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
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Sorenson ‘184 Patent Claims might be subject to Intervening Rights
| December 28, 2011
Over the years, Jens Erik Sorenson has sued so many companies for infringement of his cyclic injection molding patent, U.S. Patent No. 4,935,184, that it might be the most well-known patent of the 20th Century. Although it expired several years ago, a number of infringement actions continue, including the consolidated case Sorenson v. Emerson Electric et al., 08-cv-60 (S.D. Cal.).
There, Defendants Emerson, Ryobi and Rally Mfg. recently moved for summary judgment that they were entitled to absolute intervening rights because of arguments made by Sorenson in reexamination, effectively amending the claims. Judge Barry Ted Moskowitz has initially denied the intervening rights motion, but he also states that he will reconsider it once he has conducted a Markman claim construction hearing at the end of February.
Challenges to Five Ronald Katz Telephone Patents, among the Reexamination Requests Filed Week of December 19, 2011
| December 27, 2011
Perhaps more than any other inventor, Ronald Katz has been the target of rivals’ requests for reexamination. This was certainly true this past week, when requests were filed against five Katz telephone system patents (see ex parte Request Nos. (1), (3) to (5) & (10)). According to Patent Office assignment records, the five patents are owned by General Electric Capital.
Vicor requested reexamination of a SynQor power converter patent (see inter partes Request No. (5)). Synqor has sued a number of companies, including Ericsson, for infringement of that patent.
And Ford has requested reexamination of a GM patent for a car body structure, specifically a roof panel-side frame construction (see inter partes Request No. (3)).
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PTO Board Reverses Rejection of Claim for being Broadened in Reexamination
| December 27, 2011
Does the statutory prohibition against broadening the scope of claims in reexamination (see 35 U.S.C. § 314(a); 37 C.F.R. § 1.906) apply on a claim-by-claim basis or to the scope of the claims as a whole? Put more concretely, may a patentee in reexamination broaden the scope of a dependent claim? The answer is that the prohibition applies to the scope of the claims as a whole, and a patentee is allowed to broaden its dependent claims.
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Cisco Challenge to Two VirnetX Network Patents, among the Reexamination Requests Filed Week of December 12, 2011
| December 20, 2011
VirnetX, having long ago vanquished Microsoft, is now in a difficult infringement action in the Eastern District of Texas against Cisco and a number of other network-makers. Last week Cisco requested reexamination of two VirnetX patents (see inter partes Request Nos. (3) & (8) – U.S. Patent Nos. 7,418,504 and 7,921,211.
Knowles Electronics is involved in a rather complicated litigation position. First, it sued Analog Devices in Illinois for infringement of U.S. Patent Nos. 7,439,616 and 7,537,964, and then, at the beginning of this month, it filed an ITC Complaint against Analog Devices, Amkor and Avnet for infringement of the ‘964 patent, plus infringement of U.S. Patent No. 8,018,049. Reexamination requests were filed last week against the ‘964 and ‘049 patent (see inter partes Request Nos. (1) & (2)), and reexamination was requested against the ‘616 patent last May. This multi-front dispute creates another opportunity for interaction between the respective forums.
Reexamination is rarely requested for design patents, but two requests were filed last week (see ex parte Request Nos. (7) & (17)). Challenges by reexamination to design patents seem to do much better than those in District Court.
Volkswagen requested reexamination of a GPS patent owned by Beacon Navigation who has sued a number of automakers for infringement of the patent (see inter partes Request No. (4)).
Medtronic’s New Intervening Rights Assertion Falls Short, for Now
| December 19, 2011
The recent split panel decision of the CAFC in Marine Polymer – holding that a patentee’s argument in reexamination “effectively narrowing” the scope of a claim could create absolute statutory intervening rights erasing damages for acts occurring before the issue date of the reexamination certificate – has caused a stir in the patent world. An argument made by the accused infringer Medtronic in Voda v. Medtronic (Case No. 09-cv-95), and not expressly rejected by the trial court, would extend the sweep of intervening rights even further.
Voda’s patent claimed a method for extending a catheter through the aorta, including the step of “advancing the catheter body distal end through the aortic arch.” In an earlier law suit, won handsomely by Voda, its expert witness testified regarding this limitation, perhaps implying that the limitation should be construed broadly, i.e., that Voda’s claims would encompass not only procedures of a so-called “femoral approach,” but also procedures using “a radial approach.” Voda later sued Medtronic in the present case, and Medtronic replied, inter alia, by filing requests for reexamination four times. The result of those reexaminations was the PTO’s confirmation of the validity of all relevant claims. Specifically, the examiner confirmed the claims because of “clarification that advancement of the catheter through the aorta included the entire aortic arch,” i.e., construing the claims to cover only procedures with the “femoral approach.”
Patent Invalidated in Court despite Earlier Success in Reexamination
| December 13, 2011
It is an article of faith among patent litigators that a patent emerging successfully from reexamination is nearly impervious to a later validity attack in an infringement action in court. Judge Robert Chatigny’s ruling last Friday in Jacobs Vehicle Equipment v. Pacific Diesel Brake, 2011 U.S. Dist. LEXIS 142228 (D. Conn.), however, shows that reexamined patents are not invulnerable.
A competitor sued the patentee for a declaratory judgment that the patent was obvious over the prior art, this despite an earlier confirmation by the PTO in reexamination that the claims were patentable over the art without need of amendment. After a lengthy trial, Judge Chatigny declared the patent invalid over the prior art. The Judge acknowledged that his conclusion was “at odds” with that of the reexamination examiner, but asserted that he had a better opportunity than the examiner to consider the prior art.
The record before me on issues relating to obviousness is far more complete than the one before the PTO. The ex parte reexamination interview lasted about forty-five minutes. The trial, which was more about invalidity than infringement, lasted several weeks. Nearly all the prior art was before the examiner. But he did not have the benefit of the extensive evidence and arguments submitted to me.
Attacking Patents Already Adjudicated to be Valid
| December 13, 2011
Readers might be interested in reading our thoughts on last Friday’s Construction Equipment case. See our story posted by our good friend Gene Quinn on IPWatchdog.
http://ipwatchdog.com/2011/12/12/cafc-pto-power-to-reexamine-already-adjudicated-patents/id=21189/
Sara Lee’s Intervening Rights Affirmed
| December 12, 2011
Last year Judge Susan Cox in Yoon Ja Kim v. The Earthgrains Company (aka Sara Lee) Intervening Rights Order, 2010 WL 62520, at *4-*5 granted summary judgment that the accused infringer, Sara Lee, was entitled to intervening rights under 35 U.S.C. §§ 252 & 307(b). Judge Cox found that the patentee had “substantively changed the scope” of its claims in reexamination when it replaced the transition phrase “consisting essentially of” with “consisting of.” The claim scope was also narrowed when the limitation “food acid” was changed to those food acids that are “present in an effective amount that slows down oxidation of ascorbic acid to dehydroascorbic acid during a manufacturing process of yeast-leavened products.” The Judge therefore concluded that the patentee was not entitled to damages for any acts of alleged infringement occurring before the issue date of the reexamination certificate.
On Friday the CAFC affirmed the summary judgment in favor of Sara Lee. A patentee of a reexamined patent is entitled to infringement damages for the period between the date of issuance of the original claims and the date of issuance of the reexamined claims only if the reexamined claims are “identical” to, i.e., “without substantive change” from, the original claims. If the patentee makes substantive changes to the original claims, the patentee is entitled to infringement damages only for the period following the issuance of the reexamination certificate. It is not relevant whether the claims were narrowed or broadened or whether the accused product is covered by the new claims.
LG Attack on Whirlpool Refrigerator Patent, among the Reexamination Requests Filed Week of December 5, 2011
| December 12, 2011
LG has requested reexamination of Whirlpool patent for icemakers (see inter partes Request No. 3). The Whirlpool patent is already the subject of a declaratory judgment action in Delaware, also filed by LG. The two companies have been involved in a series of disputes over refrigerator patents.
Hitachi Koki has requested reexamination of seven Milwaukee Electronic Tool patents for lithium battery packs for hand-tools (see inter partes Request Nos. (8) to (10) and ex parte Request Nos. (5) to (8)). Milwaukee has sued Hitachi in the Eastern District of Wisconsin for infringing the patents
Reexamination was also requested for two Ronald Katz patents for a telephonic lottery (see ex parte Request Nos. (3) & (4). Katz patents have been the subject of quite a number of reexaminations over the years.
Walker Digital Resorts to ITC to Work around Reexamination
| December 9, 2011
In April Walker Digital (of Priceline-Jay Walker fame) sued LG, Samsung, Sharp, Sony, Toshiba and a series of other makers of Blu-ray disc players in Delaware for infringement of U.S. Patent No. 6,263,505. In June an anonymous third-party requested reexamination of five of the 43 ‘505 patent claims, and in September Sony requested reexamination of the remaining 38 claims. Defendants then moved to stay the Delaware infringement action pending completion of the reexaminations.
In the meantime, the PTO has moved expeditiously with the reexaminations. It granted the first reexamination and then rejected all 43 claims as being either anticipated or made obvious by the cited prior art, but it denied Sony’s request for failing to raise any substantial new question of patentability not already raised in the first reexamination. The rejection relies, essentially, on a single prior art reference, yet it is quite detailed and might be difficult to overcome. The apparent strength of the rejection, plus the speed with which the PTO is moving in the reexamination, mean that there is a strong possibility that they will grant Defendants’ stay motion. A stay would mean that the validity issue would be decided by the PTO, rather than by the District Court, to the obvious advantage of Defendants.
