2012 March : US PTO Litigation Alert™

Judge Marra Finds that Examiner’s “Clarifying” Amendment Triggers Intervening Rights

| March 29, 2012

This past Tuesday Judge Kenneth Marra of the Southern District of Florida granted summary judgment in Cobra International v. BCNY International (2012 U.S. Dist. LEXIS 42140) that the accused infringer was entitled to absolute intervening rights.  Because of an amendment made to the claims in reexamination, damages for any act of infringement that occurred prior to the reexamination certificate are eliminated. 

Of interest to reexamination practitioners is the twist that the amendment in question grew out of an interview with the examiner and was characterized by the examiner as “clarifying.”  The patent was for a “lighted shoe” including a series of LEDs and other electrical components.  The patent successfully emerged from reexamination twice; at the end of the second reexamination the examiner stated:


Read More/続きを読む

Category: Intervening Rights

Challenge to ObjectVideo Patent in ITC Case, among the Reexamination Requests Filed Week of March 19, 2012

| March 26, 2012

Last Friday a 916-page request for inter partes reexamination was filed against ObjectVideo’s U.S. Patent No. 7,613,424 (see inter partes Request No. (4)).  The ‘424 patent is one of six patents that are the subject of an ITC investigation – Certain Video Analytics – instituted last July against Bosch, Samsung and Sony.  Although the identity of the Requestor is not yet apparent from the PTO docket, it is likely one of these three Respondents in the ITC case.  Reexamination has less impact on ITC investigations than on infringement actions in the District Courts because the ITC refuses to stay its cases.  On the other hand, one wonders whether the ITC, given its focus on protecting the public interest, would be willing to maintain an exclusion order where the patent-in-question has been determined in reexamination at the PTO to be unpatentable.  Perhaps the ObjectVideo case will present that issue.  

In an unusual twist, an unidentified third party requested reexamination of U.S. Patent No. 6,307,955 last Monday, and on Friday, the ‘955 patentee, Topaz Systems, filed its own request (see ex parte Request Nos. (1) & (7)).


Read More/続きを読む

Category: Recent Requests

Rambus Suffers Setback in ‘109 Reexamination at the PTO Board

| March 22, 2012

Rambus’ hopes for preserving its U.S. Patent No. 7,287,109 suffered a setback this morning when the PTO Board of Appeals denied its petition to modify an earlier Board decision.  In that earlier decision, the Board affirmed a rejection of certain ‘109 claims as being obvious over the “Farmwald” reference; Rambus’ petition asked that the affirmed rejection be treated as a “new ground for rejection,” allowing Rambus to resume prosecution of the ‘109 patent claims before the examiner.  After today’s denial by the Board of Rambus’ petition, Rambus’ only remedy is to pursue an appeal of the rejection at the CAFC.

Rambus had argued in its petition that the Board’s earlier decision affirming the prior art rejection relied on “new facts” not considered by the examiner.  Rambus argued, essentially, that it had not received a fair opportunity to address the new facts relied upon by the Board. 


Read More/続きを読む

Category: Petitions, PTO Board

Broadcom Wins Important Victory in Reexamination of its ‘080 GPS Patent

| March 21, 2012

Broadcom and its subsidiary Global Locate received good news Monday when the PTO Board of Appeals reversed a rejection in the reexamination of Global’s U.S. Patent No. 7,158,080, claiming a method and apparatus for acquiring satellite signals using “long term tracking data” received at a remote receiver.  On the basis of a reexamination request filed by SiRF Technology in 2010, the examiner had rejected the ‘080 claims as being anticipated by and obvious over several prior art references. 

In 2009 the ITC found that the ‘080 patent, along with five other Global patents, were infringed by GPS systems imported by SiRF and others and issued a limited exclusion order against the future importation of infringing systems.  Broadcom and Global later filed an enforcement complaint alleging that SiRF was violating the exclusion order.  Accordingly, the ‘080 patent is clearly of considerable commercial significance.

The Board’s analysis will interest reexamination practitioners because it hinges on the Board’s claim construction.  Specifically, the Board found that the examiner had construed the phrase “long term tracking data” too broadly and that once the phrase was properly construed, the claims in reexamination were patentable over the prior art.  Significantly, the Board relied not only on the ‘080 specification, but also on expert declarations submitted by the ‘080 patentee and the requester.  It is common for the Board to rely upon expert declarations for analyzing the technical meaning of prior art or whether a claim is obvious over prior art, but not so common for it to cite such declarations to support its legal conclusions on claim construction. 

Update on one of the Callaway Golf Ball Patent Reexaminations

  Last Thursday the PTO Board affirmed the rejection of Callaway’s U.S. Patent No. 6,495,633 claiming a “dual core” golf ball (95/000,445).  The request had been filed by Acushnet, whom Callaway has sued for infringing the ‘633 patent. 

Category: Claim Construction

CAFC Marine Polymer Decision Changes Law of Intervening Rights, Again

| March 20, 2012

Last September a divided panel of the CAFC ruled in the Marine Polymer case that intervening rights could be triggered in reexamination, not only by the patentee’s actual amendment of claims, but also by the patentee’s arguments that “effectively amend” the claims.  Although the Marine Polymer decision did not reverse any previously controlling CAFC precedent, it did confound the patent bar by upsetting a decades-long assumption that intervening rights could not be created without a substantive amendment of the claim text itself.

Last week the CAFC, now sitting en banc, reversed the panel decision, holding that intervening rights in reexamination do, in fact, require amendment of the claim text; they cannot arise from the patentee’s argument alone.  The en banc decision, while a squeaker – the vote was 6 to 4 with Judges Moore and O’Malley not participating – was undoubtedly correct.  The literal wording of the relevant statutory provisions (35 U.S.C. §§ 252, 307(a) & (b)) indicates that an amendment of the claim text is needed.  Moreover, the CAFC’s adoption of “an intervening-rights-by-argument” regime could have resulted in an enormous forfeiture of patent rights, that forfeiture caused by the simple fact that for many years reexamination lawyers had been unaware of the legal effect of their arguments against prior art rejections.  Such forfeiture should be based on clear statutory wording, not a new, judicially-created doctrine.


Read More/続きを読む

Category: Intervening Rights

Challenges to Six Mad Dogg Exercise Bicycle Patents, among the Reexamination Requests Filed Week of March 12, 2012

| March 19, 2012

Mad Dogg Athletics has vigorously enforced its exercise bicycle patents against a host of exercise equipment makers, including Nautilus.  Last Wednesday competitor BH North America struck back, requesting reexamination of six Mad Dogg patents (see ex parte Request Nos. (7) to (12)). 

Boston Scientific filed another request against an Orbusneich intraluminal endoprosthesis patent, continuing the run of reexamination requests regarding medical devices (see inter partes Request No. (8)).  

And a reexamination was requested, for the first time in my memory, of a plant patent – U.S. Plant Patent No. 17,637 entitled “Plum Tree Named ‘Constanza’” (see inter partes Request No. (10)). 

The following inter partes requests were filed:

(1)         95/001,933 (electronically filed) – U.S. Patent No. 7,226,459 entitled RECIPROCATING ROTARY ARTHROSCOPIC SURGICAL INSTRUMENT and owned by Smith & Nephew, Inc.  Filed March 12, 2012, by Hologic, Inc.  The ‘459 patent is currently the subject of a litigation styled Smith & Nephew, Inc. v. Interface Medical, Inc v. Hologic, Inc., 1:11-cv-12064-RWZ (D. Mass.).

(2)         95/001,934 (electronically filed) – U.S. Patent No. 6,742,161 entitled DISTRIBUTED COMPUTING DOCUMENT RECOGNITION AND PROCESSING and owned by Nuance Communications. Filed March 12, 2012, by Abbyy USA Software House, Inc.  The ‘161 patent is currently the subject of a litigation styled Nuance Communications, Inc. v ABBYY USA Software House, Inc., et al, Case Nos. 08-0212-JSW, 08-04227-HJSW, 08-04942 (N.D. Cal.).

(3)         95/001,935 (electronically filed) – U.S. Patent No. 7,338,684 entitled VAPOR GROWN CARBON FIBER REINFORCED COMPOSITE MATERIALS AND METHODS OF MAKING AND USING and owned by Performance Polymer Solutions, Inc. Filed March 13, 2012, by University of Dayton Research Institute. 

(4)         95/001,936 (electronically filed) – U.S. Patent No. 7,927,701 entitled VAPOR GROWN CARBON FIBER REINFORCED COMPOSITE MATERIALS AND METHODS OF MAKING AND USING and owned by Performance Polymer Solutions, Inc. Filed March 13, 2012, by University of Dayton Research Institute. 

(5)         95/001,937 (electronically filed) – U.S. Patent No. 6,310,090 entitled PROCESS AND PRODUCT FOR ENHANCING IMMUNE RESPONSE IN COMPANION ANIMALS USING A COMBINATION OF ANTIOXIDANTS and owned by The Iams Co.  Filed March 13, 2012, by Nestle Purina PetCare. 

(6)         95/001,938 (electronically filed) – U.S. Patent No. 7,066,433 entitled ARM APPARATUS FOR MOUNTING ELECTRONIC DEVICES WITH CABLE MANAGEMENT SYSTEM and owned by Innovative Office Prods.  Filed March 15, 2012, by SpaceCo Business Solutions.  The ‘433 patent is currently the subject of two litigation styled Innovative Office Prods v. SpaceCo Business Solutions (Case No. 05-cv-4037 (E.D. Pa.)); and Office Prods. v. Smed (Case No. 07-cv-192 (C.D. Cal.)).

(7)         95/001,939 (electronically filed) – U.S. Patent No. 6,349,291 entitled METHOD AND SYSTEM FOR ANALYSIS, DISPLAY AND DISSEMINATION OF FINANCIAL INFORMATION USING RESAMPLED STATISTICAL METHODS and owned by InvestPic.  Filed March 15, 2011, by Algorithmics, IBM and SAS Inst.  The ‘291 patent is currently the subject of a litigation styled InvestPic v. Algorithmics et al. (Case No. 1:10-cv-1028 (D. Del.)).

(8)         95/001,940 (electronically filed) – U.S. Patent No. 6,821,292 entitled CRIMPABLE INTRALUMINAL ENDOPROSTHESIS HAVING HELICAL ELEMENTS and owned by Orbusneich.  Filed March 16, 2011, by Boston Scientific.  The ‘292 patent is currently the subject of a litigation styled Orbusneich v. Boston Scientific (Case No. 1:09-cv-10962 (D. Mass.)).

(9)         95/001,941 (electronically filed) – U.S. Patent No. 7,331,313 entitled CONTINUOUS STEAM GENERATOR WITH CIRCULATING ATMOSPHERIC FLUIDISED-BED COMBUSTION and owned by Alstom Technology.  Filed March 16, 2012, by Foster Wheeler North America. 

(10)     95/001,942 (electronically filed) – U.S. Plant Patent No. 17,637 entitled PLUM TREE NAMED ‘CONSTANZA’ and owned by Jose Domingo Godoy Huidobro.  Filed March 16, 2012. 

(11)     95/000,660 (paper filed) – U.S. Patent No. 7,711,857 entitled METHOD AND SYSTEM FOR DATA MULTIPLEXING and owned by Implicit.  Filed March 2, 2012, by Juniper Networks.  The ‘857 patent is currently the subject of four infringement actions.

 The following ex parte requests were filed:

(1)         90/012,184 (electronically filed) – U.S. Patent No. 6,030,047 entitled CHILD VEHICLE SEAT WITH CHILD-RESTRAINT HARNESS ADJUSTMENT MECHANISM and owned by Cosco, Inc.  Filed March 12, 2012.

(2)         90/012,185 (electronically filed) – U.S. Patent No. 8,008,804 entitled METHODS, SYSTEMS AND APPARATUS FOR REGULATING FREQUENCY OF GENERATED POWER USING FLYWHEEL ENERGY STORAGE SYSTEMS WITH VARYING LOAD AND/OR POWER GENERATION and owned by Beacon Power Corp. Filed March 12, 2012, by Temporal Power Ltd. 

(3)         90/012,187 (electronically filed) – U.S. Patent No. 8,013,096 entitled PERFLUOROETHER MOIETY-CONTAINING POLYMER AND A SURFACE TREATING AGENT COMPRISING THE SAME and owned by Shin-Etsu Chemical.  Filed March 12, 2012.  

(4)         90/012,188 (electronically filed) – U.S. Patent No. 5,684,514 entitled APPARATUS AND METHOD FOR ASSEMBLING CONTENT ADDRESSABLE VIDEO and owned by Patent Harbor.  Filed March 12, 2012, by Anchor Bay Entertainment.  The ‘514 patent is currently the subject of ten infringement actions.

(5)         90/012,189 (electronically filed) – U.S. Patent No. 7,363,090 entitled BAND STOP FILTER EMPLOYING A CAPACITOR AND AN INDUCTOR TANK CIRCUIT TO ENHANCE MRI COMPATIBILITY OF ACTIVE IMPLANTABLE MEDICAL DEVICES and owned by Greatbatch, Ltd.  Filed March 13, 2012, by Owner. 

(6)         90/012,190 (electronically filed) – U.S. Patent No. 7,213,744 entitled REGULATED WIRE TRANSFER COMPLIANCE SYSTEMS AND METHODS and owned by The Western Union Company.  Filed March 13, 2012.  

(7)         90/012,191 (electronically filed) – U.S. Patent No. 5,423,728 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics.  Filed March 14, 2012, by BH North America.   The ‘728 patent is currently the subject of several litigations.

(8)         90/012,192 (electronically filed) – U.S. Patent No. 6,155,958 entitled STATIONARY EXERCISE BICYCLE HAVING A RIGID FRAME and owned by Mad Dogg Athletics.  Filed March 14, 2012, by BH North America.  The ‘958 patent is currently the subject of several litigations.

(9)         90/012,193 (electronically filed) – U.S. Patent No. 6,468,185 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics.  Filed March 14, 2012, by BH North America.   The ‘185 patent is currently the subject of several litigations.

(10)     90/012,194 (electronically filed) – U.S. Patent No. 6,881,178 entitled METHOD OF EXERCISING ON A STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics.  Filed March 14, 2012, by BH North America.   The ‘178 patent is currently the subject of several litigations.

(11)     90/012,195 (electronically filed) – U.S. Patent No. 7,455,627 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics.  Filed March 14, 2012, by BH North America.   The ‘627 patent is currently the subject of several litigations.

(12)     90/012,196 (electronically filed) – U.S. Patent No. 8,057,364 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics.  Filed March 14, 2012, by BH North America.   The ‘364 patent is currently the subject of several litigations.

(13)     90/012,198 (electronically filed) – U.S. Patent No. 7,149,625 entitled METHOD AND SYSTEM FOR DISTRIBUTED NAVIGATION AND AUTOMATED GUIDANCE and owned by WRE-HOL.  Filed March 15, 2012.  

(14)     90/012,199 (electronically filed) – U.S. Patent No. 6,296,022 entitled WOVEN FABRIC WITH MACHINE-READABLE CODE and owned by J&J Cash.  Filed March 16, 2012.  

(15)     90/012,200 (electronically filed) – U.S. Patent No. 6,223,190 entitled METHOD AND SYSTEM FOR PRODUCING AN INTERNET PAGE DESCRIPTION FILE ON A DIGITAL IMAGING DEVICE and owned by FlashPoint Technology.  Filed March 16, 2012.  

Category: Recent Requests

Reexamination Stays: What about Prejudice to Defendant if Stay is Denied?

| March 13, 2012

The case law on reexamination stays shows that there are two categories of trial judge: those who are attracted by the possibility of the reexamination simplifying issues for trial and who are therefore likely to grant stay motions, and those who are especially concerned about the prejudice a stay might cause patent owner. 

Magistrate Judge Douglas Arpert of the New Jersey District Court appears to fall within the former category, in view of his Order last Wednesday to stay Monosol RX v. Biodelivery Sciences Int’l (10-cv-5695) pending completion of PTO’s reexamination of the three patents-in-suit.  Although the infringement case was in its early stages and the PTO granted the three reexamination requests, the patent owner vigorously argued that the parties were direct competitors and that it would be prejudiced by the stay.  But Magistrate Judge Arpert was unconvinced, noting that “Plaintiff did not seek a preliminary injunction in this matter and [so] the Court declines to impose any restraints with respect to Defendants’ business activities at this time.”


Read More/続きを読む

Category: Stays/District Courts

Attacks on Medtronic & OrbusNeich Medical Device Patents among the Reexamination Requests Filed the Week of March 5, 2012

| March 12, 2012

Edwards Lifesciences requested reexamination of a Medtronic prosthetic valve patent last week (see inter partes Request No. (1)).  The companies are involved in an infringement action in the Central District of California regarding ‘281 patent.  And Boston Scientific requested reexamination of an OrbusNeich helical stent patent (see inter partes Request No. (9)).  OrbusNeich has sued Boston Scientific in the Eastern District of Virginia for infringement of that patent, as well as trade secret misappropriation. 

The winner for filing the most requests last week, however, was Verizon that sought reexamination of seven Realtime Data patent claiming data storage and retrieval systems (see inter partes Request Nos. (2) to (8)).  The parties are involved in litigation in the Eastern District of Texas. 


Read More/続きを読む

Category: Recent Requests

Judge Koeltl Grants Summary Judgment of Intervening Rights

| March 6, 2012

The patent infringement case brought by Dey and Mylan against Sepracor (now Sunovian) came to an abrupt end last week when Judge John Koeltl of the Southern District of New York granted two summary judgments in favor of the accused infringer.  Sepracor was accused of infringing two families of patents – the claims were for compositions and methods for treating certain pulmonary diseases with the drug formoterol.  First, Judge Koeltl granted summary judgment that the claims of one family of patents were invalid because of an anticipatory public use.  What will interest reexamination practitioners, however, is the Judge’s grant of summary judgment that the accused infringers are entitled to intervening rights with respect to the second family of patents.

After commencement of the infringement action, Sepracor requested reexamination of the patents in the second family.  Reexamination was granted, the claims rejected, but then confirmed in light of the patentees’ arguments and the following representative claim amendment:

A pharmaceutical composition, comprising formoterol, or a derivative thereof, in a pharmacologically suitable fluid [aqueous solution], wherein the composition is stable during long term storage, the fluid comprises water, and the composition is formulated at a concentration [effective for bronchodilation by nebulization, and the composition is] suitable for direct administration to a subject in need thereof [without propellant and without dilution of the composition prior to administration].


Read More/続きを読む

Category: Intervening Rights

Attack on MobileMedia Ideas Audio Delivery Data Patent, among the Reexamination Requests Filed Week of February 27, 2012

| March 5, 2012

Last Friday reexamination was requested of a MobileMedia Ideas audio data delivery patent, likely by HTC (see ex parte Request No. (14)).  In 2010 MobileMedia sued HTC in the Eastern District of Texas for infringement of that patent, as well as 10 other related data delivery patents. 

Bosch Security Systems has sought reexamination of four video surveillance patents owned by ObjectVideo (see inter partes Request Nos. (9), (10), (11), (12)).  An infringement action is pending in the Eastern District of Virginia between the companies, regarding these four patents. 

And three new requests against medical device patents (see ex parte Request Nos. (6), (7) & (8)), continuing a recent trend.


Read More/続きを読む

Category: Recent Requests

Subscribe | 登録

Search

Recent Posts

Archives

Categories

辞書
  • dictionary
  • dictionary

  • 英語から日本語

Double click on any word on the page or type a word:

Powered by dictionarist.com