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
Sony Challenge to Olympic Developments Internet Game Patent, among Reexamination Requests Filed Week of May 23, 2011
| May 31, 2011
Sony Computer Entertainment America and Sony requested reexamination of a patent for a remote control device for Internet games, licensed to Olympic Developments, AG. (see ex parte Request No. (2)). The parties are currently involved in litigation over that patent, as well as U.S. Patent No. 5,435,585, in the Central District of California.
Requests were filed by eBiosciences against three patents for nanocrystal probes used for medical testing (see ex parte Request Nos. (17), (18) & (19)). The patents are the subject of a law suit in the Southern District of California and are owned, according to PTO assignment records, by Institutional Venture Partners that describes itself as “premier later-stage venture capital and growth equity firm.”
An interesting strategy was employed by Holburn, when it simultaneously requested reexamination of a Guy Carpenter & Co. patent for assessing risk and filed a complaint seeking a declaratory judgment for patent invalidity and non-infringement (see inter partes Request No. (1)).
Texas Jury Awards Fractus $23 Million against Samsung; Reexaminations of Patents Continue.
| May 25, 2011
On Monday a jury in the Eastern District of Texas returned a verdict in Fractus v. Samsung finding that Samsung’s cellular telephones infringed four Fractus patents, that the infringement was willful, and that the all four patents were valid over the prior art. The damages award was $23,129,321, a sum that Judge Leonard Davis might increase in view of the jury’s willfulness finding. A detail that must annoy Samsung is that the jury deliberated for only two hours.
But that is not the whole story. As we reported in April, each of Samsung, Kyocera and HTC (Fractus having also sued the latter two for infringement) is pursing inter partes reexaminations against the Fractus patents. Attached is a chart showing the current status of the 12 reexaminations. Each of the claims of the four Fractus patents-in-suit has been rejected. Although the rejections are non-final, and Fractus has ample opportunity to overcome them, they appear, at least to this outsider, to be rather strong. Plus, the PTO is advancing the reexaminations expeditiously, so that some of the Fractus claims might soon be facing final rejections.
Google Off to Good Start in Reexamination of Oracle Patents
| May 24, 2011
Oracle’s patent infringement action against Google and its Android®, involving seven Java platform patents and a series of related copyrights, is scheduled for a three-week trial starting October 31, 2011. But as Florian Mueller reported last week, Judge William Alsup is quite concerned about the feasibility of a jury trial, given the large number of patent claims that Oracle is currently asserting. In a written comment on the parties’ joint case management memo, the Judge cautioned that the “larger number of patents and patent claims asserted … the more practical it will then seem to simply stay this case and see which claims survive PT re-examination,” alluding to the reexamination proceedings currently pending at the PTO for each of Oracle’s seven patents.
Clearly, Judge Alsup is encouraging Oracle to trim the number of patent claims for trial, without actually ordering it to do so. Faced with substantial uncertainty on how its patents will fare in reexamination between now and the October trial, Oracle, just as clearly, does not want to make any premature commitment to specific patent claims. For its part, Google has not expressed its preference between a stay and a trial, stating that it “defers to the Court’s discretion to grant a stay pending reexamination.”
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Will Reexamination Rescue Lawson from an Injunction?
| May 23, 2011
Patent infringement litigation and reexamination proceedings are rarely synchronized, but the resolution of two reexaminations might arrive just in time to save Lawson Software from being enjoined in the ePlus v. Lawson in the Eastern District of Virginia. The patentee, ePlus, sued Lawson in 2009 for infringement of U.S. Patent Nos. 6,023,683 and 6,505,172 relating to systems for searching catalogs for product information to generate requisition orders, specifically electronic sourcing systems commonly used by healthcare facilities and government agencies. At the conclusion of a trial in January, the jury found that the ‘683 and ‘172 patents were valid and infringed. Judge Robert Payne is now considering whether to enjoin Lawson from future acts of infringement.
Running in parallel with the infringement case are reexamination proceedings at the PTO, one requested in 2006 by SAP[1] for the ‘683 patent (90/008,104) and two others, by Lawson in 2009, for the ‘683 patent (90/011,066) and the ‘172 patent (95/000,487). Judge Payne has so far rejected Lawson’s requests that the litigation be stayed pending completion of the reexaminations or that final rejections from the reexaminations be considered at the trial.
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Apple Attack on MONKEYmedia Audiovisual Patent, among the Reexamination Requests Filed Week of May 16, 2011
| May 23, 2011
Last December, Apple defended itself against MONKEYmedia’s patent infringement allegations in the Western District of Texas, by requesting reexamination of two of MM’s streaming media patents-in-suit. Apple has now sought reexamination of a third MM patent-in-suit (see inter partes Request No. (10)).
Reexamination was also requested by Xilinx for a circuits patent owned by Intellectual Ventures, but it is not clear from the PTO files whether the IV patent is the subject of any infringement litigation (see inter partes Request No. (8)).
And SemiLEDs Corporation has requested reexamination of a Group III nitride LED patent owned by Cree (see inter partes Request No. (7)). The companies are currently in litigation in the Middle District of North Carolina over that patent and four others.
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AppleとNikeによる訴訟手続き停止の申し立て（Motion To Stay）が判事により却下された
| May 20, 2011
侵害被疑者は再審査が係属するケースで訴訟手続きを停止するには、すばやく行動しなければならない この金曜日、Affinity Labs v. Nike and Apple, 2011 U.S. Dist. LEXIS 51665の事件で、カルフォルニア東地区裁判所のClaudia Wilken判事は、被告が再審査請求およびこれに基づく訴訟手続き停止の申し立てを遅らせたことを指摘し、被告の当該申し立てを却下した。
2010年2月、Affinityは、運動能力をモニターするシステム（例えば、万歩計）に関する2つの特許権侵害に基づき、NikeとAppleをテキサス東地区裁判所に訴えた。同年11月、同事件は被告の申し立てによりカルフォルニア地区裁判所に移管された。そして、その11日後、Appleは、問題の特許に対して特許庁に再審査請求を行った。2011年1月18日に再審査請求は特許庁に受理され、1月20日に拒絶理由が出された。同年3月22日、AppleとNikeは、地裁に手続の停止の申し立てを行った。
Wilken判事は、3つのテストを適用して判断した。すなわち、（１）訴訟の進み具合（Stage）、（２）再審査は訴訟の争点を単純化できるか、さらに、（３）訴訟停止は被申立て人側に不利益か（つまり申立て人の戦術的優位のためか）、これらを均一に適用して判断する。Wilken判事は、次のように判断した。まず第1ファクターを見ると、訴訟の段階は早期であり、これは停止する方に分がある。第2ファクターの単純化に関して、AppleとNikeは再審査請求人であり、再審査の拘束されることに法律上同意しているといえる。同判事は、再審査はすべての争点を解決する可能性があるとしながらも、実際に争点を単純化するかどうかの不確定さ（uncertainty）の観点から、第2ファクターはどちらともいえない（neutral）と述べた。
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Apple, Nike Motion to Stay Denied by Judge Wilken
| May 17, 2011
In an increasing number of District Courts, an accused infringer must act quickly if it wants to stay its case pending completion of a reexamination proceeding. For instance, on Friday, Judge Claudia Wilken of the Northern District of California denied defendants’ motion to stay in Affinity Labs v. Nike and Apple, 2011 U.S. Dist. LEXIS 51665, citing defendants’ delays in requesting reexamination and in filing their stay motion.
Affinity sued Nike and Apple in the Eastern District of Texas in February 2010, accusing the companies of infringing two patents related to systems for monitoring athletic performance (e.g., pedometers). Defendants’ motion to transfer to California was granted November 4, and 11 days later, Apple requested inter partes reexamination of the patents-in-suit. Reexamination of one patent was granted on January 18, 2011, and a rejection issued the next day; for the second patent, both a grant of reexamination and a rejection issued on January 20, 2011. On March 22, Apple and Nike moved to stay the District Court case pending completion of the case.
RIM Challenge of Two SimpleAir Patents, among the Reexamination Requests Filed Week of May 9, 2011
| May 16, 2011
RIM has requested reexamination of SimpleAir’s U.S. Patent Nos. 6,021,433 and 6,735,614 that claim contact alerts for incoming messages (see ex parte Request No. (15) & inter partes Request No. (5)). SimpleAir has accused Apple, RIM, Facebook and a number of others in the Eastern District of Texas of infringement of the ‘614 and ‘433 patents, as well as two other patents.
The week also saw yet another round in the war between Abbott Diabetes Care and DexCom over analyte sensors (see ex parte Request No. (5)).
And Square, Inc. requested reexamination of three REM Holdings patents for reader cards for cell phones (see inter partes Request Nos. (2), (3) & (4)), which are the subject of an infringement dispute between those companies in the Eastern District of Missouri.
Reexamination Amendment Precludes Infringement Liability for Pre-Certificate Period for eBay and Microsoft
| May 12, 2011
Earlier this week, Judge Claudia Wilken of the Northern District of California granted summary judgment in the DJ/infringement action, eBay, Microsoft v. PartsRiver, Kelora, holding that the patentee could not recover for any acts that occurred before the reexamination certificate issue date, November 2, 2010.
The patent-in-suit, U.S. Patent No. 6,275,821, claims a method for sorting search results obtained with a computer. The ‘821 patent successfully emerged from reexamination, but only after the claims had been initially rejected and then amended to overcome the rejection. In their motion for summary judgment, eBay and Microsoft asserted that the reexamination amendment substantively changed the scope of all the ‘821 claims, precluding (under 35 U.S.C. § 252) any liability for acts before the certificate date. The ‘821 patentee replied that if the original claims were properly construed, they would have the same scope as the claims amended in the reexamination.
Summary Judgment of Non-Infringement because of Reexamination Disclaimer
| May 11, 2011
Last year, 01 Communiqué sued LogMeIn and Dell in the Eastern District of Virginia for infringing U.S. Patent No. 6,928,479 claiming a system, method, or program for providing access to a personal computer from a remote computer over the Internet. That case, 01 Communiqué Laboratory v. LogMeIn and Dell, came to an abrupt end last week when Judge Claude Hilton granted LogMeIn’s motion for summary judgment of non-infringement.
The ‘479 patent had previously been the subject of a reexamination in which the claims were rejected over certain prior art. The ‘479 patentee overcame the rejection by submitting expert declarations, asserting that one skilled in the art would understand the claims to exclude the embodiments disclosed by the cited prior art, specifically embodiments in which more than one device performed the functions of the “location facility.” The PTO acquiesced and issued a reexamination certificate confirming the validity of the claims.
