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
Challenges on Intellectual Ventures Computer Circuit Patents among the Reexamination Requests Filed Week of April 23, 2012
| April 30, 2012
An undisclosed party requested reexamination of two computer circuits patents owned by Intellectual Ventures (see ex parte Request Nos. (13) & (14)). IV patents in this technology have come under attack by Xilinx in recent times, and it was quite possibly Xilinx that filed these requests. Incidentally, one of the IV patents was originally owned by LG Semicon and the other by Motorola.
Requests were also against four auto-navigation patents owned by Beacon Navigation (see ex parte Request Nos. (8) to (11)). Beacon has sued quite a few auto-makers in Delaware for infringement of those patents, including Honda, Porsche, BMW and Ford.
Claims of Two Rambus Memory Device Patents Rejected by PTO Board of Appeals
| April 25, 2012
The Patent Office Board of Appeals dealt Rambus a major setback yesterday by affirming the anticipation rejection of the two independent claims in reexamination of U.S. Patent Nos. 6,266,285 and 6,314,051, two of the so-called “Farmwald Patents” that have been the subject of an ITC investigation and several District Court infringement actions. The Board also reversed the decision of the examiner not to reject two other clams in each of the ‘285 and ‘051 patents, thereby entering a new grounds for rejection of those claims. The patents now go back to the reexamination examiner for consideration of these new grounds for rejection. The reexamination of each patent was based on two separate reexamination requests, one filed by Samsung, one by Micron, which were then merged by the PTO.
For both the ‘285 and ‘051 memory device patents, the Board found that all three claims in reexamination were anticipated by the Bennett patent which “discloses a single chip embodiment having the ability to delay the timing processing certain signals.” The Board relied upon a detailed reading of the Bennett reference and additionally argued that Rambus’ attempts to distinguish Bennett contradicted “other arguments made elsewhere here [sic] and in numerous related proceedings.”
Bicycle Rental Station Patent, Subject of Reexamination Request Filed Week of April 16, 2012
| April 23, 2012
If you live in Washington D.C. or in any of a number of other places, you have undoubtedly noticed the bicycle stations scattered across town: with a credit card you can rent a bicycle to ride around town and return it at your convenience to the same or another bicycle station. Isabelle Bettez and Jean-Sebastien Bettez own a patent – U.S. Patent No. 7,898,439 – claiming a solar-powered station.
It is not yet evident from the Patent Office dockets who filed the request.
What Happens after the Reexamination Stay is Lifted?
| April 20, 2012
An extremely popular strategy for a defendant accused of patent infringement is (1) to request reexamination of the patent and then (2) to convince the trial judge that the reexamination will simplify the issues to be tried, so that he or she should stay the litigation pending completion of the suit. But how does the trial judge treat the defendant if, several years later, the Patent Office confirms the patentability of the claims and the litigation resumes? Not very well, the defendant learned this week in Cardiofocus v. Cardiogenesis, 2012 U.S. Dist. LEXIS 54892.
The case had resumed after being stayed for two years for reexamination of the two patents-in-suit, where some of the claims were disclaimed, and the other claims were confirmed. Judge Nathaniel M. Gorton of Massachusetts was asked to rule on a series of summary judgment motions offered by the parties. Judge Gorton’s analysis, of course, dealt carefully with the merits of each motion. And yet there was also an edge to the judge’s comments, suggesting that he did not regard the detour of the case to the Patent Office, requested by the defendant, to have been helpful.
Google Attack on Computerized Menu Patent among the Reexamination Requests Filed the Week of April 9, 2012
| April 16, 2012
Last September, DietGoal Innovations sued a who’s-who of fast food companies (such as McDonalds and Burger King), plus Google, for infringement of a computerized menu patent: U.S. Patent No. 6,585,516 (see inter partes Request No. (1)). Last week, it was Google that requested reexamination of the ‘516 patent. DietGoal’s patented menu comprises a user interface, a database of food objects organized into meals, and a picture menus, so “that a user can select [a meal] to meet customized eating goal.”
Avery Dennison requested reexamination of two 3M patents for retro-reflective sheeting (see inter partes Request Nos. (8) & (9)). 3M has sued Avery in Minnesota for infringement of those two patents, as well as two other similar patents. Judge Michael Davis issued a claim construction order last month in that infringement action.
Finally, in what might be a first, the United States requested reexamination of a patent for neutralizing landmines (see inter partes Request No. (12)). The inventor-owner of the patent is pursuing an infringement action against the U.S. in the Court of Claims.
Attack on Two Applied Biosystems Nucleic Acid Probes among the Reexamination Requests Filed the Week of April 2, 2012
| April 10, 2012
Reexamination was requested last week of two patents owned by Applied Biosystems, claiming fluorescent probes for detected nucleic acid amplification (see ex parte Request Nos. (1) & (2)). Although the Patent Office records do not yet disclose the identity of the requester, it is likely to be Midland Certified Reagent that has been sued by Applied Biosystems for infringement of the two patents.
Reexamination was also requested for three RFID patents owned by Round Rock Research (see ex parte Request Nos. (8), (9) & (14)). Round Rock also received disappointing news last week when Judge Richard Andrews of Delaware stayed its infringement actions against Dole Food, GAP and Hanesbrands pending completion of the reexamination of the five patents-in-suit. Judge Andrews included an amusing comment in his decision: when dealing with the consideration of whether the stay motion had been filed for a “tactical reason,” he noted the obvious that “parties are constantly seeking tactical advantages.”
Announcing WHDA’s free app for iPhone, iPad and iPod touch
| April 3, 2012
We interrupt our normal posting to make an exciting announcement! WHDA has just released “WHDA Connect”—a free app for iPhone, iPad and iPod touch. With it you can:
*Read our blogs about the latest patent and trademark news, with optional push notifications. Non-native English speakers will find the built-in dictionary helpful – activated when you tap-and-hold a word (requires iOS 5.0+).
*Get simple access to the most powerful IP resources on the web, such as databases of major world patent offices.
*Learn more about our services and skill sets.
*Access our directory of professionals.
*Call or email our professionals with just a tap.
*Simplify visits to our offices with GPS-guided directions.
Tags: app > Apple > iPad > iPhone > iPod > iPod touch > iTunes > mobile app > WHDA > WHDA blogs
Two Quick Notes
| April 3, 2012
1. “Troll Buster” Requests Reexamination
Is it possible to file a reexamination request over the weekend? Of course, and Jeff Oster, aka, “Troll Buster” proved it by requesting reexamination of two nucleic acid probe patents on Sunday (April Fool’s Day, no less) – U.S. Patent Nos. 5,538,848 & 5,723,591.
The parallel infringement action in the Northern District of California, however, is a serious matter. There, Applied Biosystems and Life Technologies have sued Midland Certified Reagent, Biosearch Technologies and Bio-Synthesis in February for infringement of the ‘848 and ‘591 patents, plus three other patents claiming hybridization assay probes. Presumably, reexamination requests for the other three patents are on the way.
2. PTO Board Affirms Rejection of Genzyme’s Doxercalciferol Patent
Last Thursday, the Patent Office Board of Appeals affirmed the reexamination rejection of the claims of Genzyme’s U.S. Patent No. 7,148,211 as obvious over the prior art. The ‘211 patent, that has been the subject of several major infringement actions in Delaware and the Eastern District of Illinois, claims a parenteral formulation containing doxercalciferol with a specific antioxidant.
Ten days ago, Judge Robert M. Dow determined that a related Genzyme patent was valid and infringed by Pentech Pharmaceutical and Cobrek Pharmaceutical.
Challenge to Social Networking Patent among the Reexamination Requests Filed Week of March 26, 2012
| April 3, 2012
Earlier this year, Real Time Social Inventions sued ten companies, including Facebook and Oracle, for infringement of U.S. Patent No. 7,853,881. Now, RT Social Networks has requested reexamination (see inter partes Request No. (2)), stating that it is the only real party in interest, even though RT Social Networks is not one of the defendants named in those infringement actions.
An unidentified party has requested reexamination of an Intellectual Ventures voice recognition patent (see ex parte Request No. (8)). There does not appear to be a parallel District Court case, continuing a recent trend of reexamination being requested against “assertion entities,” even in the absence of litigation.
Apple was in the news, requesting reexamination of the VirnetX patent (see inter partes Request No. (3)) that was recently added to the infringement case involving the two companies (as well as Cisco) in the Eastern District of Texas.
