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
Oracle v. Google Android® Update
| June 30, 2011
Toward the end of May, we reported the status of Oracle’s patent infringement action against Google and its Android®, involving seven Java platform patents and a series of related copyrights. We also reported the reexaminations initiated by Google against each of Oracle’s patents. Essentially, we advised that Judge William Alsup was concerned about the feasibility of an October trial involving the number of patent claims asserted by Oracle.
Yesterday, the PTO issued a non-final rejection of Oracle’s U.S. Patent No. 6,125,447 (90/011,491). The examiner found that all 24 claims of the ‘447 patent are anticipated by either of two prior art references. Oracle may now traverse the rejection, and if the PTO maintains the rejection, Oracle may appeal it.
Patentee in Inter Partes Reexamination Faces Difficult Task in Proving that Real Party in Interest is not Named
| June 27, 2011
The major advantage for a party requesting inter partes, rather than ex parte, reexamination is the opportunity to reply to each of the patentee’s argument throughout the proceeding. The major disadvantage is that the requesting party must identify itself as “the real party in interest,” thereby subjecting it to the estoppel effects of 35 U.S.C. § 315(c) § 317(a) & (b).
The “real party in interest” arises most often where a patentee sues multiple defendants for patent infringement, and one of the co-defendants requests inter partes reexamination, identifying only itself as the real party in interest. Since the statutory inter partes estoppel effects are applicable only against the co-defendant pursuing reexamination, the patentee faces the prospect of facing the validity defenses raised in the reexamination a second time, either in the infringement litigation or in subsequent inter partes reexaminations. This means that those co-defendants, who have not requested reexamination, stand to benefit if the reexamination is successful, but face no adverse estoppels if the reexamination is not successful. The patentee, in such a case, will challenge the identification of a sole co-defendant in an inter partes reexamination request as failing to identify all the real parties in interest and ask the PTO to vacate the reexamination order.
Challenge to Unigene’s Osteoporosis Patent, among the Reexamination Requests Week of June 20, 2011
| June 27, 2011
Unigene Laboratories obtained a judgment in 2009 against Apotex for infringement of Unigene’s Reissue Patent No. 40,812 covering Unigene’s FORTICAL® formulation for treatment of postmenopausal osteoporosis. The only significant issue in that case appears to have been patent validity. The case is on appeal to the CAFC. This past Wednesday, reexamination was requested for the ‘812 patent, presumably by Apotex, though the PTO records are not yet clear (see inter partes Request No. (2)).
Reexamination was requested for another Hydro-Quebec lithium battery, but the PTO records don’t yet disclose which one (see inter partes Request No. (3)) – Hydro-Quebec has at least five.
Semiconductor Patents Prominent among the Reexamination Requests the Week of June 13, 2011
| June 20, 2011
Sony has requested reexamination of Tessera’s U.S. Patent No. 6,885,106 for stacking semiconductors (see inter partes Request No. (9)). The ‘106 patent is one of a large portfolio of chip-packaging patents that Tessera has successfully enforced over the past decade.
Other Requests involving semiconductor patents were a filed by Cypress Semiconductor against an Agilent patent and by Everspin against a Nexedge patent (see inter partes Request Nos. (7) & (8)).
Also of commercial significance was a reexamination requested by A123 against a Hydro-Quebec patent for lithium batteries (see inter partes Request No. (4)). The companies are in litigation in the Northern District of Texas over that patent.
Court Stays Case on Basis of Reexamination Grant
| June 15, 2011
Last Wednesday Judge Ruben Castillo of the Northern District of Illinois stayed the case Chicago Mercantile Exchange v. Technology Research Group pending completion of a reexamination. What makes the stay interesting is that Judge Castillo did not expressly identify the three-factor standard generally applied to stay motions – the stage of the case, the possible simplification of issues, undue prejudice to the patentee – and then balance those factors. Rather, he appears to have carefully considered the merits of the reexamination request and then assessed the probability of the patent claims being held invalid in the reexamination.
Chicago Mercantile filed a declaratory judgment action against Technology Research in June 2009 seeking a judgment of non-infringement and invalidity of U.S. Patent No. 5,963,923; and Technology Research counter-claimed for infringement of the ‘923 patent. A request for reexamination of the ‘923 patent was filed in February, and at the beginning of May, the PTO ordered reexamination. When Judge Castillo learned of the reexamination, he sua sponte asked the parties for briefing on whether a stay should issue pending completion of the reexamination.
“Broadest Reasonable Claim Construction” in Reexamination: Does it really Matter?
| June 14, 2011
Lawyers promoting reexamination often assert as one of its principal advantages the fact that the PTO gives claims their “broadest reasonable construction” consistent with the specification, whereas courts follow the CAFC’s 2005 Phillips Decision and construe claims more narrowly. The point for accused infringers is that claims construed broadly in reexamination are more likely to be found invalid over the prior art than are claims construed narrowly in the courts.
This difference in claim construction is certainly a clear theoretical distinction between reexamination and patent litigation, but what is the practical result of this theoretical distinction? Each reexamination lawyer is likely to have a different answer, usually based on anecdote, not statistics. My personal answer is that despite the different standards, there is usually no difference in how the claims are construed or in the outcome of the validity issue.
And my anecdote is the PTO Board decision Friday, Ex parte Lacks Industries (90/009,422). There, Lacks Industries had sued Hayes Wheel Int’l and another company for infringement of U.S. Patent No. 5,597,213. Hayes replied by requesting reexamination of the ‘213 patent, and the trial judge stayed the litigation pending completion of the reexamination. Thus, reexamination would have a decisive, or at least significant, impact on the outcome of the dispute. And, as will be seen, claim construction would have a major effect on the reexamination.
Reexamination Sought against Ogma Patent
| June 14, 2011
Yesterday an unidentified party requested reexamination of U.S. Patent No. 5,825,427, a patent of some commercial significance for motion-sensitive sound effects devices in projectors. The ‘427 patent is owned by Ogma, LLC, located in Longview, Texas.
In March Ogma sued 3M, Canon and 26 other projector-makers in Marshall, Texas, accusing them of infringing the ‘427 patent. Ogma also filed a complaint with the U.S. International Trade Commission on the basis of the ‘427 and a related patent, U.S. Patent No. 6,150,947. The ITC instituted an investigation in May. Ogma filed a second ITC complaint, which will likely be merged with the pending investigation.
YouTube Attacks on Pragmatus’s Media File Storage Patents, among Reexamination Requests Filed Week of June 6, 2011
| June 13, 2011
Earlier this year, Pragmatus sued Facebook, LinkedIn, Photobucket, and YouTube for infringing three patents for systems for storing media files. YouTube has now requested reexamination of those patents (see inter parte Request Nos. (6), (8) & (9)).
Apple has requested reexamination of Softview’s U.S. Patent No. 7,831,926 related to systems for “zooming and panning” images from the Internet on mobile devices. Softview has sued Apple and AT&T Mobility in Delaware for infringing the ‘926 patent. Softview is also involved in a separate case with HTC in Washington state regarding the ‘926 patent.
IDT requested reexamination of Alexsam’s U.S. Patent No. 6,000,608 which relates to activation of “stored value” card (see ex parte Request No. (3)). In February, Alexsam won a $9.06 million jury verdict against IDT in the Eastern District of Texas for infringement of the ‘608 patent and a second patent.
TiVo Attack on Four Verizon Patents, among Reexamination Requests Filed Week of May 30, 2011
| June 6, 2011
On Thursday, TiVo requested reexamination of three Verizon cable box patents, and on Friday, of a fourth Verizon patent (see ex parte Request Nos. (9) through (12)). These requests are only the latest development in an on-going patent war between the two companies that includes fronts at the ITC and in two District Courts.
Reexamination was requested for SynQor’s U.S. Patent No. 7,272,021 for power converters (see inter partes Request No. (1)). In January, Judge Ward enjoined Artesyn/Astec and a series of other companies from infringing four SynQor patents, among them the ‘021 patent. It is not yet clear from the PTO records who filed the request.
And Abbott Diabetes Care requested reexamination of three DexCom analyte-sensor devices in the long-term patent dispute between the companies (see ex parte Request Nos. (4), (5) & (6)).
TiVo Requests Reexamination of Three Verizon Patents
| June 3, 2011
Two weeks ago ITC Administrative Law Judge James Gildea issued an Initial Determination (ID) finding that Cablevision Systems and TiVo had violated Section 337 by the importation into the United States of digital TV cable boxes that infringe TiVo’s U.S. Patent No. 6,381,748. In his ID, Judge Gildea also found that ‘748 was valid over the prior art and that a domestic industry exists in the U.S. based on the claims of the ‘748 patent. The Judge additionally determined that there was no violation of Section 337 with respect to Verizon’s four other patents-in-suit, though the public record is not clear on the specific reasons for the no-violation finding. The investigation now goes to the Commission for its review; if the Commission affirms Judge Gildea’s determination of violation, it may order the exclusion of the infringing cable boxes from the U.S. and prohibit future sales of infringing cable boxes that are already in the U.S.
Yesterday, TiVo took steps to deal with Judge Gildea’s determination of violation by requesting reexamination of the ‘748 patent. TiVo might be hoping to affect the ITC’s decision on a suitable remedy for the violation, but in the past the Commission not considered pending reexaminations at the remedy stage of a case. TiVo might also hope to affect the Commission’s consideration of any prior art validity issues raised in Judge Gildea’s ID, but the ‘748 reexamination is likely filed too late to affect the Commission’s review of those issues. Or perhaps, TiVo’s goal with the reexaminations is to affect the outcome of co-pending infringement litigation. When the content of TiVo’s reexamination request becomes public, its strategy might be more evident.
