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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- CAFC Alert
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PTO Statistics
Anonymous Attack on Facebook’s User News Feed Patent among the Reexamination Requests Filed the Week of May 21, 2012
| May 29, 2012
This past March Yahoo! sued Facebook for infringement of 10 social networking patents, and soon thereafter Facebook counter-claimed for infringement of 10 of its own social networking patents, most notably U.S. Patent 7,669,123 claiming a method for displaying “a news feed in a social network environment,” specifically, a news feed about people a user knows. An unnamed party has now requested reexamination of Facebook’s ‘123 patent (see ex parte Request No. (2)). Yahoo! denies that it filed the request. The ‘123 patent attracted a fair amount of negative comment in the blogosphere when it issued in 2010, most of it suggesting that the ‘123 claims were impossibly broad and could stifle competition.
Samsung requested reexamination of a video pixel labeling patent owned by ObjectVideo (see inter partes Request No. (1)). ObjectVideo has sued Samsung and others in the ITC for infringement of the patent. A parallel infringement action in the Eastern District of Virginia has been stayed pending completion of the ITC case.
Finally, reexamination was requested by an undisclosed party for U.S. Patent No. 7,479,949, that claims a touch screen and names Steve Jobs as an inventor (see ex parte Request No. (8)). Apple has sued Motorola, Samsung and others for infringing the ‘949 patent. Apple’s case against Motorola is scheduled to go trial in June before Judge Posner. Excellent reports on these Apple cases can be found on almost a daily basis at http://www.fosspatents.com/ written by our friend Florian Mueller.
How does the Patent Office Get out of a Fix?
| May 25, 2012
The PTO Board of Appeals found itself in a difficult situation yesterday in the inter partes reexamination of Google v. Function Media (95/001,061). The reexamination examiner had adopted a number of prior art rejections proposed by Requester Google, and the Patentee Function Media had appealed to the Board. Function Media’s rejected claims were the original, unamended claims. Accordingly, those claims could be rejected only if they were anticipated or made obvious by “patents or other printed publications” – other rejections, such as rejections under § 112, were prohibited.
The problem was that the claims recited a series of means-plus-function limitations that lacked corresponding structure in the specification. On the one hand, the Board was forbidden by statute from rejecting the claims under § 112, ¶ 6, and on the other hand, the Board could not review the examiner’s prior art rejections because it could not construe those limitations in the manner required by § 112, ¶ 6.
Choose Inter Partes Reexamination
| May 23, 2012
The CAFC categorized its decision yesterday in PlaSmart v. Kappos as “non-precedential,” but the case teaches important lessons regarding the current state of reexamination. First, one cannot assume that each reviewing panel strives to affirm the decision from below – the PTO Board scrutinizes the examiner’s decision, and the CAFC is equally careful in reviewing the Board’s decision. Second, the obviousness analysis established in KSR remains a potent weapon for those challenging the validity of a patent. And finally, inter partes reexamination – with its option for the reexamination requester to participate even through the CAFC appeal – is much superior to ex parte reexamination.
The patent claimed a scooter (tricycle) with a safety improvement, reducing the likelihood of the scooter flipping over. The significant limitation recited “a supporting arm frontwardly extended from said driven portion of said twister member,” with a safety wheel mounted to the free end of the “supporting arm.” During reexamination, the examiner found that the primary reference satisfied this “supporting arm” limitation; the examiner then rejected claim 1 as anticipated by the primary reference and as obvious over a second reference in view of the primary reference. On the other hand, the examiner found a series of dependent claims, added in the reexamination, to be patentable because the references failed to show attachment of the safety wheel in the same position as required by those added claims.
The PTO Board reversed the anticipation rejection of claim 1, finding that the primary reference failed to disclose the claimed attachment of the “supporting arm” to the tricycle; specifically, the Board found that the arm disclosed in the prior art drawing was attached to a base plate, not the twister member as required by all the claims. The Board also faulted the combination of art relied upon by the examiner, for resulting in a ridiculous scooter having two safety wheels, both raised off the ground. Thus, the PTO refused to reject claim 1 as anticipated and refused to reject the new claims as obvious.
The requester appealed this refusal to reject to the CAFC who affirmed the PTO’s refusal to reject claim 1 as anticipated, the CAFC agreeing with the PTO that the prior art arm drawing was attached to a base plate, not the twister member.
The CAFC, however, was not so charitable regarding the PTO’s refusal to reject the claims as obvious over the prior art references. It concluded that the primary references disclosed each aspect of the claimed invention, except for the claimed safety driving structure discussed above. It acknowledged that the primary reference failed to “place those universal wheels in the exact locations” required by the patent claims. It found, however, the primary reference disclosed an additional wheel placed in front of the twister member to improve stability. The CAFC then determined that “modifying the scooter [of the secondary reference] to prevent tipping by placing [ ] a safety wheel in front of the twister member would thus be obvious for one skilled in the art of trying to increase stability in the direction of movement.”
Tracking KSR, the CAFC concluded that “such modification is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in the front of the twister member) to address a known problem (stability), and would thus have been obvious.”
Regarding the PTO Board’s refusal to reject the newly added dependent claims, the CAFC found that the limitations recited therein were “only minor, predictable variations” of claim 1, without even mentioning any of limitations. The CAFC therefore reversed the PTO’s refusal to reject the patent claims.
We thus see a real hop-scotch of rulings through the reexamination process, as well as a heavy reliance on KSR at the CAFC. Finally, and most importantly, the superiority of inter partes reexamination, over ex parte, is once again on display. Without the full participation of the requester at the CAFC, the validity of the claims would have been confirmed.
Facebook Attack on Wireless Ink Patent among the Reexamination Requests Filed Week of May 14, 2012
| May 21, 2012
Last Monday Facebook requested reexamination of Wireless Ink’s U.S. Patent 8,135,801 which claims a system for enhancing accessibility to data over a network (see inter partes Request No. (1)). The ‘801 patent is the subject of an infringement action between the companies in New York. Notably, Facebook has filed this reexamination request before answering Wireless’s complaint in court. Facebook – like Apple and Google – has been quick to resort to reexamination when sued for infringement. Wireless has also accused Facebook of infringing two other patents – U.S. Patent Nos. 7,599,983 and 7,908,342 – in unrelated infringement actions.
For the most part, foreign companies have been slow to use reexamination as a tool for attacking U.S. patents owned by competitors. An exception is Chinese companies, who seem to be quick studies when it comes to reexamination. For instance, last week Zhejiang Trimone and Fujian Hongan filed a request against a circuit interrupter patent owned by Leviton (see inter partes Request No. (4)).
Reexamination was also requested by CBS Interactive and a series of other media companies for two more wireless messaging patents owned by Helferich Patent Licensing (see inter partes Request Nos. (3) & (7)). See last week’s post for other Helferich reexaminations.
If at first you don’t succeed ….
| May 18, 2012
In Re Baxter International, Inc. (Fed. Cir. 2012)
(Reexamination No. 90/007,751)
Summary
The CAFC’s decision in In re Baxter Int’l, Inc. (Fed. Cir. 2012) highlights the distinction between a reexamination and a district court proceeding. Specifically, the CAFC affirmed the Board of Patent Appeal and Interferences (“Board”) determination in a reexamination proceeding that claims 26-31 of U.S. Patent No. 5,247,434 (“the ‘434 patent”) are invalid – despite having previously held in a parallel litigation proceeding that the same claims were not invalid – because the courts and the USPTO use different standards to address validity. However, the CAFC cautioned that had the claims been found to be invalid in the litigation proceeding after all appeals had been exhausted, then the PTO “ideally should not arrive at a different conclusion” during a parallel reexamination proceeding when presented with the same arguments.
Details
In Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc., No. C 03-1431 SBA, 2007 WL 518804 (N.D. Cal. Feb. 13, 2007), the district court concluded that Fresenius failed to show by clear and convincing evidence that claims 26-31 were not valid. The CAFC affirmed the district court’s decision, explaining that Fresenius “failed to present any evidence … that the structure corresponding to the [claimed function], or an equivalent thereof, existed in the prior art” and did not identify “the structure in the specification that corresponds to the [claimed function] or compare the identified structure to those structures present in the prior art. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009). The CAFC held that the clear and convincing burden of proof “cannot be carried without clearly identifying the corresponding structure in the prior art.”
Kyocera Challenge to ADC Personal Communicator Patent among the Reexamination Requests Filed Week of May 7, 2012
| May 14, 2012
This past Friday Kyocera requested reexamination of an ADC Technology patent – U.S. Patent No. 6,985,136 – for a “personal communicator,” i.e., a portable computer for wireless data transmission (see inter partes Request No. (4)). ADC is currently pursuing an infringement action against Kyocera in Illinois. The ‘136 patent survived an earlier reexamination attempt, with the patentability of all claims confirmed.
Axis Communications requested reexamination of two Walker Digital Internet surveillance patents (see ex parte Request Nos. (13) & (14)). The companies are currently involved in an infringement action in Delaware regarding the patents.
Reexamination Stay Granted even though Parties are Direct Competitors
| May 10, 2012
A trial judge’s decision on whether to stay an infringement action pending completion of a parallel reexamination, is obviously critical, in some cases determines the outcome of the litigation. In making this decision, trial judges tend to fall into one of two camps: those judges who are attracted to stays because of their potential to simplify the dispute and who are therefore normally inclined to grant a stay, and those judges who are more concerned that a stay would unduly prejudice the patentee and who are therefore normally inclined to deny a stay. For the second group, the fact that the patentee and the accused infringer are direct competitors is often the kiss of death for a stay motion – those judges almost always deny the stay motion because they conclude that the patentee could not be fairly compensated for its loss of market share to the accused infringer during the stay, even if the patentee ultimately prevails in both the reexamination and the infringement action.
Despite the long odds against the grant of a stay where the parties compete, Defendant Owens Corning in Air Vent v. Owens Corning, 2012 U.S. Dist. LEXIS 64294 (W.D. Pa. May 8, 2012) found an antidote to the “direct competitor problem.” The patentee Air Vent had opposed the Owens Corning’s stay motion, arguing that it would “suffer undue prejudice as a result of a stay because Owens Corning is a direct competitor and a ‘protracted delay’ will allow Owens Corning to gain market share at the expense of Air Vent’s permanent loss of market share” (emphasis added).
Attack on Helferich Patent Licensing/Wireless Science Patent, among the Reexamination Requests Filed Week of May 7, 2012
| May 7, 2012
Helferich Patent Licensing has been extremely aggressive and extremely successful in asserting its portfolio of mobile wireless communications patents against the world’s media and retail giants. According to the patent search outfit M-CAM, Helferich has sued licensed 42 companies, including Apple, Dell, Hitachi, LG, Microsoft, Motorola, NEC, Nissan, Nokia, Samsung, Sharp and Toshiba. In a case filed in 2010, Helferich sued CBS for infringement of 21 patents. This February, it obtained U.S. Patent No. 8,116,741, adding it to the CBS litigation and to six other infringement actions. On Friday CBS and the other defendants in those cases, requested reexamination of the ‘741 patent (see inter partes Request No. (1)).
This is by no means the first reexamination asserted against Helferich, who so far appears to have been quite adept at overcoming the prior art asserted against and adding numerous claims to its patents in reexamination.
Think IP Strategy Offers 2011 News Almanac
| May 3, 2012
Think IP Strategy is likely the world leader in collecting information of interest to IP practitioners across the globe. Each Friday it compiles in its “Global Week in Review” stories and comments on significant developments in patent, trademark and copyright law.
These weekly compilations from 2011 have now been collected in a new book, the 2011 IP Think Tank Almanac. The Almanac pulls together all the news reported in Think IP Strategy’s Global Week in Review posts for all of 2011 in a searchable, clickable format. The book is only available in digital format because it is designed for search. We encourage our subscribers to learn more about the 2011 Almanac on Think IP Strategy’s blog post covering its release.
The Risks of Inconsistent Arguments in Parallel Proceedings
| May 3, 2012
A patentee, who is simultaneously pursuing an infringement in District Court and defending its patent in a reexamination proceeding at the PTO, often faces the temptation to construe its claims broadly in court but narrowly at the PTO. The risks of yielding to that temptation are illustrated in Judge Susan Illston’s claim construction decision Tuesday in Kilopass Technology v. Sidense (2102 U.S. Dist. LEXIS 60973).
There, in an earlier Markman hearing, the patentee had argued that the terms “column bitline” and “row wordline” (in claims for a semiconductor memory cell) were interchangeable, and further that they should be defined identically as “a line that connects to one terminal of each memory cell in a memory array.” The effect of the patentee’s proposed claim construction was to overcome: specifically, the fact that the arrangement of the “column bitline” and “row wordline” in the accused semiconductor was precisely opposite the arrangement of those components recited in the asserted claims. Judge Illston initially construed the claims in favor of the patentee.
