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
Microsoft, Sharp & Mitsubishi Electric Requests of their Own Patents, among Reexamination Requests Filed Week of November 21, 2011
| November 28, 2011
It is somewhat unusual these days for a patent owner to seek reexamination of its own patents. Yet last week, three sophisticated patent owners – Microsoft, Sharp and Mitsubishi Electric – did just that (see ex parte Request Nos. (3), (4) & (7)). A patent owner might request reexamination of its own patent where a prospective licensee has asserted that certain prior art undermines the validity of the patent and the patent owner is confident that it can successfully test that assertion of prior art at the PTO.
Taiwan Semiconductor has requested reexamination of Tela Innovations’ U.S. Patent No. 7,441,211 for digital circuit optimization (see inter partes Request No. (1)). In 2009 the companies announced “a strategic partnership to develop co-optimized design solutions using Tela’s innovative and patented lithography-optimized design technology and TSMC’s derivative processes.” There does not appear, however, to be any litigation between the two.
Purpose of Inter Partes Review and Post-Grant Review to Differ from that of Inter Partes Reexamination
| November 22, 2011
Accused infringers, hoping to challenge a patent, find current inter partes reexamination attractive, in part, because there is no statutory presumption of validity. And yet the threshold requirement of a “substantial new question of patentability” contains an irrebuttable presumption that all issues expressly addressed by the examiner in the original prosecution were correctly resolved. Inter partes reexamination is not granted under the current statute merely because the original examiner was wrong. Even if an accused infringer believes that the examiner made an obvious mistake, there must still be a new issue to justify inter partes reexamination.
All that changes with the new inter partes review and post-grant review procedures. The former is granted where there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The latter, where the allegations in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable” or where “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” There is no need for “newness” in the threshold requirements for the new procedures.
How Long Does Reexamination Take?
| November 21, 2011
A critical issue in cases with parallel District Court infringement actions and PTO reexaminations is whether the court will stay its proceeding pending completion of the reexamination. A court’s ruling on whether to stay often turns on how long it expects the reexamination to last. A judge is quite likely to stay a case when he or she expects a short reexamination, but is just as likely to deny a stay when a long reexamination is anticipated.
The PTO keeps statistics on the average length of reexaminations, and those statistics are routinely cited by patentees and accused infringers alike, as support for their respective positions. But there is no “average” reexamination and the length of pendency varies widely. Two PTO Board reexamination decisions from last week illustrate the point. Both reexaminations were inter partes and both resulted in cancelation of the claims at issue. Yet one lasted two years and eight months (95/000,444), and the other, six years and five months (95/000,099). Moreover, there is at least anecdotal evidence that the PTO is now handling reexaminations a good deal more expeditiously than its historical data would suggest.
HP Request for Reexamination of Nomadix Internet-User Redirection Patent, among the Requests Filed Week of November 14, 2011
| November 21, 2011
Two years ago, Nomadix sued Hewlett-Packard and a host of other companies for infringement of six Internet-systems patents. HP has now requested reexamination of one of those patents, U.S. Patent No. 6,633,894 (see inter partes Request No. (12)). An earlier reexamination of Nomadix’s ‘894 patent resulted in confirmation of the patentability of each claim without amendment.
A10 Networks has requested reexamination of four more Brocade server patents last week (see inter partes Request Nos. (4), (6), (8) & (9)).
On Friday reexamination was also requested against David Breed’s car occupant restraint patent, U.S. Patent No. 6,942,248 owned by Automotive Technologies International (see ex parte Request No. (9)). ATI has alleged infringement of the ‘248 patent by Honda and Hyundai, among others.
Microsoft Challenge to NetView Patent, among the Reexamination Requests filed Week of November 7, 2011
| November 14, 2011
Inter partes reexamination continues to be the weapon of choice for major Internet/software companies. Last week Microsoft requested reexamination of U.S. Patent No. 7,251,776 owned by NetView (see inter partes Request No. (1)). NetView is pursuing an action against Microsoft in Massachusetts, asserting infringement of the ‘776 patent.
Inter partes reexamination was also requested against U.S. Patent No. 7,426,264 which claims methods for mobile messaging and which is owned by Intellect Wireless (see inter partes Request No. (6)). It is not yet clear who filed the Request, but Intellect Wireless has previously sued Apple, Heio, HTC, LG, Samsung, Sanyo, T-Mobile, and Virgin Mobile for infringement of related patents.
After requesting reexamination of six Brocade server patents the previous week, A10 Networks filed three more requests last week. (see inter partes Request Nos. (3), (4) & (7)).
Google Challenge to Tierravision Geographic Database Patent among the Reexamination Requests Filed week of October 31, 2011
| November 7, 2011
Earlier this year Tierravision sued Microsoft, RIM and Google, accusing them of selling Internet-based map services that infringe U.S. Reissue Patent No. 41,983. Google has now replied by requesting reexamination of the ‘983 patent (see inter partes Request No. (3)). Google’s Request is a bit spicier than most. At the very outset, it asserts that “Tierravision buried the 18 claims subject to reexamination in a wildly varied set of 70 total claims,” with the result that “[t]hey bear little or no resemblance to the claims of the original patent, yet the original Examiner subjected them to virtually no scrutiny, allowing them in the first action without any explanation.” It seems likely that RIM and Microsoft will file their own Requests.
Research in Motion has requested reexamination of U.S. Patent No. 6,055,439 owned by MobileMedia Ideas (see ex parte Request No. (14)). The ‘439 patent was originally assigned to Nokia and is one of a portfolio of mobile phone patents assigned by either Nokia or Sony to MobileMedia.
And A10 Networks has struck back at Brocade Communications Systems, requesting reexamination of six Brocade server patents (see inter partes Request Nos. (5) – (10)). The six patents are the subject of a law suit between the two companies in the Northern District of California.
Facebook Motion to Stay Indacon Case Denied
| November 1, 2011
Last month Facebook persuaded its judge in Pragmatus AV. v. Facebook (2011 U.S. Dist. LEXIS 117147) to issue a reexamination stay despite the fact that Facebook’s request for reexamination had not yet been granted. Facebook has now attempted to replicate that feat in Indacon v. Facebook, but Judge John Primono of the Western District of Texas was not buying.
Where judges grant reexamination stay motions, it is generally because of the prospect of simplifying the issues for trial; and where judges deny stay motions, it is generally because of undue prejudice to the patentee. In the Indacon case, simplification from reexamination seemed unlikely to Judge Primono because “Facebook has requested review of only one of the two patents and of five of the ten claims alleged to have been infringed upon.” For the Judge, this likely failure of the reexamination to simplify the issues meant prejudice to the patentee: “Delaying the entire case for up to two years based on only one of the two patents alleged to have been infringed upon would appear to present a clear tactical disadvantage to Indacon.”
Judge Primono therefore denied Facebook’s motion without even touching on the point that the reexamination request had not been granted.
Reexamination stays are not automatic. At a minimum, an accused infringer seeking a stay must seek reexamination of a sufficient number of patent claims, so that simplification of issues is at least a realistic possibility.
