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
Tesco Benefits from Choosing Inter Partes Reexamination
| May 10, 2011
We have previously noted (here) that companies requesting reexamination still prefer ex parte reexamination over inter partes reexamination. For those patents where reexamination was requested last week, and where ex parte reexamination was an option because of the patent’s priority date, a clear majority of requesters chose ex parte reexamination. Whether this is because of the lower fee, or because of the possibility of withholding the company’s identity, we do not know.
The PTO Board’s decision yesterday in Tesco v. Weatherford/Lamb, however, demonstrated anew that the right of a requester to participate in inter partes reexamination, including the right to appeal to the Board, can be enormous. There, Requester Tesco appealed the examiner’s decision not to adopt two rejections proposed in the Request, and the Patentee Weatherford/Lamb appealed three final rejections maintained by the examiner.
The significance of the Board’s decision was not in its technical and legal analysis of the rejections, but in the final score: the Board reversed each of the three rejections maintained by the examiner, but reversed the examiner’s decision not to adopt the two rejections proposed by Tesco in its Request. These two rejections are now entered as “new grounds for rejection,” and the matter returns to the examiner for further consideration. Without Tesco’s participation in the appeal, the validity of the patent might now stand affirmed.
Medtronic’s Attacks on Edwards Lifesciences’s Heart Valve Patents, among Reexamination Requests Filed Week of May 2, 2011
| May 9, 2011
Medtronic has requested reexamination of two Edwards Lifesciences’ patents claiming heart valve systems for implantation, U.S. Patent Nos. 6,582,462 & 7,789,909 (see inter partes Request Nos. (3) & (4). The two companies are long-time rivals in that market and are currently in litigation in Delaware regarding the ‘462 and ‘909 patents.
There were also requests for reexamination of patents involved in infringement disputes that we have been tracking. One is U.S. Patent No. 7,349,012 which is one of the many patents in the litigation between MobileMedia Ideas and RIM (see inter partes Request No. (2)). The other is U.S. Patent No. 7,917,186 owned by DexCom which is in litigation against Abbott Diabetes Care (see ex parte Request No. (6)).
Three Tidbits
| May 5, 2011
1. PTO Affirms Reexamination of Katz ‘120 Patent
Earlier this week the PTO Board of Appeals affirmed the rejection of the claims in reexamination of U.S. Patent No. 5,974,120 assigned to Ronald Katz Technology Licensing. Essentially, the Board agreed with the examiner that the ‘120 claims in reexamination – that claimed a telephone processing system for receiving call from terminals in different call modes (e.g., “800” or an area code) – was obvious over certain combinations of prior art references, despite Katz’ technical arguments and assertions of commercial success.
A point that might interest some is that the ‘120 patent, which expired July 7, 2009, is only now being held invalid. Clearly, there is no fault to be found with the patentee, the reexamination requesters, or PTO. Yet one wonders about a patent system in which an invalid patent (assuming that the Board is correct) remains in force so long, here since October 1999.
RIM Defeats Motorola in Message Forwarding Patent Interference
| May 4, 2011
The claims of RIM’s U.S. Patent 6,219,694 are for forwarding a message generated by a mobile client. One of the independent claims recites configuring a “received message, prior to forwarding to the message recipient, such that the received message appears to the message recipient as if the received message originated at the sender’s email address associated with the host system.” In other words, you can send an email from the pub, but the recipient believes that you are in the office. Little surprise that such a valuable invention has twice survived reexamination.[1]
Motorola attempted to deal with RIM’s ‘694 patent by copying claims from that patent in a pending Motorola application, thereby provoking an interference between the patent and the application. On Monday, however, the PTO Board of Appeals determined (here) that the Motorola specification did not contain written description support under 35 U.S.C. § 112, ¶ 1 for those copied claims, and therefore Motorola did not have standing to continue in the interference.
Boston Scientific Wins Summary Judgment of Willfulness despite Rejection of Patent Claim in Reexamination
| May 3, 2011
The trial in cardiovascular stent case, Boston Scientific v. Cordis, is scheduled to start this Thursday. Last Thursday Judge Sue Robinson granted summary judgment that Cordis’ 2.25 mm Cypher stent infringes Boston’s U.S. Patent No. 5,922,021 and that Cordis’ infringement was willful.
Cordis had argued that if there were infringement of the ‘021 patent, that infringement was not willful because the ‘021 claims-in-suit have been rejected by examiner in the reexamination proceeding currently pending before the PTO. Cordis pointed specifically to a non-final rejection of the claims, dated February 18th, in which the examiner found Boston’s main claim to be anticipated by the newly considered Richter patent. According to Cordis, the examiner “found that Richter ‘404 discloses the exact feature that [Boston] has touted as the novel aspect of claim 36.” Cordis also asserted that the examiner was applying the broad claim construction asserted by Boston in an earlier infringement case between the two parties, in fact a construction broader than in the original ‘021 patent prosecution – “[t]he pending reexamination is the first time that the PTO has considered the patentability of claim 36 under the broader construction that was adopted in” the earlier litigation.
Attacks on Two LSI Logic Video Decoder Patents, among Reexamination Requests filed Week of April 25, 2011
| May 2, 2011
LSI Logic is pursuing an infringement suit against Vizio in the Central District of California (see ex parte Request Nos. (4) & (5)). On Thursday, reexamination was requested for two of the patents in that suit, in all likelihood requested by Vizio.
Also, Micro-Probe requested reexamination of another FormFactor patent – as previously reported, the two companies are in litigation in the Northern District of California (see inter partes Request No (3)). And Funai requested reexamination of one of the Freescale computer patents in the case between the two companies in the Western District of Texas (see ex parte Request No (7)).
