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
Inter Partes Reexaminations Moving More Quickly, at least most of the Time
| February 28, 2012
There is a good deal of anecdotal evidence that the PTO is handling inter partes reexaminations very expeditiously, some might even say precipitously. Yet, from time-to-time, an outlier case arises casting doubt on the capacity of the reexamination system to substitute for the District Courts as an efficient arbiter of prior art validity issues.
Such a case is Tempo Lighting v. Tivoli (95/000,067) where, today, the PTO Board of Appeals confirmed the rejection of two of the claims in reexamination, but reversed the rejection of the remaining 11 claims. The PTO docket does not show an inordinate amount of activity caused by the patent owner or the requester (though there was a brief period of abandonment). The request was filed at the end of 2004, followed by multiple non-final rejections, an action closing prosecution in May 2009, a right of appeal notice in June 2010, the patent owner’s appeal brief in September 2010, and an oral hearing at the Board this past November.
How is Interference Practice Doing? Alive & Well, Thank You.
| February 27, 2012
Where should we look for guidance in following the recently proposed rules for the various post-issuance proceedings created by the AIA? A prime source for such guidance will be rich lore of past interference practice, as suggested by the many parallels between the proposed AIA rules and existing interference rules. The PTO suggested as much when it identified interferences as “contested cases” in its comments on the proposed rules.
Interference cases themselves – not just the case law they have generated over the years – will also continue, at least in some instances, to be an effective means for challenging patents for years to come, despite our recent adoption of a first to file system. In particular, interference is often a recommended approach for a party to assert that it has been improperly omitted as an inventor from an issued patent.
Novozymes Attack on Patent for Ethanol-Producing Enzyme Composition, among the Reexamination Requests Filed Week of February 20, 2012
| February 27, 2012
Novozymes A/S, considered the world’s largest maker of industrial enzymes, requested reexamination of the recently-issued U.S. Patent No. 8,048,657 claiming an enzyme composition for making ethanol (see ex parte Request No. (8)). Danisco, a DuPont subsidiary, owns the patent and is considered the world’s second largest maker of industrial enzymes. Although there does not appear to be pending infringement action regarding Danisco’s ‘657 patent, one might soon be filed. Novozymes has successfully sued Danisco for patent infringement, obtaining an $18.3 verdict in the Western District of Wisconsin at the end of October.
The refrigerator war between LG Electronics and Whirlpool opened a new front last week, with LG requesting reexamination of a Whirlpool ice-delivery patent (see ex parte Request No. (2)), and Whirlpool requesting reexamination of an LG icemaker patent (see inter partes Request No. 2)). The companies have been battling in recent years in several District Court infringement actions and in an ITC investigation.
The recent increase in the number of reexamination requests filed against medical device patents continued last week with a request filed by Boston Scientific against a stent patent owned by OrbusNeich (see inter partes Request No. (3)). OrbusNeich has a pending infringement action against Boston regarding the patent.
And a request was filed against a SmartData patent for a modular computer (see inter partes Request No. (4)). Although the PTO records do not yet show who filed the request, it is likely Apple, whom SmartData recently sued for infringing that patent.
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An Update on Oracle’s Infringement Case against Google
| February 24, 2012
It has been a rocky few weeks for Oracle on the PTO reexamination front of its patent and copyright dispute with Google. Of the seven patents that Oracle has alleged to be infringed by Google’s Android®, the PTO rejected the claims of three this month. (These developments are put into perspective by Florian Mueller in his excellent post Wednesday http://fosspatents.blogspot.com/2012/02/non-final-invalidation-of-james-gosling.html).
At the beginning of the month, the PTO made final its rejection of all the claims in the ex parte reexamination of Oracle’s U.S. Patent No. 5,966,702. Although the examiner withdrew one of the two previous anticipation rejections, she maintained the other, addressing each of the arguments Oracle had raised. Oracle has the right to traverse this final rejection, but the examiner is unlikely to reverse her position, and Oracle will likely need to appeal the rejection to the PTO Board of Appeals.
IPO Webinars on New Inter Partes Proceedings, Today and Tomorrow
| February 21, 2012
The Intellectual Property Owners Association is sponsoring two webinars, today and tomorrow, on the PTO’s recently proposed rules for the new AIA inter partes proceedings. Today, starting at 2:00 PM, the session will consider the preliminary phase of those proceedings, from filing through institution. Tomorrow’s session will cover the trial phase, i.e., the period after institution through conclusion.
Most notably, the webinar panelists include Administrative Patent Judge Michael Tierney who was a key figure in drafting the rules proposed for the new proceedings.
See the following link to register for one or both of the sessions: http://www.ipo.org/AM/Template.cfm?Section=Search&Template=/CM/HTMLDisplay.cfm&ContentID=32203.
Skype Challenges to Three Eidos Communications Patents among the Reexamination requests Filed Week of February 13, 2012
| February 21, 2012
Skype has requested reexamination of three telephone voice message patents owned by Eidos Communications (see inter partes Request Nos. (5), (7) & (8). An infringement action by Eidos against Skype has been pending before Judge Sue Robinson in Delaware since 2009.
Xilinx filed a request against a mobile network patent owned by Intellectual Ventures (see inter partes Request No. (9)). The two parties are involved in infringement litigation, but it is not yet clear whether this patent is part of that litigation. Xilinx has aggressively pursued reexamination against a number of IV patents.
An undisclosed party requested reexamination of two semiconductor patents owned by DRAM Memory Technology (see ex parte Request Nos. (11) & (12). DRAM has sued Hynix and a large number of other companies for infringement of those patents.
The record for the fastest reexamination request was tied last Tuesday when an un-named third party requested reexamination of U.S. Patent No. 8,116,906 that issued the same day to Pevco Systems International (see ex parte Request No. (9)).
It’s Still the Trial Judges Who Decide Reexamination Stay Motions
| February 16, 2012
We were initially excited to see CAFC’s recent order in Synqor v. Artesyn Techs., denying the accused infringer’s motion to stay the appeals, pending completion of inter partes reexaminations of two of the five patent-in-suit. A jury had found the five patents to be valid and infringed, and awarded damages to the patentee. In the meantime, the patentee is appealing to the PTO Board of Appeals the reexamination rejection of the claims of two of those patents. Reexaminations of the other three patents are still pending before the reexamination examiner.
In its motion to the CAFC appeals, the accused infringer argued that those appeals would be best considered once the five reexaminations had been completed. Judge Moore, speaking for the CAFC, took a hard stance against the accused infringer, characterizing the remaining 10-14 month pendency of the two appeals to the PTO Board as “lengthy” and the requested stay as “unwarranted.” The possibility of simplification of issues from the reexaminations was not even mentioned.
PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
| February 13, 2012
The PTO has now published a lengthy set of proposed rules for administering the various post-issuance proceedings created by the America Invents Act (AIA) – supplemental review, inter partes review, post-grant review, covered business method patents, and derivation. If you have time to read just one notice, choose the “Practical Guide for Proposed Trial Rules.” It was issued Thursday and summarizes the procedures to be followed in the latter four inter partes-type proceedings. (Incidentally, acronyms will be important to master: e.g., PO = patent owner, IPR = inter partes review, PGR = post-grant review, CBM = covered business method patents).
The most useful item in the Guide is a time line for a typical proceeding.
Challenges to Medical Device Patents Prominent among Reexamination Requests Filed Week of February 6, 2012
| February 13, 2012
There has been a notable increase in the number of reexamination requests filed against medical device patents. That trend continued apace last week.
First, Innova Labs requested reexamination of two Inogen patents claiming structures for delivering therapeutic gases to patients (see inter partes Request Nos. (3) & (4)). Inogen has sued Innova in the Central District of California for infringement of the patents. Also, Globus Medical requested reexamination of three surgical access apparatus patents owned by Nuvasive (see inter partes Request Nos. (6), (7) & (8)). Those companies are locked in an infringement action in Delaware.
And reexamination was requested for yet another Round Rock Research RFID patent and yet another Ronald Katz telephone patent (see ex parte Request Nos. (3) & (5)).
Attack on Walker Digital Image Management Patent, among the Reexamination Requests Filed Week of January 30, 2012
| February 6, 2012
Reexamination was requested last week by an un-identified party against a Walker Digital patent that names Jay Walker of Priceline fame as an inventor (see ex parte Request No. (1)). The patent claims a computer readable storage medium in a camera, which stores instructions for the camera’s management of images. Walker Digital has sued Canon USA for infringement of the patent, and it might be Canon that filed the request.
Requests were filed by GT Nexus against four shipment monitoring patents owned by INTTRA, Inc. (see ex parte Request Nos. (7) to (10)). The patents relate to systems including user interfaces that allow a shipper to track and trace containers across multiple carriers and an event notifications system. The two companies are in an infringement action in the Northern District of California regarding these patents.
And reexamination has been requested for yet another MobileMedia Ideas patent, this time by Research In Motion (see ex parte Request No. (14)).
