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
Hewlett-Packard Reexamination Request of Princeton Digital Patent, among Requests Filed Week of August 8, 2011
| August 15, 2011
Hewlett-Packard has sought reexamination of Princeton Digital’s U.S. Patent No. 4,813,056 for digital signals used in cameras, camcorders, copiers, scanners and various multifunction devices (see ex parte Request No. (7)). The ‘056 patent, originally owned by General Electric, is the subject of two infringement actions by Princeton in the Eastern District of Texas, against a slew of consumer electronics companies including HP, Ricoh, Kodak, and Fujifilm. Canon is reported this morning to have settled its case.
Garmin has requested reexamination of its own patent for a sports computer with GPS (see ex parte Request No. 6). Presumably, Garmin is attempting to beat Bryton, whom Garmin has sued for infringement of that patent, to the punch.
Finally, there were reports over the weekend that Google had requested reexamination against two Lodsys patents – U.S. Patent Nos. 7,222,078 & 7,620,565 – that Lodsys has asserted against a large group of small makers of applications for Android®. Google’s Requests, however, are not yet available.
Pending Reexamination has Major Effect on Injunction Decision
| August 9, 2011
Judge Colleen McMahon included some interesting comments on reexamination in her decision last week, ordering a permanent injunction against future infringement in Inventio v. Otis Elevator, 01-cv-5377 (S.D.N.Y.). Inventio, a subsidiary of Schindler, sued Otis in 2006 for infringement of U.S. Patent No. 5,689,094. At the conclusion of a trial last month, the jury found the ‘094 patent to be valid and infringed, and Inventio requested a permanent injunction.
Judge McMahon applied the four-factor test required by eBay, finding that the first three factors – irreparable injury to the patentee in the absence of an injunction, adequacy of money damages, balance of hardship between the parties – weighed heavily in favor of enjoining any future infringement. The Judge, however, was troubled by the fourth factor, the public interest. “Ordinarily, [the public interest] would weigh heavily in favor of the patentee,” but in this case, “[u]nbeknownst to the Court … by the time we went to trial, the PTO not only had ‘094 patent under reexamination … but … had issued an initial office action rejecting all the claims in suit.” Apparently, no one had told the Judge about the co-pending reexamination filed last December or about the PTO’s non-final rejection issued in April.
NuVasive Scores Major Comeback at PTO Board against Medtronic/Warsaw Orthopedic Patents
| August 8, 2011
The cervical fixation device manufacturer NuVasive won a major victory Friday in its on-going patent war with Medtronic and Warsaw Orthopedic. Warsaw, that owns U.S. Patent Nos. 6,428,542 and 6,936,050, and Medtronic, Warsaw’s exclusive licensee, sued NuVasive in 2008 in the Southern District of California for selling cervical plate devices that infringed the ‘542 and ‘050 patents, as well as 11 other related patents. NuVasive replied by requesting inter partes reexamination of the ‘542 and ‘050 patents, and that portion of Warsaw’s infringement action was stayed pending completion of the reexaminations.
The PTO ordered reexamination, but the examiner ultimately refused to adopt a series of NuVasive’s proposed prior art rejections. Friday, however, the PTO Board of Appeals reversed the examiner, finding that most of the ‘542 and ‘050 were obvious over the prior art. Essentially, the Board determined that the examiner had construed both the claims and the prior art disclosures too narrowly. Using the “predictable use of prior art elements according to their established functions” passage from KSR, the Board concluded that the claims were obvious. The Board’s entry of rejections is considered a “new grounds of rejection” under Rule 41.77(a), and Warsaw may now reopen prosecution or request rehearing.
Two Updates
| August 8, 2011
1. Google Attacks Oracle ‘720 Patent
As Oracle’s action in the Northern District of California for infringement by Google of seven Java platform patents continues apace, the reexamination at the PTO of those patents grinds on as well. Oracle’s U.S. Patent No. 7,426,720, for instance, stands rejected as being invalid over the prior art. Oracle disputed that rejection in a paper filed in early July, and last Thursday, Google commented on Oracle’s filing.
Essentially, Google asserts (1) that the ‘720 patent claims were originally allowed as a result of Oracle’s adding the limitation of copy-on-write to the claims after a final rejection, and that Oracle relied on this copy-on-write limitation to distinguish the claims from the prior art of record, (2) that the copy-on-write technology central to alleged novelty of the ‘720 patent was present in most Unix operating systems as early as 1994, and was widely-known in the art at least as early as 1988, and (3) that Oracle’s filing in July admits that the Bach reference satisfies the copy-on-write limitation.
As always, it is difficult for an outsider to judge how a reexamination is proceeding. Still, Google appears to be doing well, at least with respect to the ‘720 patent.
Requests for Reexamination of 27 Vesta Medical Patents, among those Filed Week of August 1, 2011
| August 8, 2011
It was a quiet week on the new reexamination front, except that CareFusion requested reexamination of 27 Vesta Medical patents related to disposal of medical waste. This does not appear, however, to have been done with hostile intent since Vesta is a subsidiary of CareFusion.
Hostile intent was clearly in evidence, on the other hand, when SAP America requested reexamination of a new Wellogix patent (see inter partes Request No. (1)). For good measure, on the same day, SAP filed a declaratory judgment action against the same Wellogix patent.
Finally, Reexamination was requested against an Intellectual Ventures patent related to field-programmable gate arrays (see ex parte Request No. (32)). Last December IV sued Altera and two other companies for infringing on that patent, as well as four other patents. Since reexamination has now been requested against all five IV patents-in-suit, one or more of the parties might now seek a stay of the litigation pending completion of the reexaminations.
CAFC Reverses Rejections in Reexamination of 7 of 8 NTP Patents
| August 2, 2011
NTP won an interim victory with yesterday’s CAFC’s decision to reverse the PTO’s anticipation rejection of seven email system patents in reexamination. In a separate decision, the CAFC affirmed the PTO’s rejection of an eighth NTP patent, also in reexamination. These are the patents that were the subject of NTP’s law suit against RIM several years ago, that resulted in a $612.5 million settlement for NTP.
Essentially, the CAFC found that the PTO’s construction of the claim “electronic mail message” as requiring “the entry of a destination address” only was too broad in view of the claims, the specification and the prosecution history. The CAFC concluded that a more narrow construction was appropriate: “an electronic mail message must include a destination address and must have the capacity to include an address of an originating processor, message content (such as a text or attachment), and a subject.” The CAFC therefore remanded the seven patents to the PTO “for further proceedings in accordance with this opinion,” applying this more narrow claim construction.
Request for Reexamination of 3M Lithium-Ion Battery Patent, among those Filed Week of July 25, 2011
| August 1, 2011
An unidentified party has sought reexamination of 3M’s U.S. Patent No. 7,078,128 for cathode compositions for lithium-ion batteries (see ex parte Request No. (10)). The ‘128 patent was the subject of an ITC investigation against Sony and others in 2007, which ended in settlements. No reexamination has yet been requested against 3M’s U.S. Patent No. 6,964,828 that was also in the ITC’s investigation.
In March Google requested reexamination U.S. Patent No. 6,981,040 in response to an infringement allegation by the ‘040 patentee, Personalized User Model (PUM). Now, Google has requested reexamination of U.S. Patent No. 7,685,276 (see inter partes Request No. 3), the other PUM patent-in-suit.
Requests were also filed against three Hewlett-Packard patents for circuits and switches (see ex parte Request Nos. (11), (12) & (13)).
