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 ‘520 Moves toward Confirmation in Reexamination
| August 31, 2011
Oracle is likely to get a shot in the arm in its pending action in the Northern District of California, where it accuses Google of infringing seven patents and a series of copyrights related to the Java platform. Google replied to that infringement action by, inter alia, initiating reexamination of the seven patents. But it now appears that the validity of Oracle’s U.S. Patent 6,061,520 is headed to confirmation.
The PTO has already indicated that claims 1-4, 8, 10, 12-17, 20 and 22 of the ‘520 patent are valid over the prior art; claims 6-7, 9, 11, 18-19, 21 and 23 were rejected, and claim 5 was not subjected to reexamination. Earlier this month, lawyers for Oracle interviewed the examiners with the goal of persuading them to withdraw the prior art rejection, but no agreement was reached. Last Tuesday, Oracle filed an Amendment continuing to assert the validity of the rejected claims, but nonetheless canceling those claims. This cancelation of the rejected claims means that the PTO will now issue a reexamination certificate confirming the validity of the remaining claims.
Boston Scientific Stent Patent Survives Interference, Endosystems Patents Do Not
| August 30, 2011
Interference practice has long enjoyed a reputation for requiring precise attention to detail and complete adherence to its rules. That reputation can only be enhanced by the PTO’s ruling yesterday in Roubin v. Burmeister (Patent Interference No. 105,794), the real parties-in-interest being Endosystems and Boston Scientific, respectively.
The interference was suggested by Boston Scientific – specifically, an interference between its claims in Application No. 09/427,291 and the claims of Endosystems’ U.S. Patent Nos. 5,827,321, 6,106,548 and 6,475,236. The PTO later declared the interference, defining the interfering subject matter in the form of an alternative count: stents according to claim 1 of Endosystems’ 321 patent or claim 22 of Boston Scientific’s ‘291 application. Thus, the party that could prove that it was the first to invent a stent within the scope of the alternative count would win the interference, whereas the claims of the losing party would be rejected or canceled.
The PTO declared Boston Scientific to be the “senior party,” i.e., Boston had an earlier invention date than the “junior party” Endosystems. Endosystems did not dispute this point, and the PTO determined that Endosystems “has in essence conceded priority” to Boston.
Short Update on Reissue Declarations after Tanaka
| August 29, 2011
Last week we reported on the PTO’s adherence to the holding of In re Tanaka, allowing a patentee to file a reissue application where the only “reissue mistake” in the original prosecution was the failure to include certain dependent claims. But despite the PTO’s more liberal approach, the patentee must do more in its reissue declaration than check the box indicating that the reason for reissue was “the patentee claiming more or less than he had a right to claim in the patent” – the reissue declaration must actually specify the reissue error, e.g., the failure to include desired dependent claims.
In Reissue Application 12/433,592, filed in April 2009, the patentee, STMicroelectronics, submitted a preliminary amendment leaving the original claims intact, but adding 33 new claims. The reissue declarant checked the box indicating that a mistake had been made with the claims, but failed to state explicitly what that mistake had been. At the end of last month, more than two years after the reissue application was filed, the Examiner rejected all claims (under 35 U.S.C. § 251) , stating that the “reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application.”
In light of Tanaka, the path for the patentee to overcome the § 251 rejection is clear, and there will ultimately be a happy conclusion for its reissue application despite the lapse in its reissue declaration. Still, one has to ask why the PTO took so long to make what is no more than a formal rejection.
Attack on vTRAX Patent among Reexamination Requests Filed Week of August 22, 2011
| August 29, 2011
The sole business of vTRAX appears to be the enforcement of a single patent, U.S. Patent No. 6,865,268 covering systems for call-tracking in virtual call-centers. Pending in the Southern District of Florida are two actions in which vTRAX has accused Siemens, CSX, Avaya and a number of others of infringing the ‘268 patent. Now, a reexamination has been requested of the ‘268 patent (see ex parte Request No. (15)). We strongly expect that the defendants will soon move to stay both cases, particularly in view of the Southern District of Florida’s record of granting such motions.
PTO Begins to Implement Tanaka Reissue Standard
| August 25, 2011
Last December, the PTO Board affirmed the rejection of claims in a combined reissue-reexamination proceeding (11/430,299-90/007,824) in part, because of a defective reissue oath that asserted failure to include a dependent claim as the reissue error. Yesterday, the Board reversed the rejection, citing the CAFC’s recent decision in Ex parte Tanaka for the proposition “that the addition of dependent claims as a hedge against possible invalidity is within a reasonable interpretation of the reissue statute…” (As an aside, the Board maintained a separate rejection of the claims, affirming the Examiner’s claim construction).
Earlier this month, the PTO issued a notice indicating its intent to comply with Tanaka, stating that
[w]here the only change to a patent made in an application for its reissue is the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims, the applications claims are not be rejected as failing to state an error under 35 U.S.C. § 251. In addition, any rejection of record in a pending application on this basis will be withdrawn …
Obviously, most patentees wishing that they had more dependent claims will be reluctant to “open-up” their patents by filing a reissue application. Still, in those cases involving strong prior art against the main claims, reissue may be make sense.
Google Gets Mixed Result against Oracle’s Seventh Patent
| August 23, 2011
Oracle’s action in the Northern District of California, where it accuses Google of infringing seven patents related to the Java platform, is proceeding apace with a trial scheduled to start at the end of October. In the meantime, Google’s requests for reexamination are also moving quickly at the Patent Office. As of last week, the PTO had granted reexamination and rejected the claims of five of the Oracle patents; for the sixth patent, it has confirmed the validity of many of the claims and rejected several others.
On Friday, the PTO acted on Oracle’s remaining patent in dispute, U.S. Patent No. 6,910,205, rejecting each of the Oracle claims-in-suit. Claims 1-4 and 8 were rejected as being anticipated by one reference, and claim 8 was rejected as being anticipated by a second reference.
But the outcome was by no means a complete success for Google – the PTO refused to adopt a third anticipation rejection proposed by Google. And, in a rather pointed manner, the PTO refused to adopt two proposed obviousness rejections, stating that Google’s Request had failed to provide “a legally tenable rationale for combining the cited teachings under § 103” as required by KSR, and instead gave “mere conclusory statements.”
Facebook’s Reexamination Requests against two Pragmatus Patents, among those Filed Week of August 15, 2011
| August 22, 2011
On Thursday Facebook requested reexamination of two patents belonging to Pragmatus – U.S. Patent Nos. 7,421,470 & 7,433,921 – related to “real-time” communications over the Internet (see inter partes Request Nos. (7) & (8)). Also on Thursday, Facebook filed a motion to stay Pragmatus’ action in San Jose accusing Facebook of infringing the ‘470 and ‘921 patents. Pragmatus obtained the two patents from Intellectual Ventures five days before suing Facebook.
Google’s much-anticipated requests for reexamination of the two of the four Lodsys patents that are the subject of an infringement action against many, many Android® app developers, finally surfaced on the Internet (see inter partes Request Nos. (13) & (14)). Because they were filed by paper, rather than electronically, they are still not available from the PTO.
Gevo requested reexamination of Butamax Advanced Biofuels’ U.S. Patent No. 7,851,188 for recombinant microbial host cells useful in making isobutanol (see inter partes Request No. 10). Butamax sued Gevo for infringement of the ‘188 patent in January in Delaware.
Cisco requested reexamination of a VirnetX patent (see inter partes Request No. (6)). VirnetX is pursuing an infringement action in the Eastern District of Texas against Cisco and a number of others, including NEC and Apple.
Judge’s Mind not Changed by Reexamination Outcome
| August 18, 2011
Tuesday’s decision in TDM America v. United States 2011 U.S. Claims LEXIS 1717 has some interesting insights into how trial judges look at reexamination proceedings. TDM had sued the United States for infringement of two patents. Court of Federal Claims Judge Thomas Wheeler construed the claims and, on the basis of that construction, granted summary judgment of non-infringement. TDM subsequently moved for “relief from judgment,” asking Judge Wheeler to reconsider his claim construction in view of the examiners’ claim construction in reexaminations of the two patents that had concluded after the summary judgment grant. Essentially, TDM argued that the reexamination record constituted new evidence.
For a number of reasons, Judge Wheeler was not impressed by TDM’s motion. On the substance of the infringement issue, he took a “practicing the prior art” view, finding that the accused process was the same as a prior art process and therefore could not infringe.
Central to the Court’s analysis is the fact that the [prior art] Chemfix II process described in the PTO’s ex parte reexamination is very similar to the [accused] Clean Earth and OENJ processes challenged in TDM’s infringement suit. In reaching its decision that the ‘614 and ‘862 patents are valid, the PTO’s examiners ruled that the alleged prior art of the Chemfix II process is different from the process described in the patents. As repeatedly shown in the PTO’s 1,226-page record, the Chemfix II process is continuous, and therefore does not “accumulate a batch” in the mixer or perform any “weighing” in the mixer. These Chemfix II characteristics are the same as the Clean Earth and OENJ processes, and the reason that the Court found no infringement of TDM’s patents. (Emphasis added).
Did Google Request Reexamination of Lodsys Patents?
| August 17, 2011
We’ve seen lots of reports in the media that Google finally took action last Friday against Lodsys – specifically, Reexamination Requests against two of the four patents that are the subject of Lodsys’ infringement actions against numerous small developers of Android® apps. “We’ve asked the U.S. Patent Office to re-examine two Lodsys patents that we believe should never have been issued,” Google senior vice president and general counsel Kent Walker is reported to have told Wired.com, explaining that “[d]evelopers play a critical part in the Android ecosystem and Google will continue to support them.”
What we have not seen, however, are Google’s Requests. So far there is no evidence that they were actually filed. Of course, when they do surface, we will report our first impressions.
Also, one wonders about the other two Lodsys patents, given Google’s concern for the Android® app developers.
Incidentally, the best reporting and analysis of Lodsys’ case against the Android® developers is by our friend Florian Mueller at FOSS Patent Blog.
Apple’s Reexamination Counsel Avoids Deposition
| August 16, 2011
Apple is currently suing Kodak in the Western District of New York for infringing a series of patents, among them, U.S. Patent No. 5,634,074. Kodak initially replied with the customary defenses, but has now sought permission from the court to amend its pleadings to include an inequitable conduct defense, specifically that the “074 patent is unenforceable due to inequitable conduct committed by Apple, an inventor of the 074 patent and/or it attorneys during reexamination of the ‘074 patent.” The ‘074 reexamination was requested in April 2010, and completed at the end of May 2011, when the PTO issued a reexamination certificate confirming the validity of all the ‘074 claims.
In support of its new defense, Kodak subpoenaed Apple’s reexamination counsel, asking for documents and a deposition on:
(1) reexamination counsel’s analysis of the issues involved in the reexamination of the ‘074 patent;
(2) prosecution of the ‘074 patent, including its reexamination;
(3) reexamination counsel’s communications with Apple, other attorneys who prosecuted the ‘074 patent, and the USPTO;
(4) reexamination counsel’s knowledge of the Kodak-Apple litigation and other litigation concerning the ‘074 patent; and
(5) reexamination counsel’s understanding of reexamination practice before the USPTO.
