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
How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
| September 6, 2011
How does one assess the strength of a reexamination request? The typical request is intimidatingly long and technically involved. It is simply impossible, without devoting an enormous amount of (billable) time, to estimate the likelihood that a specific request will force the cancelation or amendment of the claims. Still, if only a bit of insight, not “metaphysical certitude,” is needed, there are certain signs that even a casual observer will spot.
(1) Do all the primary references or all the secondary references recite essentially the same subject matter? If so, the patentee might be able to overcome all the rejections by citing a single patentable distinction over the prior art, just as in original prosecution, an applicant can sometimes dispatch a large number of rejections with a single argument.
(2) Does the cited prior art disclose the feature of the claimed invention that appeared to be the basis for allowance of the original application? If so, there is likely to be a substantial new question of patentability and chances for a successful reexamination are greater.
(3) Do the prior art columns of the claim charts quote the references or do they simply repeat the wording of the claims? If the latter, the technical analysis in the reexamination request might be weak.
(4) Are the proposed rejections for anticipation or obviousness? Even if the latter, the proposed rejections might be strong, provided that there is a KSR reason for combining the references.
(5) Is legal argument needed to establish the references are prior art? Or are the references prior art under § 102(a) or § 102(e)? If either, the patentee might have an easy legal, non-technical, basis for overcoming the prior art.
Requests against Three Philips’ Green LED Patents among those Filed Week of August 29, 2011
| September 6, 2011
The war between Koninklijke Philips and Seoul Semiconductor over “green” light-emitting diodes (LEDs) intensified last week when Seoul Semi requested reexamination of three Philips’ patents – U.S. Patent No. 6,274,924, 6,547,249 and 6,590,235 (see inter partes Request Nos. (3) & (4) and ex parte Request No. (6)). Philips has accused Seoul Semi in the Northern District of California of infringing the ‘249 and ‘235 patents, plus two other patents, and Seoul Semi has counter-claimed for infringement of one of its own patents.
PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
| September 2, 2011
Yesterday the PTO Board handed NVIDIA victories (here, here) against two DRAM patents: the Board affirmed the examiner’s rejection of claims 1-25 of U.S. Patent No. 7,287,109 and reversed the examiner’s refusal to adopt proposed rejections of claims 1-37 of U.S. Patent No. 6,470,405, the so-called “Barth I Patents.” Rambus may now appeal the rejection of the ‘109 claims to the CAFC. Since the Board’s reversal of the examiner regarding the ‘405 herepatent constitutes a new ground of rejection, Rambus may argue that rejection with the examiner.
The ‘109 and ‘405 patents were the subject of an ITC investigation that concluded last August with a determination that the patents were valid and infringed. On the basis of that determination, the ITC issued a limited exclusion order prohibiting NVIDIA, HP and a host of other companies from importing infringing DRAMs into the United States. It also issued separate cease & desist orders against the individual respondents forbidding them from selling infringing DRAMs already in the United States. NVIDIA was reported to have taken a license under the Barth I Patents, thereby exempting it from the ITC’s remedial orders.
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