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
Toshiba Attack on Two Rovi V-Chip Patents among Reexamination Requests filed Week of March 7, 2011
| March 14, 2011
Late last year, Rovi sued Toshiba, alleging that it infringes two patents covering V-Chip technology, U.S. Patent Nos. 6,305,016 and 6,701,523. Toshiba has now replied to that allegation by requesting reexamination of both Rovi patents (see ex parte Request Nos. (16) & (17)).
The winner for the most reexaminations requested was TiVo who filed requests against seven Microsoft TV programming patents (see ex parte Request Nos. (3) to (9)).
Finally, Xilinx’s assault on Intellectual Venture patents continued last week with requests filed against IV’s U.S. Patent Nos. 6,993,669 and 6,408,415 (see inter partes Request No. (3) & ex parte Request No. (31)).
The following inter partes requests were filed:
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Star Scientific Tobacco Curing Patent Update
| March 14, 2011
This past Thursday the PTO issued Notices of Intent to Issue Ex Parte Reexamination Certificate (here, here) for Star Scientific’s U.S. Patent Nos. 6,202,649 and 6,425,401 claiming processes for curing tobacco so as to avoid the formation of harmful nitrosamines. The ‘649 and ‘401 are the subject of a prolonged infringement battle between Star Scientific and RJ Reynolds Tobacco, which is now on its second trip to the CAFC. The reexamination certificates themselves are likely to issue sometime in June.
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Three Updates: Callaway v. Acushnet, Intellectual Ventures v. Xilinx, Zimmer Spine v. NuVasive
| March 10, 2011
1. Callaway v. Acushnet
Last May we reported the possibility of a conflict between the PTO and the District Court in the golf ball patent dispute, Callaway v. Acushnet, 1:06-cv-0091-SLR (D. Del). A jury had determined that Callaway’s four patents – U.S. Patent Nos. 6,210,293, 6,503,156, 6,506,130, 6,595,873 – were invalid over the prior art. The accused products were Acushnet’s Titleist Pro VI® golf balls. In the meantime, the PTO was conducting reexamination of each of the Callaway patents, and, conceivably could have reached a contrary conclusion rearding those patents.
Yesterday, however, the PTO Board reached the same conclusion as the Delaware jury when it affirmed the prior art rejection of the claims of the ‘293, ‘156 and ‘873 patents. Notable for reexamination practitioners, was the Board’s skepticism of Callaway’s commercial success argument that featured $1.5 billion in sales. As has happened in many appeals, the Board found a lack of nexus between the claimed invention and the asserted commercial success. Callaway had withdrawn the appeal of the ‘130 rejection.
TiVo Takes Aim at Seven Microsoft Patents
| March 8, 2011
Over a year ago, Microsoft sued TiVo for infringement of two patents – U.S. Patent No. 6,008,803 and 6,055,314 – related to display of TV programming information and the delivery of pay video programs. In July Microsoft added five more patents to the case: U.S. Patent Nos. 5,648,824, 5,654,748, 5,677,708, 5,896,444, and 6,725,281. Yesterday TiVo replied by requesting ex parte reexamination of all seven Microsoft patents.
Last month Microsoft filed its initial claim construction brief in the District Court case. It is not yet known whether TiVo’s reexamination requests rely on Microsoft’s arguments in that brief, to assert a broad claim construction at the PTO, thereby making Microsoft’s claims more vulnerable to the prior art. Still, TiVo’s resort to reexamination is likely to complicate Microsoft’s claim construction arguments in the court case.
Deciding Whether to Stay a Case Pending Reexamination
| March 7, 2011
The universally accepted standard for a court to determine whether to stay a patent infringement case pending completion of a reexamination proceeding is clear and seemingly objective. A court is to apply its discretion in light of the following factors:
(1) whether discovery is complete and a trial date is set, i.e., is the case in its early stages;
(2) whether reexamination would likely simplify, or perhaps eliminate, issues from the litigation; and
(3) whether a stay would unduly prejudice the patentee, or whether the stay is requested by the accused infringer for some tactical reason.
Yet the standard is commonly applied in an extremely subjective manner, so that a number of practitioners have commented that the identity of the judge is the best predictor of the outcome of a stay motion.
We believe that the problem is not with the trial judges, but with the standard itself. That standard reflects two compelling, but contradictory, interests: one, the basic right of the patentee to exclude others practicing the claimed invention during the term of the patent, and the other, the obvious benefit to the court and to the parties from the PTO resolving major issues, thereby reducing the cost and complexity of the litigation. Trial judges, earnestly trying to do what is right, bring different life experience to their decisions, and therefore accord very different significance to these conflicting interests.
Whirlpool Challenge to Three LG Refrigerator Patents among the Reexamination Requests Filed Week of February 28, 2011
| March 7, 2011
Last year LG Electronics sued Whirlpool for selling refrigerators that infringe a series of LG patents. Whirlpool has now replied by requesting reexamination of those patents (see inter partes Request Nos. (4), (5) & (6)). Whirlpool has previously requested reexamination of at least four other LG refrigerator patents. LG and Whirlpool have been in series patent infringement fights, including an ITC investigation.
There were also reexaminations requested by Google against two of the Oracle America patents in the JAVA infringement suit between the companies (see inter partes Request No. (3) and ex parte Request No. (9)). A request was filed against another of the Intellectual Ventures patents from its case against Altera and other companies, probably by Xilinx, though the identity of the requester does appear in PAIR (see ex parte Request No. (22)). Finally, a request was filed regarding one of the Ronald Katz telephone patents (see ex parte Request No. (3)).
Google Requests Reexamination of Two Remaining Oracle America Patents
| March 2, 2011
Oracle America sued Google in August for distributing Android®, thereby infringing seven patents related to 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.” Google shot back last month by requesting that the U.S. PTO undertake reexamination of five of those patents (here, here).
Yesterday afternoon Google requested reexamination of the two remaining Oracle America patents-in-suit – U.S. Patent Nos. 6,192,476 and 7,426,720. Having now sought reexamination of all seven Oracle patents, Google is quite likely to ask the trial judge to stay the infringement suit, pending completion of the reexaminations. Google, however, may defer filing such a motion until the PTO has granted the reexamination requests, probably sometime in May.
