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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Could the PTO’s Proposed Rule Changes Increase Courts’ Reliance on PTO Reexamination Decisions?
| April 28, 2011
On Monday the Patent Office published for public comment a long list of proposed changes to the rules by which it conducts ex parte and inter partes reexamination proceedings. Essentially, the changes would reduce the complexity of various steps in the typical reexamination and thereby significantly shorten reexamination pendency. Such changes are necessary in a time of reduced budgets and increased filings, and reexamination practitioners are now busily preparing their comments on the Office’s proposals.
The rule changes will of course have a significant impact on the mechanics of reexamination practice. But the greater effect might be on the inclination of trial judges in their patent infringement cases to defer to, or at least consider, PTO reexamination decisions – specifically, judges may be more inclined to wait for the PTO to resolve issues in reexamination if reexaminations are completed more quickly.
Over the past several years, we have seen an increasing tendency among trial judges to defer to PTO determinations of the basic reexamination issues of claim construction and patent validity. In some instances, this deference is shown when a judge stays an infringement action pending completion of a reexamination proceeding. In other cases, courts cite reexamination decisions as support for their conclusions on claim construction, anticipation and obviousness, and sometimes even on issues of willfulness, preliminary relief, and materiality in inequitable conduct defenses.
Seagate’s Request for Third Reexamination of Convolve Patent Denied
| April 26, 2011
At the end of February, we reported that Seagate had requested a third reexamination of Convolve’s U.S. Patent No. 6,314,473 claiming a noise reduction user interface in a disk drive: specifically, in “controlling one of seek time … and acoustic noise level … in inverse relation” (emphasis added). Although the patentability of the ‘473 claims had been confirmed in two previous reexaminations, it appeared that Seagate’s new request might succeed since it was based, at least in part, on assertions made by Convolve regarding the “heart of the invention” during the claim construction phase of parallel infringement action between the parties in Texas (2:08-cv-244).
Convolve’s Markman remarks, however, appear to have had no effect on the PTO’s analysis of whether the art cited in the new request presented “a substantial new question of patentability” (SNQ). First, the PTO determined that Convolve had written description support in a provisional application and was therefore entitled to claim priority to the filing date of that application. The result of that determination was that one reference, relied upon by Seagate for anticipation, was not prior art.
MobileMedia Ideas Case against RIM, HTC & Apple Shifts toward Patent Office
| April 25, 2011
MobileMedia’s infringement cases against RIM, HTC and Apple present a number of interesting points. The first is MobileMedia itself – it is a patent-holding company owned by MPEG-LA. MobileMedia describes itself as “the patent portfolio licensor of inventions adopted by manufacturers of smart phones, mobile phones and other portable devices including personal computers, laptops, netbooks, personal media players, e-book readers, cameras and hand-held game consoles.” It states that it owns 300 patents and lists its patents available for licensing at http://www.mobilemediaideas.com/patents.html.
Second, the various patents-in-suit did not originate with MobileMedia. Most were assigned to it by Sony, some by Nokia, and two by Audio Highway.
Third, and of special interest to reexamination practitioners, is that the action in the three cases seems to be slowly shifting from the courts to the reexamination at the PTO. MobileMedia filed complaints against RIM and HTC in the Eastern District of Texas and against Apple in Delaware, all on March 31, 2010. Starting in January 2011, the three defendant companies begin to file requests reexamination of patents-in-suit (see the attached chart showing the status of the MobileMedia patents). So far, RIM has requested reexamination for eight of the twelve patents it is accused of infringing. HTC and Apple have not been as aggressive, but have both filed a number of their own requests.
HOW WOULD “POST-GRANT REVIEW” WORK?
| April 25, 2011
Q: Who may petition the PTO for post-grant review?
A: Anyone who is not the patentee may request post-grant review.
Q: What grounds may be asserted in a petition for post-grant review?
A: A request may be based on any defense under 35 U.S.C. § 282, ¶¶ 2 & 3, i.e., all defenses under §§ 102, 103 & 112.
Q: What is the deadline for petitioning for post-grant review?
A: A request must be filed no later than nine months after the patent issue date or issue date of a reissue patent.
Q: What must a petition contain?
A: A petition must disclose the “real party in interest” petitioning for review and describe in detail the grounds for review; the petition must also comply with certain formal requirements and include a filing fee to be promulgated by the PTO.
Q: Can the patentee reply to a petition?
A: Yes. The patentee has two months from the petition filing date to file a “preliminary response”explaining why post-grant review should not be ordered.
Micro-Probe Attack on FormFactor Electrical Connection Patent, among Reexamination Requests Filed Week of April 18, 2011
| April 25, 2011
Micro-Probe has requested reexamination of FormFactor’s U.S. Patent No. 7,225,538 that claims methods for making electrical connections in semiconductor packaging assemblies (see inter partes Request No. (11)). FormFactor has sued Micro-Probe in the Northern District of California for infringement of the ‘538 patent, as well as for infringement of six other patents and for a series of trade secret-type violations. The PTO has ordered reexamination for five of those FormFactor patents, and Micro-Probe has moved Judge Phyllis Hamilton for a partial stay of the District Court case. The ‘538 was the subject of an ITC investigation in 2009 that ended in a determination of no infringement by the importers.
The clear winner last week for the number of requests filed was Vesdia that sought reexamination of four TuitionFund patents related to merchant rebates and college tuition (see inter partes Request Nos. (1), (3), (5) & (6)). The two companies are in litigation in Tennessee over those patents.
After requesting reexamination for a Hisamitsu transdermal adhesive patent three weeks ago, Kowa has now requested reexamination of a second Hisamitsu patent, this one claiming transdermal patches (see inter partes Request No. (2)).
Finally, reexamination was requested of two Sorenson patents that claim systems for exterminating pests (see ex parte Request Nos. (4) & (6)).
Patentee May Add Narrower Claims in Reissue, at Least for Now
| April 19, 2011
The CAFC’s decision last Friday, In re Tanaka, addressed the question of whether a patentee’s failure to have included a dependent claim during the original prosecution is an error correctible by reissue, i.e., an error on which a reissue application may be based. The CAFC panel said yes, but that might not be the final word on the issue.
The reissue provisions of the Patent Statute allow a patentee to correct errors in its patent if the patent is “deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patent claiming more or less than he had a right to claim in the patent….” In Tanaka, the patentee filed a reissue application seeking to obtain claims broader in scope than those of the original patent; the application included a reissue declaration stating that there was error because the patent claimed less than he had a right to claim. When the patentee determined that the examiner would not allow broader claims, he withdrew the broader claim and added a dependent claim, i.e., a claim that fell completely within the scope of the independent claim; the patentee also filed a substitute reissue declaration stating that his failure to include the dependent claim during the original prosecution was an error justifying the reissue application.
The examiner and later the PTO Board rejected the application, holding that a reissue application that retains all the original claims and adds only narrower claims, does not present the type of error correctible by reissue.
Challenges to Two MobileMedia Ideas Patents, among the Reexamination Requests Filed Week of April 11, 2011
| April 18, 2011
Reexamination was requested for two MobileMedia Ideas patents. PTO dockets show that RIM filed one of the requests, but are unclear about who filed the second, though that request was quite likely filed by RIM as well (see ex parte Request Nos. (3) & (13)). MobileMedia has sued RIM for infringement of these patents in the Eastern District of Texas.
A very important request, reported in a parallel post today, is Google’s second request for reexamination of an Oracle patent (see ex parte Request No. (20)).
Abbott Diabetes Care has requested reexamination of two DexCom analyte sensor patents (see ex parte Request Nos. (8) & (18)).
Google Renews Reexamination Challenge to Oracle Phone Patent
| April 18, 2011
In February Google requested reexamination of seven “Java platform” patents – Oracle had sued Google for infringement of those patents by marketing its Android™ cell phones. On Friday afternoon, Google filed its second request for ex parte reexamination with respect to one of those seven patents, Oracle’s U.S. Patent No. 6,061,520.
Though the PTO had ordered reexamination of the ‘520 patent based on the Lewis reference, it also denied reexamination of claims 14 and 17 of that patent, finding that the prior art cited by Google failed to raise a “substantial new question of patentability” (SNQ) regarding those claims. Such a denial of reexamination by the PTO would enhance the statutory presumption that those claims are valid over the prior art. In Friday’s request, Google therefore again sought reexamination, this time focusing on claims 14 and 17. Google also described Lewis in a different light and combined Lewis with three new secondary prior art references.
The PTO has ordered reexamination of five of the other Oracle patents; the request for reexamination of the seventh Oracle patent is still pending and is likely to be acted on soon.
RIM has Initial Success against MobileMedia Ideas Camera Patent
| April 14, 2011
RIM’s strategy for dealing with the infringement suit filed against it by MobileMedia Ideas is off to a good start. At the beginning of January, RIM requested ex parte reexamination of MobileMedia’s U.S. Patent No. 7,349,012 claiming an “imaging apparatus” useful for cell phones. The PTO has now ordered reexamination, and on the same day, it issued an Office Action rejecting each of the ‘012 claims. The reexamination examiner adopted each of RIM’s rejections “substantially as proposed.”
It is not unusual for the PTO to issue rejections on the same day as it orders reexamination or to adopt all the requester’s proposed rejections. What might justifiably encourage RIM, however, is the fact that the examiner noted that the newly cited prior art references disclose the specific features of the ‘012 independent claims that the original examiner had found absent from the prior art before him.
The ‘012 patent was originally assigned to Sony, later assigned to SCA IPLA Holdings, and sent from there to MobileMedia. Tempering RIM’s success so far is the fact the ‘012 patent is only one of 12 MobileMedia patents in the law suit against RIM.
Reexamination Request against MobileMedia Smart-Phone Patent, among those Filed Week of April 4, 2011
| April 11, 2011
An ex parte request has been filed – probably by HTC – against one of MobileMedia Ideas’ 11 smart-phone patents that are the subject of its pending infringement litigation against HTC (see ex parte Request No. (2) for U.S. Patent No. 5,915,239). MobileMedia obtained the ‘239 patent from Nokia Capital. Reexamination was ordered last month (90/011,436) for one of the other MobileMedia patents-in-suit, U.S. Patent No. 6,253,075; reexaminations against the other nine MobileMedia patents might be pending as well. MobileMedia has two parallel smart-phone infringement law suits pending, one against Apple, and one against RIM.
On the heels of its earlier requests against three XRPT patents, eBay requested reexamination of two additional XPRT patents (see inter partes Request Nos. (2) & (3)).
Finally, Beckman Coulter requested reexamination of a GeneOhm Sciences Canada patent claiming a method for detection of certain methicillin-resistant bacteria (see inter partes Request No. (5)).
