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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Judge Sparks Changes His Mind
| July 29, 2011
Tuesday we reported that Judge Sam Sparks had granted a limited, three-month stay of the infringement action, MONKEYmedia v. Apple et al., A-10-CA-319 (W.D. Tex.), pending completion of reexaminations of the three patents-in-suit. And he ordered the PTO to expedite the reexaminations.
Now, however, Judge Sparks has had second thoughts. Someone informed him that the patentee MONKEYmedia had filed motions at the PTO for extensions of time to answer pending rejections, and that when the PTO denied the motions, MONKEYmedia had asked the PTO for reconsideration. (In fact, MONKEYmedia requested two-month extensions in two of the reexaminations and a one-month extension in the third).
In a second order dated Wednesday, Judge Sparks stated the obvious: “the PTO cannot expedite its reexamination if the parties drag their feet.” The Judge indicated that he had limited the stay in his first order to three months because “MONKEYmedia in particular was adamant [that] any delay would be both wasteful and inequitable.” The patentee’s requests for extensions of time in the reexaminations, however, have changed his sympathies on the matter. “[B]ecause MONKEYmedia is apparently no longer in a hurry, neither is the Court.” Accordingly, the Judge has extended the stay until the reexaminations “come to a final conclusion, a process whose length will be dictated primarily by the actions of the parties before the PTO.”
Clearly, Judge Sparks was irritated with what he perceived to be contradictory positions taken by MONKEYmedia in his court and at the PTO on the effect of reexamination delay. Still, the deadlines faced by a patentee in reexamination are often severe. And it is not necessarily inconsistent for a patentee to want extensions at the PTO and to resist a stay of its infringement litigation. In any event, all parties must consider the effect that their arguments in one forum would have in other forums.
Broadcast Electronics Requests Reexamination of Mission Abstract Data Patents
| July 28, 2011
In March, Mission Abstract Data (which also does business as Digimedia) sued a host of broadcast companies in Delaware – including CBS and Cox – for infringing two patents, U.S. Patent Nos. 5,629,867 and 5,809,246. The ‘867 and ‘246 patents concern the selection and retrieval of music from databases; specifically, music to be broadcast over the air waves is stored and played from a computer hard drive rather than a CD player. According to assignment records at the PTO, Mission Abstract obtained the ‘867 and ‘246 patents in 2007, assigned them in February of this year to Intellectual Ventures who reassigned them back to Mission Abstract seven day later.
Yesterday, Broadcast Electronics – who is not a party to the infringement action – requested reexamination of the ‘867 patent, and this morning it sought reexamination of the ‘246 patent. Also yesterday, the Defendants moved to stay the case pending completion of the two reexamination proceedings.
Judge Sparks Orders PTO “to Expedite Reexamination”
| July 26, 2011
Yesterday’s two-page stay order by Judge Sam Sparks in the MONKEYmedia cases is noteworthy in two respects. First, he takes an interesting “compromise” approach to the issue of whether to stay a patent infringement action pending completion of reexamination proceedings at the PTO.
MONKEYmedia sued Apple, Walt Disney and a series of other entertainment companies last year for infringement of three data storage patents, U.S. Patent Nos. 6,393,158, 7,467,218, and 7,890,648. Apple replied to the suit by requesting reexamination of MONKEYmedia’s patents. The PTO granted reexamination for each patent, and as of July 8th, has issued non-final rejections against all the MONKEYmedia claims. On the basis of those rejections, Apple and the other defendants filed motions to stay the infringement actions.
This issue of whether to stay pending completion of reexamination has come to have an enormous impact on the outcome of infringement litigation. The issue has also sharply divided the nation’s trial judges, many tending to deny stays because of the significant delays inherent in reexamination, with others leaning toward granting stays because of the potential for simplification of issues at trial.
Verizon Attacks on Two TiVo Time-Shifting Patents among the Reexamination Requests filed the Week of July 18, 2011
| July 25, 2011
In 2009, TiVo sued Verizon and AT&T for infringement of U.S. Patent Nos. 7,493,015 and 7,529,465 related to time-shifting and play-back of media streams. Verizon has now requested reexamination of the ‘015 and ‘465 patents (see inter partes Request Nos. (7) & (8)).
Precision Biosciences filed for reexamination of Cellectis’ Patent No. 7,842,489 for single-chain endonucleases useful in genetic modifications of various sorts (see ex parte Request No. (7)). The two companies are engaged in several infringement and declaratory judgment actions in North Carolina and Delaware involving the ‘489 patent and certain related patents.
RIM requested reexamination of Mobile Media Ideas’ Patent No. 5,732,390 (see ex parte Request No. (9)). Moble Media has sued RIM for infringement of the ‘390 patent in the Eastern District of Texas.
Medical device patents are the subject of two requests, one for Voda’s U.S. Patent No. 6,475,195 for an angioplasty catheter guide (see inter partes Request No. (5)) and one for Boston Scientific’s U.S. Patent No. 5,922,021 for an intravascular stent (see ex parte Request No. (1)).
Oracle Case Against Google’s Android® Headed for a Stay?
| July 21, 2011
Reexamination offers a number of benefits to those accused of infringement. The most important of those benefits may very well be the prospect of a stay of the infringement action pending completion of the reexamination proceeding. Where a stay is granted, the reexamination becomes the primary focus of the case, with potentially enormous advantage to the accused infringer. But where a stay is denied, the benefits are often limited by the extent to which the trial judge allows the results of the reexamination to be used at trial.
The stay issue is now center stage in Oracle’s patent infringement action in the Northern District of California against Google and its Android®, involving seven Java platform patents and a series of related copyrights. Although a three week trial is scheduled to begin at the end of October, Judge William Alsup is concerned about the feasibility of a trial involving the large number of patent claims asserted by Oracle. The judge has therefore strongly encouraged Oracle to reduce its claims at issue, and indicated that he might stay the case pending completion of a series of reexaminations initiated by Google against the Oracle patents.
Yesterday, in response to an order from Judge Alsup, the parties filed a “Joint Summary” informing the Judge of the status of those reexaminations. For four of the patents, non-final rejections have issued against the claims asserted by Oracle. The PTO has confirmed the validity of the claims of U.S. Patent No. 6,061,520 (90/011,489) asserted by Oracle against Google. And reexamination has been granted for the two other Oracle patents, but the PTO has not yet issued a substantive Action, either confirming or rejecting those claims.
Attack on Jay Walker Patent, among the Reexamination Requests filed Week of July 11, 2011
| July 18, 2011
Walker Digital filed two complaints in April, accusing a who’s-who of video and electronics companies of infringing its U.S. Patent No. 6,263,505 related to data for video programs. Jay Walker of Priceline fame is on the named inventors on the ‘505 patent. A so-far unnamed party has now requested reexamination of Walker’s ‘505 patent (see ex parte Request No. (10).
A second reexamination request was filed by Thermo Fisher Scientific against Spectros’ U.S. Patent No. 6,711,426 for white LED medical spectroscopy equipment (see inter partes Request No. (5)). The ‘426 patent emerged from its first reexamination earlier this year, with some of the claims being canceled and some confirmed. The two companies are involved in an infringement action regarding the ‘426 patent in the Northern District of California, where Judge Sandra Brown recently allowed Spectros to add claim 19, one of the confirmed claims, to the case.
Unconcluded Reexamination not Part of Intrinsic Record for Claim Construction
| July 14, 2011
Judge Marsha Pechman made some interesting comments last week in F5 Networks v. A10 Networks, 2011 U.S. Dist. LEXIS 73689 (W.D. Wash.), regarding the use of the PTO’s reexamination records to construe claims. F5 had sued A10 for infringing four patents. A10 defended, in part, by requesting reexamination of the F5 patents. The examiner, however, denied each of A10’s requests. A10 petitioned the PTO to overturn the denials, alleging that the examiner had “ignore[d] the prosecution history, applied[d] the wrong legal standard, mischaracterize[d] the cited art, and adopt[ed] a claim construction that is significantly narrower than the construction asserted by the Patent Owner.” That petition is now pending.
In the meantime, A10 argued that Judge Peckham should consider the examiner’s treatment of the reexamination requests in her construction of F5’s claims – presumably, A10 believes that F5 is pressing for a broader claim construction in the infringement case than was used by the examiner to deny the reexamination requests.
In response to A10’s argument, the Judge carefully analyzed the use of reexamination records in subsequent infringement cases. She indicated that comments in reexamination by both the patentee and the examiner may be treated as intrinsic evidence. Although “the majority of the cases where courts have admitted evidence of reexamination proceedings have concerned the statements or arguments of patentees which have then been used by district courts to construe disputed claims,” there are also “instances where the patent reexaminer’s construction has been considered part of the prosecution history.” She explained that “[b]ecause an examiner in reexamination can be considered one of ordinary skill in the art, his construction of the asserted claims carries significant weight.”
Judge Randa Denies Preliminary Injunction Motion & Stays Case Pending Reexamination
| July 12, 2011
In recent days, a number of writers in the blogosphere have remarked on the strength of reexamination as a defense for parties accused of patent infringement, some bemoaning that strength, others cheering it on. The influence of reexamination on an infringement case, however, largely depends upon the strength of the prior art asserted. This link between reexamination and the strength of prior art was much in evidence in Judge Rudolph Randa’s decision last week on competing motions to stay and for a preliminary injunction in Generac Power Systems v. Kohler, 2011 U.S. LEXIS 72817 (E.D. Wisc.)).
Generac sued Kohler last October for infringing U.S. Patent No. 7,230,345 related to a specific method of operating engine-driven electrical generators. Kohler defended by filing a request for ex parte reexamination in December and a more robust request for inter partes reexamination at the end of February. The PTO granted both requests for reexamination and might soon merge them. Kohler also moved to stay the case pending completion of the reexamination proceedings. In the meantime, Generac asked that Kohler be preliminarily enjoined from “making, using, selling [or] offering to sell generators that feature the method” of the ‘345 patent.
Judge Randa addressed the stay motion first, but his primary interest was clearly directed to the request for preliminary relief. The Judge first considered the likelihood that Generac would ultimately succeed on the merits. Since Kohler “neither contested nor conceded infringement,” the sole issue on the merits was Kohler’s challenge to the validity of the ‘345 patent. Kohler “must [therefore] put forth a ‘substantial question of validity’ to show that the claims at issue are vulnerable, [though] the showing of a substantial question of invalidity requires less proof than the clear and convincing standard to show actual invalidity” at trial (emphasis added).
Cisco Attack on VirnetX on Network Security Patent, among Reexamination Requests Filed Week of July 5, 2011
| July 11, 2011
Late Friday, Cisco requested reexamination of VirnetX’s U.S. Patent No. 6,502,135 entitled “Agile network protocol for secure communications with assured system availability” (see inter partes Request No. (6)). The two companies are parties to an infringement action over the ‘135 patent in the Eastern District of Texas.
Shell Oil and Alcoa also countered infringement allegations by requesting reexamination of the patents-in-suit (see inter partes Request Nos. (3) & (4)).
Update on Facebook’s Inequitable Conduct Case after Therasense
| July 8, 2011
In January we reported on the case Tele-Publishing, Inc. v. Facebook, Inc., et al., No. 1:09-cv-11686-DPW, in which Facebook is accused of infringing U.S. Patent No. 6,253,216 entitled “Method and Apparatus for Providing a Personal Page.” Facebook defended by requesting reexamination of the ‘216 patent, asserting that it was invalid over an earlier patent to de Hond. The PTO granted reexamination. An initial rejection of all claims issued in April, 2010, and a final rejection issued in August of that year. An appeal is currently pending at the PTO Board.
What will interest reexamination lawyers, however, is Facebook’s allegation that the ‘216 patent is unenforceable because of applicant’s inequitable conduct during the prosecution of that patent. Facebook asserts that the ‘216 applicant was aware of the de Hond patent because that reference was cited and distinguished in several related applications, and that the applicant intentionally withheld de Hond in the ‘216 prosecution.
How does Facebook’s inequitable conduct defense stand up in light of the but-for standard for materiality now required by Therasense? Pretty well, actually. The CAFC described the materiality standard in Therasense as calling for a court to “determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.” The CAFC seemed almost to have reexamination in mind when it added that “the court should apply the preponderance of the evidence standard and give the claims their broadest reasonable construction” (emphasis added). The closest answer to the CAFC’s hypothetical question – what would the PTO have done with the undisclosed reference – might be found in reexamination.
