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 Patent to Emerge from Reexamination
| October 5, 2011
Oracle received good news Monday when the PTO issued a Notice of Intent to Issue Reexamination Certificate for U.S. Patent No. 6,061,520, canceling some claims, but confirming the validity of other claims. The ‘520 patent is one of the seven Java Platform patents in Oracle’s infringement action against Google. A trial is set to start in the Northern District of California on October 31, 2011, but there is a realistic possibility of the trial judge staying the case until completion of the reexaminations or of the parties settling.
An excellent report on the status of the Oracle-Google case was posted yesterday in FOSS PATENTS.
When does Inter Partes Reexamination Estoppel Kick In?
| October 4, 2011
The CAFC’s decision yesterday in Bettcher Industries v. Bunzl gives much needed guidance on the relationship between patent infringement actions in District Court and parallel reexamination proceedings at the PTO. The specific holding is that the inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) takes effect when “all appeal right [in the reexamination] are exhausted, including appeals to” the CAFC – an inter partes reexamination requester may not re-litigate in a later infringement action, any invalidity issue that it raised and lost, or could have raised but did not, in its inter partes reexamination.
Bettcher sued Bunzl for infringement of a patent for a rotary knife. Running parallel to Bettcher’s infringement action was an inter partes reexamination requested by Bunzl. At trial in the infringement action, the judge ruled that Bunzl was estopped under 35 U.S.C. § 315(c) to present prior art that had been asserted in the reexamination because the examiner had already determined that the patent was valid despite Bunzl’s prior art. The judge reasoned that the examiner’s validity determination was final because the examiner had issued a Right of Appeal Notice (a notice roughly analogous to an Advisory Action in original prosecution). At the end of the trial, the jury concluded that Bettcher’s patent was not invalid and not infringed.
The New U.S. Patent Law: A Hybrid patent law combining a first-to-file and a first-to-invent (first-to-publish)
| October 3, 2011
The newly enacted U.S. patent law is neither a pure first-to-file system, nor a pure first-to-invent (first-to-publish) system, rather it is a hybrid patent system combining both features.
Further, the one-year grace period is unique in that it is based on the effective filing date, which can be the earliest foreign filing date, and not on the U.S. filing date and public disclosure of the invention before filing a patent application within one year excludes third party’s disclosure (prior art) or prior application which is completely different from other countries’ standard grace period. Thus, the one-year grace period is sort of an absolute grace period.
Sony Attack on Walker Digital Patent
| October 3, 2011
Earlier this year Walker Digital (of Priceline.com fame) sued Sony and others for infringement a patent claiming an apparatus for providing information to a customer about a video program. Sony has now replied to that suit by requesting reexamination of the Walker patent (see ex parte Request No. (10)).
Reexamination was also requested for three more Round Rock Research patents, related to different technologies (see ex parte Request Nos. (2), (3) & (4)). Round Rock bought the three patents from Micron. It is not yet clear who has filed these reexamination requests for patents not involved in litigation.
