courts sometimes seem to look at the same facts and arrive at different conclusions. This phenomenon was on display Monday when two different judges, ruling on stay motions, considered the factor of whether a stay would simplify the issues, in view of the PTO’s statistics on the survival rate of patent claims in inter partes reexamination. Two judges looking at precisely the same statistics arrived at opposite conclusions.
In PDS Electronics v. Hi-Z Antennas, 2011 U.S. Dist. LEXIS 29211, Judge John R. Adams of the Northern District of Ohio took
judicial notice of the statistic from the PTO’s Quarterly Report that only 11% of inter partes reexamination result in confirmation of all of the claims presented. Therefore, it is highly likely that the issues in the present case will be affected by the outcome of the ‘588 reexamination. A stay pending these proceedings would allow the parties to preserve their resources by simplifying the issues in question. (Emphasis added).
InnovaSystems Requests Reexamination after being Held in Contempt for Violating Injunction not to Infringe Proveris Patent
| March 24, 2011
In our post Friday we discussed the increasing possibilities for using reexamination to affect issues, in addition to patent validity, in parallel infringement cases. The same day InnovaSystems requested reexamination of Proveris’ U.S. Patent No. 6,785,400 (95/001,578) which has been the subject of a five-year infringement dispute between the companies. InnovaSystems’ request may have been filed for the purpose of responding to a contempt order issued against it in an infringement action.
That action began in December 2005 when Proveris sued InnovaSystems in Massachusetts for selling its Optical Spray Analyzer (OSA) (a high-speed digital camera with a low power laser designed to capture the image of a spray) that infringes the ‘400 patent. In 2007 the trial judge issued a judgment of infringement and enjoined InnovaSystems from further acts of infringement. InnovaSystems then undertook to modify its original OSA and soon began to market its Aerosol Spray Drug Analyzer (ADSA).
Proveris took InnovaSystems back to court arguing that ADSA infringed the ‘400 patent. The trial judge agreed and in June last year he held InnovaSystems in contempt: “because nothing more than merely colorable differences exist between the OSA and the ADSA, and because those differences do not affect any element of claims 3, Innova’s making, using, offering for sale, numerous sales, and exporting of the ADSA amount to contempt for which a significant sanction is warranted.” The trial judge has not yet applied a specific sanction because InnovaSystems appealed the contempt order to the CAFC, thereby depriving him of jurisdiction until the case is returned to him by the CAFC.
Three Items of Interest
| March 23, 2011
1. How Long can a Reexamination Request Be?
A very rough indicator of the extent to which reexamination is supplanting traditional litigation is the length of some requests. One of the longest we have ever seen was filed Monday by CME against Realtime Data’s U.S. Patent No. 7,777,651, over 2,100 pages not counting the exhibits.
The ‘651 patent is one of three patents that are the subject of an infringement litigation in the eastern District of Texas between those companies. Thomson Reuters and Morgan Stanley have also been sued for infringement. Requests have already been filed against the other two patents in the litigation.
2. Trial Courts Take PTO Reexamination Decisions into Account
Last Wednesday in 3M Innovative v. Gerson, 8-cv-4960 (March 16, 2011), Judge John Tunheim denied a motion by the accused infringer for summary judgment that the patent was invalid as obvious over the prior art. Judge Tunheim began his analysis of whether the prior art references disclosed one of the steps of the claimed method by stating that the patent had been the subject of a parallel inter partes reexamination. He noted that he was not required to defer to the PTO’s analysis in that reexamination, but then quoted from that analysis at length, concluding that he agreed with the PTO that the art did not disclose the claimed step.
It is likely that Judge Tunheim would have arrived at the same conclusion without the reexamination. Still, the impact of PTO reexamination decisions on infringement cases is becoming more and more evident.
Auburn v. IBM, among the Reexamination Requests the Week of March 14, 2011
| March 21, 2011
Auburn v. IBM is not a “sweet-sixteen” match-up. It’s an infringement litigation pending in the District Court in Alabama since 2009. IBM has now requested reexamination of Auburn’s patents – U.S. Patent Nos. 7,194,366 & 7,409,306, both claiming ways of estimating the reliability of integrated circuits and thereby reducing the cost of making chips (see inter partes Request Nos. (2) & (3)).
Xilinx continued its assault on Intellectual Ventures’ patents – this week requesting reexamination of U.S. Patent No. 7,080,301 (see inter partes Request No. (7)), and perhaps U.S. Patent Nos. 6,065,880 and 6,687,865 (see ex parte Request Nos. (16) & (18)). The PTO records are, as yet, unclear regarding the requester of the latter two requests, but it appears to have been Xilinx.
Apple, the clear leader in recent times in the number of requests filed, continued its practice of seeking reexamination of each patent-in-suit whenever it is sued (see ex parte Request Nos. (10), (11) & (13)). Other noteworthy requests include those filed against Lincoln Global and 3M patents (see inter partes Request Nos. (1) & (11) and ex parte Request No.(1)).
Chimei Innolux Wins Appeal over Mondis at PTO Board
| March 21, 2011
The PTO Board of Appeals handed Chimei Innolux an important victory today (here) in its inter partes reexamination of Mondis’ U.S. Patent No. 6,306,236. The examiner had previously withdrawn a prior art rejection of the ‘236 claims, but the Board disagreed, restoring the rejection of the claims and adding a new prior art rejection that had been proposed in Chimei’s original request. Mondis’ options, now, are to request that the Board reconsider its decision or to reopen prosecution.
The ‘236 patent, that claims a system for adjusting a picture on a display apparatus sent from an external computer, is one of ten patents that are the subject of an infringement case filed by Mondis in Texas against Chimei, Hon Hai, Fujinan and Top Victory. One interesting aspect of the Board’s decision is its finding that the preamble of the ‘236 claims limits their scope; the court in Texas had reached the same conclusion in its claim construction ruling in January.
CAFC Urges Deference to PTO Reexamination Determinations
| March 17, 2011
Over the last two years, there is has been a growing trend among some District Courts to defer to decisions that the PTO makes on patent validity in its reexamination proceedings. This deference to the PTO is shown not only in cases where the court stays infringement litigation pending completion of a reexamination, but also where the court resorts to the PTO’s reexamination findings to resolve non-validity issues, for instance, willfulness, claim construction, materiality in an inequitable conduct defense, a patentee’s likelihood of success for a preliminary injunction motion, etc. This trend received a further nudge forward yesterday when the CAFC reversed an award of attorney’s fees against the patentee in Old Reliable v. Cornell, citing inter alia the PTO’s notice of intent to confirm the validity of the patent claims.
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Complying with the Duty of Disclosure in Reexamination
| March 14, 2011
In a case with parallel reexamination and District Court proceedings, a patentee sometimes faces annoying problems in attempting to comply simultaneously with the PTO’s duty of disclosure and the Court’s protective order. For instance, counsel for the patentee may receive documents from the accused infringer that contain confidential business information – for instance expert reports on infringement – and that also contain information that would be material to the reexamination. Last week in Sloan Valve v. Zuru, 2011 U.S. Dist. LEXIS 23269 (N.D. Ill.), Judge Amy J. St. Eve modified her protective order and in doing so, provided a nice roadmap for patentees in such parallel proceedings.
In December Judge St. Eve stayed the patent infringement pending completion of the PTO’s reexamination of the patent-in-suit. Shortly thereafter, the patentee filed a motion to reopen the case for the limited purpose of amending the protective order to allow submission of material information to the PTO. The patentee explained that the PTO’s duty of disclosure in reexamination proceedings requires submission of all information that may be material to the patentability of the patent. The protective order, however, did not “expressly permit submission of confidential information to the PTO.” Because of these conflicting obligations, the patentee asked that the protective order be changed to recite an express exception that the disclosing party must submit “confidential” or “highly confidential” information using the specific procedure outlined in MPEP 724.02.
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