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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- IPWatchdog
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Will the Marine Polymer Expansion of Intervening Rights be Reversed?
| January 30, 2012
A few days ago the CAFC issued a notice that it would review, en banc, last September’s 2-1 panel decision in Marine Polymer v. HemCon, specifically the holding that absolute intervening rights arise where a patentee narrowly construes its claims in reexamination, thereby “effectively amending” those claims, even without an actual amendment of the claims. See 35 U.S.C. §§ 252 and 307(b). Such intervening rights, of course, eliminate all damages for the period before the issuance of the reexamination certificate concluding the reexamination. Until Marine Polymer, only a single trial had found intervening rights derived from argument alone.
There was, however, a dissent by Judge Alan Lourie who did not accept the “amendment in effect” argument. For him, there is “threshold requirement in §§ 307(b) and 316(b) that intervening rights apply only to amended or new claims.” Since that threshold requirement was not satisfied, there could be no intervening rights, Judge Lourie argued.
eBay Attack on Purple Leaf Electronic Transaction Patent among the Reexamination Requests filed Week of January 23, 2012
| January 30, 2012
Last week eBay replied to an infringement action filed against it in the Eastern District of Texas by Purple Leaf by seeking reexamination of the patent-in-suit (see inter partes Request No. (2)). The Purple Leaf patent claims a process for conducting electronic transactions and making payments over the Internet.
The winner for the most reexamination requests filed was Nanosolar that challenged three Solannex patents related to photovoltaic cells (see ex parte Request Nos. (5), (6) & (7)). The companies are in litigation over these patents in the Northern District of California.
Ex parte Request No. (4), involving U.S. Patent No. 5,337,753 owned by Biosig Instruments and claiming a heart rate monitor, is interesting in that it expressly calls for the PTO to “clarify the record” regarding the meaning of the claims. The Request notes the ‘753 patent has been through an earlier reexamination, but that the trial judge in a pending infringement action has refused to rely on the patentee’s assertions in that earlier reexamination because they are “ambiguous.”
Google Victorious Over Function Media Internet Advertising System Patents
| January 27, 2012
The PTO Board of Appeals handed Google an important victory today in its battle with Function Media over three Internet advertising patents – U.S. Patent Nos. 6,829,587, 7,240,025 and 7,249,059. Function Media sued Google and Yahoo! in the Eastern District of Texas in 2007, asserting that these patents were infringed on by “Google’s AdSense and AdWords technologies, Google Print Ads, and other products and services related to internet and print advertising.” Google replied to the suit in July 2008 by requesting inter partes reexamination of the patents.
This past September, after a jury trial, Magistrate Judge Everingham issued a judgment that two of the patents were not infringed and that all but four of the claims of the patents were invalid over the prior art. The judgment is now on appeal to the CAFC. (The third Function Media patent appears to have been dropped from the Texas case).
And today the Board compounded Google’s success in Texas by affirming prior art rejections of all the Function Media claims in reexamination.
Challenge to Round Rock RFID Patent, among the Reexamination Requests Filed Week of January 16, 2012
| January 23, 2012
In September an unidentified party requested reexamination of four RFID patents owned by Round Rock Research. Last Tuesday, reexamination was requested of another Round Rock RFID patent, Reissue 41,562, again by an anonymous party (see ex parte Request No. (1)).
Traditionally, reexamination has been requested of a substantial number electronics and Internet patents, but it is much less common for pharmaceutical and medical delivery patents. In recent weeks, though, that pattern seems to be changing, with more reexamination requests directed to pharmaceutical and medical delivery patents. That trend continued last week when reexamination was requested for two patents owned by Monosol claiming film to be used in drug delivery systems (see ex parte Request Nos. (3) & (4)). Monosol has sued BioDelivery in New Jersey for infringement of the patents.
Florida Magistrate Recommends Stay of Infringement Judgment Pending Reexamination
| January 18, 2012
Stay of infringement actions pending completion of a reexamination, even after trial, continues to be a possibility, at least in some jurisdictions. In a decision that might be unthinkable in other courts, Magistrate Judge David Baker of the Middle District of Florida recommended a stay last Thursday in Peach State Labs v. Environmental Mfg. Sols. (EMS), 6:09-cv-395.
The patentee Peach State had alleged that EMS infringed its patent for calcium carbonate removal. The trial judge granted summary judgment that the EMS had failed to show that the patent was invalid, and at trial last April the jury issued a verdict that the patent was willfully infringed and awarded enhanced damages to Peach State. The trial judge later ruled that EMS had engaged in litigation misconduct and issued a permanent injunction against its further infringement of the patent.
HTC Attack on FlashPoint Image Capture Patent among the Reexamination Requests filed Week of January 9, 2012
| January 17, 2012
HTC has requested reexamination of FlashPoint Technology’s U.S. Patent No. 6,278,447 for video interface system (see ex parte Request No. (9)). The ‘447 patent has survived two earlier ex parte reexaminations without cancelation or amendment of claims.
Reexamination was requested of another MobileMedia Ideas patent for data storage, U.S. Patent No. 5,977,887 (see ex parte Request No. (2)). The PTO records do not indicate the identity of the requester, but it might be HTC.
CAFC Denies Petition for Mandamus to Stay Infringement Case
| January 13, 2012
Trial judges uniformly apply the same standard to decide whether to stay an infringement action pending completion of a reexamination of the patent-in-suit. And yet, the decisions of individual judges vary enormously: judges for whom potential simplification is appealing tend to grant stays, whereas judges more concerned with potential prejudice to the patentee tend to deny them. The main impediment to more uniform treatment of stay motions is the difficulty that a losing party faces in obtaining review by the CAFC of the grant or denial. That difficulty was illustrated by Judge Linn’s denial of a mandamus petition in In re SDI Technologies.
There, Bose sued five companies – including Memorex – for infringing a patent related to sound reproduction systems. In November 2009, one of the defendants requested reexamination of Bose’s patent. After reexamination was granted, the initial trial judge stayed the case “as long as [the] PTO proceedings were not taking too long.” Bose later asked that the stay be lifted in view of the length of the reexamination, but the second judge in the case decided to continue the stay “until resolution of summary judgment motions based at least in part on the prior art before the PTO in the reexamination.” The judge eventually denied the summary judgment motions and refused to continue the stay.
Attacks on Two MobileMedia Ideas Patents for Communication Devices, among the Reexamination Requests Filed Week of January 2, 2012
| January 9, 2012
Reexamination was requested of two communications device patents owned by MobileMedia Ideas (see ex parte Request Nos. (2) & (3)). MobileMedia, that describes itself as “patent portfolio licensor of inventions adopted by manufacturers of smart phones, mobile phones and other portable devices including personal computers, laptops, netbooks, personal media players, e-book readers, cameras and hand-held game consoles,” obtained one of the patents from Sony and the other from Nokia. MobileMedia has sued HTC in the Eastern District of Texas for infringement of the two patents, plus nine other patents. What stake if any Sony or Nokia has in the litigation is unknown. It is not immediately clear who filed the requests, but it is likely HTC.
CBS Interactive requested reexamination of a paging system patent owned by Helferich Patent Licensing (see inter partes Request No. (2)). Helferich had sued CBS and a number of other media companies in Illinois and Arizona for infringement. CBS had requested reexamination of another Helferich patent at the end of December.
Google and Yahoo! Attack on Browser Patent, among the Reexamination Requests Filed Week of December 26, 2011
| January 3, 2012
Google and Yahoo! have requested reexamination of a browser patent owned by Interval Licensing (see ex parte Request No. (3)). Interval had already sued the two companies for infringement of the patent. Google and Microsoft have requested reexamination of a patent owned by Paid Search Engine Tools for a bid management system (see inter partes Request No. (1)). As above, there is a pending infringement action regarding the patent in question. This approach of two or more companies jointly requesting reexamination is becoming more common.
Ex parte reexamination was requested by an unidentified party against Intellect Wireless’ U.S. Patent No. 7,266,186 claiming a paging receiver and system (see ex parte Request No. (1)). Intellect Wireless has sued a number of companies – among them HTC, RIM, AT&T Mobility — for infringement of the ‘186 patent, as well as for infringement of U.S. Patent No. 7,310,416. HTC America filed inter partes requests against the ‘186 patent at the beginning of October, and against the ‘416 patent in November. Non-final rejections have already issued against both Intellect Wireless patents. According to HTC, the infringement action has been “effectively stayed pending a ruling” on HTC’s motion for summary judgment of inequitable conduct. The various reexaminations might have an impact on HTC’s inequitable conduct allegations.
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