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
- US Patent Post-Grant Opposition
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Judge Jordan Invalidates Reexamined Claims For Lack of Written Description
| July 7, 2011
Any judicial opinion that contains the word “chutzpah” is certain to contain some points of interest, at least for those not mentioned in the opinion. So it is in the case of Judge Kent Jordan’s grant of summary determination of invalidity in Stored Value Solutions v. Card Activation Technologies, 2011 U.S. Dist. LEXIS 71330 (D. Del., July 1, 2011). Stored Value (SVS) had sued Card Activation (CAT) for declaratory judgment that the latter’s U.S. Patent No. 6,032,859 was invalid over the prior art. The ‘859 patent claims a method for processing electronic transactions that involve an ATM card, prepaid debit card, or phone card.
Before the court was SVS’s motion for summary judgment that the ‘859 patent was invalid over certain prior art references. Both parties must have been surprised when the Judge granted summary that the ‘859 claims were invalid for failure of the specification to provide written description support.
Judge Jordan pointed to an earlier reexamination of the ‘859 patent where claims 20 and 29 – that recited an initial step of “entering an authorization code” and a later step of “entering confirmation of the sales transaction data by a customer” – were rejected over a prior art reference. CAT traversed the rejection by amending claims 20 and 29 to recite two sub-steps from dependent claims 21 and 32, specifically, the two sub-steps constituting the initial step of “entering an authorization code” already recited in claims 20 and 29. These were the sub-steps of “entering the clerk authorization code” and “entering the customer authorization code.” Judge Jordan complained that:
The PTO’s Recent Treatment of Reexamination Requests
| July 6, 2011
We recently looked at 100 inter partes reexamination requests, filed between December and the end of March, and what we found might surprise some.
First, the PTO is handling requests with “special dispatch.” In no instance did the PTO take its full three months to rule on a request. In one case, only 23 days. Generally, requests were granted or denied within two months of the request filing date. Moreover, for 53 of the requests, the PTO ordered reexamination and issued a non-final rejection on the same day. Several actions closing prosecution (ACP) have already issued.
Second, the PTO is looking at requests critically, denying 10 of the 100 requests. This compares with the PTO’s historical grant rate of 92% for ex parte requests and 95% for inter partes requests. Even where the PTO grants reexamination, it commonly disagrees with at least a few of the proposed substantial new questions of patentability (SNQs).
Thirteen Brocade Patents among the Targets of Reexamination Requests Filed Week of June 27, 2011
| July 5, 2011
A10 Networks may have set a record last week when it requested reexamination of 13 Brocade patents involving global servers (see ex parte Request Nos. (2)-(3), (5)-(8), (11)-(17)). The parties are in litigation over those patents in the Northern District of California.
Reexamination was requested against Lambda Optical Systems’ U.S. Patent No. 6,973,229 related to optical network systems (see ex parte Request No. (9)). Lambda sued a number of network companies last year for infringement of the ‘229 patent, including Alcatel-Lucent, NEC, Fujitsu and Nokia-Siemens.
