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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- All Things Pros
- CAFC Alert
- FDA Law Blog
- IPWatchdog
- Patent Docs
- Patently-O
- PLI Patent Law Practice Center
- Think IP Strategy
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COURT ACCEPTS REEXAMINATION RESULT IN DECIDING PRELIMINARY INJUNCTION MOTION
| April 11, 2011
Judge Douglas Woodlock has denied the patentee’s motion for a preliminary injunction in Red Bend v. Google, 2011 U.S. Dist. LEXIS 36217 (D. Mass.), finding that Red Bend was unlikely to succeed on the merits, specifically, unlikely to establish that Google’s software infringes. What will interest reexamination practitioners, however, is Judge Woodlock’s analysis of the prior art validity issue. On that question, he found that Red Bend was likely to succeed on the merits because the “PTO has … issued a Reexamination Certificate as to all claims.” In contrast to the Judge’s quite detailed analysis of the claim construction, infringement, and irreparable harm issues, his analysis of the validity issue relied solely upon the PTO’s confirmation of the validity of the claims in reexamination.
Perhaps if Judge Woodlock had concluded that Red Bend was likely to succeed on the merits with respect to the infringement issue, he would have addressed the specific application of the patent claims to the prior art references in greater detail, rather than merely cite the outcome of the PTO’s reexamination. On the other hand, the Judge’s reliance upon “the ‘current posture’ of the Reexamination process,” suggests an interesting deference to the conclusions obtained in reexamination proceedings. Or perhaps I am reading too much into the Judge’s decision.
“SUBSTANTIAL NEW QUESTION OF PATENTABILITY” DETERMINED BY EXAMINER’S PERCEPTION OF PRIOR ART OF ART, BOARD FINDS IN TODAY’S SAMSUNG CASE
| April 7, 2011
Since last June, the PTO Board of Appeals has had jurisdiction to consider whether the original grant of ex parte reexamination was correct. Thus, when the patentee appeals a final rejection to the Board, it may also challenge the Examiner’s original determination that the reexamination request raised a “substantial new question of patentability” (SNQ).
Today’s Board decision in Ex parte Samsung Electro-Mechanics Co., Ltd. (90/008,993) addressed the interesting question of how to determine whether issue raised in a request is “new.” Samsung’s patent claimed an image module, including an automatic focusing feature for lens adjustment in digital cameras. The request asserted two potential SNQs. In the second, the requester asserted that the patent claims were obvious over two references identified as “APA” and “JP ‘405.” Agreeing that an SNQ had been raised, the examiner granted reexamination, and later issued a final rejection of the claims based on that prior art.
On appeal to the Board, Samsung argued, inter alia, that reexamination should not have been granted because no new SNQ was raised in the request and because the request failed to “include a detailed explanation of the pertinency” of the cited references to the patent claims. Samsung acknowledged that JP ‘405 had not been before the examiner in the original prosecution, but argued that it did “not disclose any feature relevant to the issued claims [of the patent] that is not already disclosed in” the Takishima reference that was before the original examiner.
Apple Rescued from $625 Million Verdict by Non-Infringement JMOL, while its Reexamination Attack on Mirror Worlds Patents Sputters
| April 6, 2011
Apple received welcome news Monday when Judge Leonard Davis granted its motion for Judgment as a Matter of Law that it had not infringed three patents belonging to Mirror Worlds. Mirror had sued Apple in 2008 in the Eastern District of Texas for infringement of those patents related to document stream operation systems, for instance systems that allow a user to view a series of images. The case went to trial and on October 1, 2010, a jury found the three patents were willfully infringed by Apple’ sale of computers using Mac OS X, and awarded Mirror Worlds $625.5 million.
In parallel with its defense against the infringement allegations in Texas, Apple filed a series of reexamination requests, beginning in April 2009. More than any other company, Apple has resorted to reexamination to defend itself against patent infringement suits. Yet that strategy has not been effective so far in Apple’s three-year-old dispute with Mirror Worlds.
Update on Samsung, Kyocera & HTC Reexaminations of Fractus Patents
| April 5, 2011
Last December we reported on an infringement action filed by Fractus in the Eastern District of Texas against a who’s-who of cellular telephone makers, among them Samsung, Kyocera and HTC. The response of those three companies has been extremely aggressive – each has requested inter partes reexamination of each of the nine Fractus patents-in-suit; and rather than moving the stay of the Texas action, they have defended vigorously in that forum.
How has that strategy worked so far? It appears to be working pretty well. Of the 27 reexaminations requested, 26 have been granted. Rejections have been issued in several, and the PTO has sua sponte merged several others. The attached table shows the status of all 27 reexamination requests.
In the meantime, last Wednesday, defendants filed motions for summary judgment of invalidity against two of the Fractus patents. Presumably motions against the other patents will follow soon.
Attack by eBay on Automatic Auction Patents, among 28 Reexamination Requests Filed Week of March 28, 2011
| April 4, 2011
Late last year eBay was sued by XPRT for infringement of four patents claiming aspects for automatic auctioneering. Last week, eBay requested inter partes reexamination of each of those patents (inter partes Request Nos. (2), (3), (4) & (8)).
There was also a race to the PTO. On Monday Vorsteen Consulting filed a request for ex parte reexamination of its U.S. Patent No. 6,878,358 (that claims a process for removing mercury from flue gases), together with a preliminary amendment narrowing the original claims and adding 33 new claims (see ex parte Request No. (2)). The same day, a third party requested reexamination of the same patent (see inter partes Request No. (1)), presumably presenting a different perspective on the validity issue.
Hyundai/Kia Infringement Willful Despite Rejections of Patent Claims in Pending Reexaminations
| April 1, 2011
Last October a jury found that Hyundai and Kia had willfully infringed two patents owned by Affinity Labs of Texas, claiming systems for integrating a portable electronic device, such as an MP3 player, with a second electronic device such as car sound system. The verdict awarded Affinity $2.4 million from Hyundai and $0.4 million from Kia. Judge Ron Clark determined not to enjoin Hyundai and Kia, but did assess them an on-going post-judgment royalty of $14.50 per accused Hyundai/Kia vehicle sold with an iPod cable.
What interests us is a post-trial motion by Hyundai/Kia that their infringement could not have been willful because the PTO had issued non-final rejections of the claims of both patents in co-pending reexamination proceedings – their argument was that they could not have acted in an objectively willful manner if PTO examiners believed that the claims were obvious over the prior art. We have seen in recent months a greater willingness among trial judges to take reexamination decisions into account when considering issues such as willfulness (here).
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