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
Augme Attack on Yahoo! Streaming Media Patents among the Reexamination Requests Filed Week of October 24, 2011
| October 31, 2011
Last week Augme upped the ante in its patent fight with Yahoo! by requesting reexamination of two Yahoo! streaming media patents (see inter partes Request Nos. ((4) & (5)). Yahoo! has accused Augme and its partner World Talk Radio of infringing the patents by operating websites and related infrastructure that employ Augme’s “BoomBox” technology. The accused websites are VoiceAmericaTM and World Talk RadioTM Network.
Cisco has requested reexamination of a VirnetX network protocol patent – U.S. Patent No. 7,188,180 – which is one of six VirnetX patents in litigation in the Eastern District of Texas (see inter partes Request No. (2)). Cisco’s request follows requests from the previous week by Apple regarding two other VirnetX network protocol patents – U.S. Patent Nos. 7,418,504 and 7,921,211.
A request was also filed against an Affinity Labs content delivery method patent (see ex parte Request No. (3)). Affinity Labs has sued Apple for infringing the patent, though Apple is not likely to be the requester.
Marine Polymer and Section 112 Rejections in Reexamination
| October 27, 2011
The CAFC’s decision last month in Marine Polymer – granting intervening rights where the patentee “effectively amends” its claims by narrowing argument in reexamination – is expected to have a major impact on infringement litigation. What might not be expected, however, is the impact that Marine Polymer could have on reexamination.
A cardinal principle of reexamination practice is that the only possible rejections are prior art rejections based on patents or printed publications. The patentee opens the door to Section 112 rejections only when it amends its claims or adds new claims – and even then, the Section 112 rejections are limited to the claim limitations amended and the new claims. That measure of comfort enjoyed by the patentee might be lost if the PTO follows the holding of the Board’s decision issued today in Nissim v Time Warner, 95/000,312 There, the panel determined that the rationale of “amendment in effect” from Marine Polymer calls for Section 112 review of claim limitations that effectively narrowed in scope by argument.
Judge Campbell Denies Prosecution Bar in Reexamination
| October 26, 2011
Cases with parallel infringement litigation in District Court and reexamination at the PTO often present the issue of whether a patentee’s lawyer, with access to confidential information under a protective order, may also defend the patent-in-suit in reexamination. Accused infringers sometimes worry that the patentee’s counsel will use their confidential information, disclosed under the court’s protective order for use in the court case only, in the co-pending reexamination. Patentees, on the other hand, often do not want to be forced to hire separate litigation and reexamination lawyers.
Judge David Campbell of the District Court in Arizona wrote an informative decision last week in NeXedge v. Freescale Semiconductor et al., 2011 U.S. Dist. LEXIS 121737, summarizing the applicable standards for resolving such disputes. The accused infringer asked Judge Campbell to include in his protective order a provision barring each of the patentee’s lawyers, who had subscribed to the protective order, from participating in the reexamination.
HTC Claims Intervening Rights against Apple in ITC Case
| October 25, 2011
HTC might be making a comeback in the ITC’s investigation of mobile communication devices (337-TA-710). In July Administrative Law Judge Charneski issued an Initial Determination (ID) against HTC, finding that its accused communication devices infringe two data manipulation patents owned by Apple. That determination, if affirmed by the full Commission, would likely result in exclusion from entry into the United States of HTC’s infringing devices.
But in September the full Commission announced that it was reviewing Judge Charneski’s ID against HTC. And, in a step that will interest reexamination practitioners, HTC asked the ITC for a determination that it does not infringe one of the Apple patents – U.S. Patent No. 5,946,647 – because HTC is entitled to “absolute intervening rights” created in a co-pending reexamination of Apple’s ‘647 patent.
Last October HTC asked the PTO to reexamine the ‘647 patent in light of certain newly discovered prior art. The PTO granted the reexamination request and later rejected certain of the ‘647 claims. Apple replied to the rejection by distinguishing its claims over the prior art, but did not amend its claims. Specifically, Apple argued that its claimed step of “linking at least one action [computer subroutine] to the detected structure” requires linking “directly to the detected structure” (emphasis added). This argument, according to HTC, contrasts with Apple’s infringement arguments at the ITC that the action (computer subroutine) merely be associated with the detected structure.
Apple Reexamination Requests of Two VirnetX Patents, among those Requested Week of October 17, 2011
| October 24, 2011
Apple has requested reexamination of two more VirnetX network protocol patents – U.S. Patent Nos. 7,418,504 and 7,921,211 (see inter partes Request Nos. (2) & (3)). VirnetX has sued Apple and several others for infringement of the ‘504 and ‘211 patents, as well as four other related patents. Three of the other VirnetX patents-in-suit are in reexamination, and a fourth emerged from reexamination earlier this year with the validity of its claims confirmed.
CSR Technology has requested reexamination of two Bandspeed patents claiming methods for selecting communications channels based on use, in products such as computers and mobile telephones. (see inter partes Request Nos. (5) & (6)). Bandspeed has sued 38 companies for infringement of the patents, among them Acer, Dell, HP, HTC, Kyocera, LG, RIM and Samsung.
Facebook Request for Reexamination of Data Review Patent among those Requested Week of October 10, 2011
| October 17, 2011
A Markman hearing is currently scheduled for the beginning of November in Indacon’s case against Facebook for infringement of two patents related to storing and reviewing data. But on Friday Facebook requested reexamination of one of the Indacon patents (see inter partes Request No. (9)) and on the same day, asked Judge Orlando Garcia of the Western District of Texas to stay the infringement action “until Indacon files its response to the PTO’s first Office Action in the reexamination.” At that time, Facebook says, Judge Garcia could assess the effect that the reexamination might have on the case and whether the case should be stayed pending completion of the reexamination. Facebook focused on the imminent Markman hearing, noting that the reexamination could provide additional evidence that might affect Judge Garcia’s claim construction of both patents-in-suit. “No matter what the outcome of the reexamination, claim construction will surely be affected.”
In 2007 the U.S. International Trade Commission (ITC) issued a general exclusion order prohibiting the entry into the United States of ink cartridges that infringed any of ten Seiko Epson patents, plus a cease and desist order stopping the sale of infringing ink cartridges already in the United States. The principal target of these orders was Ninestar Technology. In March Ninestar asked the ITC for an advisory opinion whether its R-Series ink cartridges infringe any of the ten Seiko Epson patents. Ninestar has now expanded its challenge to the Seiko Epson patents by requesting reexamination of the ‘053 patent (see inter partes Request No. (1)). It will be interesting to see how Ninestar coordinates its challenges to that patent at the ITC and at the PTO, respectively.
Facebook Infringement Case Stayed Prior to Reexamination Grant
| October 14, 2011
Trial judges continue to apply their individual concepts of fairness to motions to stay infringement actions pending completion of co-pending reexaminations of the patents-in-suit. Accordingly, there is wide variation in how such motions are treated. On Tuesday, for instance, Judge Edward Davila of the Northern District of California granted a stay motion in Pragmatus AV. v. Facebook, 2011 U.S. Dist. LEXIS 117147, despite the fact that the PTO had not yet determined whether to grant reexamination.
Judge Davila emphasized the prospect of simplification of issues, relying heavily on the PTO statistics showing that a substantial percentage of reexamination requests are granted and that a substantial percentage of patents in reexamination result in claims being canceled or amended. The Judge therefore found that “Facebook’s request[s] for reexamination include[] all claims at issue in this litigation and there is a high statistical likelihood that reexamination will be granted and the claims will either change or be canceled,” thereby simplifying issues for trial.
Judge Robinson Allows Late Reliance on Reference
| October 13, 2011
Reexamination provided an unexpected benefit to the accused infringer in Asahi Glass v. Guardian Industries in Delaware. Last week Judge Sue Robinson allowed Guardian to rely upon a prior art reference at trial, even though the reference had not been timely identified or analyzed in the Guardian’s original expert report. The reference had been used by the Japanese Patent Office in 2005 to reject claims in applications corresponding to the patents-in-suit – so Judge Robinson might have been justified in ruling that Guardian had ample opportunity to present the reference on a timely basis.
The reference appears to have first come to the attention of the parties in July when it was applied by the examiner to reject the patents-in-suit in co-pending reexaminations. Judge Robinson denied a request by Guardian to assert the reference in a summary judgment motion, but yielded on use of the reference at trial. “Given the unusual circumstances of the surfacing of the Tani reference only recently during reexamination, its importance to the PTO as potential invalidating art, and the importance of giving the Federal Circuit as thorough a record as is practicable, the court will allow [Guardian] to present its obviousness theory based on the Tani reference at trial.” The Judge’s only proviso was that Guardian’s expert be presented for a deposition on the new reference and that Asahi’s expert be permitted to submit a supplemental report on the new reference.
Guardian’s lawyer who suggested reexamination must be a hero now in that camp.
Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
| October 11, 2011
1. Microsoft-i4i
The final footnote in i4i’s case against Microsoft might have been written by the PTO. Microsoft had petitioned for reconsideration of the PTO’s earlier denial of Microsoft’s request for reexamination of the i4i ‘449 patent, and at the end of last month the PTO denied Microsoft’s petition. The PTO, through CRU Director Irem Yucel, explained in some detail that Microsoft’s asserted prior art failed to present any issues not already dealt with in earlier examinations.
The i4i dispute is, of course, better known as the Supreme Court case confirming that an accused infringer must present “clear and convincing” evidence to prove that an issued patent is invalid.
Challenge to Intel Data Evaluation Patent, among Reexamination Requests Filed Week of October 3, 2011
| October 11, 2011
Intel obtained a patent last year for a method for sifting through data on “a support vector machine” to obtain certain information. The method appears to have diverse applications, including the identification of disease-causing genes. A request for reexamination of Intel’s patent was filed last Monday (see ex parte Request No. (1)). Though PTO documents do not disclose the identity of the Requester, it might be Health Discovery Corporation which is now attempting to provoke an interference with the Intel patent.
IBM requested reexamination of an Acqis computer security patent (see inter partes Request No. (3)). Acqis won a judgment against IBM earlier this year for $12 million in damages and $18.5 million in costs after a jury verdict of infringement of three other patents. On Thursday IBM filed a declaratory judgment action against Acqis regarding the ‘814 patent.
