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- 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)
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- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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Inter Partes Estoppel Limited to New or Changed Claim Wording
| June 27, 2012
The scope of estoppel on an unsuccessful requester in inter partes reexamination was tested yesterday in ScriptPro v. Innovation Associates, Inc., 2012 U.S. Dist. LEXIS 87861. Under 35 U.S.C. § 315(c), a third party who requests inter partes reexamination “is estopped from asserting at a later time, in any civil action . . . the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.” (Emphasis added).
In yesterday’s decision, the accused infringer Innovation moved for summary judgment that it was not estopped – because of an unsuccessful inter partes reexamination that it had earlier pursued against the patent-in-suit – from asserting that certain claims in the patent were invalid under 35 U.S.C. §112, ¶ 1. The patent owner ScriptPro opposed, asserting that Innovation could not challenge the validity of claims 1 and 2 because of estoppel: Innovation had been free to, and did in fact, raise § 112 challenges during reexamination, and it was therefore estopped under § 315(c) from raising those defenses in the present litigation.
DIRECTV Reexamination Request of Satellite Broadcast Patent, one of the Requests Filed Week of June 18, 2012
| June 25, 2012
Last Monday DIRECTV asked for reexamination of a patent owned by Global Communications and claiming a satellite broadcast receiving and distribution system (see inter partes Request No. (1)). Global has sued a number of companies – presumably DIRECTV partners – for infringing that patent, as well as seven others.
Reexamination was requested for U.S. Patent No. 6,770,748 owned by Santaris Pharma and claiming nucleotide analogues that suitable as antisense molecules for treatment of cancer and AIDS patients (see inter partes Request No. (2)). The Patent Office records do not yet show the identity of the requester, but it might be Isis since Santaris and Isis have fought over rights to this technology in the past.
Yet another request for reexamination was filed against a MobileMedia Ideas patent, perhaps by Apple or HTC – the Patent Office records do not say (see ex parte Request No. (6)).
Finally, DuPont and Monsanto are tussling over a soybean oil patent (see inter partes Request No. (7)).
The following inter partes requests were filed:
(1) 95/002,022 (electronically filed) – U.S. Patent No. 6,397,038 entitled SATELLITE BROADCAST RECEIVING AND DISTRIBUTION SYSTEM and owned by Global Communications. Filed June 18, 2012, by DIRECTV. The ‘038 patent is currently the subject of a litigation styled Global Communications v. PDI Communications et al. (Case No. 4:11-cv-451 (N.D. Fla.).
(2) 95/002,023 (electronically filed) – U.S. Patent No. 6,770,748 entitled BICYCLONUCLEOSIDE AND OLIGONUCLEOTIDE ANALOGUE and owned by Santaris Pharma. Filed June 18, 2012, perhaps by Isis.
(3) 95/002,024 (electronically filed) – U.S. Patent No. 7,707,823 entitled METHOD AND APPARATUS FOR MANIPULATING AND DILUTING INTERNAL COMBUSTION ENGINE EXHAUST GASES and owned by Leseman Davis, LLC. Filed June 19, 2012.
(4) 95/002,025 (electronically filed) – U.S. Patent No. 7,320,031 entitled AUTOMATIC, PERSONALIZED ONLINE INFORMATION AND PRODUCT SERVICES and owned by Personalized User Model (PUM). Filed June 20, 2012, perhaps by Google. The ‘031 patent is currently the subject of a litigation styled Personalized User Model v. Google (Case No. 09-cv-525 (D. Del.)).
(5) 95/002,026 (electronically filed) – U.S. Patent No. 7,917,401 entitled SYSTEMS AND METHODS FOR OBTAINING HEALTH AND FINANCIAL INFORMATION WITH A HANDHELD DEVICE and owned by Epic Technology. Filed June 20, 2012, by eBay. The ‘401 patent is currently the subject of a litigation styled Epic Technology v. Shapsavvy (Case No. 2:12-cv-249 (D. Utah)).
(6) 95/002,027 (electronically filed) – U.S. Patent No. 8,073,744 entitled METHOD TO PROVIDE LIQUID FUNDS IN THE ONLINE AUCTION AND MARKETPLACE and owned by Venture Lending & Leasing VI. Filed June 22, 2012, by Capital Access Network.
(7) 95/002,028 (electronically filed) – U.S. Patent No. 7,790,953 entitled SOYBEAN SEED AND OIL COMPOSITIONS AND METHODS OF MAKING SAME and owned by Monsanto. Filed June 22, 2012, by DuPont.
(8) 95/002,029 (electronically filed) – U.S. Patent No. 7,925,531 entitled METHOD OF DELIVERING GOODS AND SERVICES VIA MEDIA and owned by TrialCard Systems. Filed June 22, 2012. The ‘531patent is currently the subject of a litigation styled TrialCard Systems v. P.S.K.W. et al. (Case No. 3:11-cv-5693 (D.N.J.)).
The following ex parte requests were filed:
(1) 90/012,362 (electronically filed) – U.S. Patent No. 5,629,867 entitled SELECTION AND RETRIEVAL OF MUSIC FROM A DIGITAL DATABASE and owned by DigiMedia Holdings Group. Filed June 18, 2012. The ‘867 patent is currently the subject of a litigation styled Mission Abstract Data v. Beasly Broadcast et al. (Case No. 11-cv-176 (D. Del.)).
(2) 90/012,363 (electronically filed) – U.S. Patent No. 6,294,953 entitled HIGH SENSITIVITY DEMODULATOR FOR A RADIO TAG AND METHOD and owned by Axcess International. Filed June 18, 2012, likely by Savi. The ‘953 patent is currently the subject of a litigation styled Axcess International v. Savi (Case No. 3:10-cv-1033 (N.D. Tex.)).
(3) 90/012,364 (electronically filed) – U.S. Patent No. RE 40,281 entitled SIGNAL PROCESSING UTILIZING A TREE-STRUCTURED ARRAY and owned by Hybrid Audio. Filed June 18, 2012, apparently by HTC. The ‘281 patent is currently the subject of a litigation styled Hybrid Audio v. HTC (Case No. 6:11-cv-00195 (E.D. Tex.)).
(4) 90/012,365 (electronically filed) – U.S. Patent No. 6,200,216 entitled ELECTRONIC TRADING CARD and owned by Wildcat Intellectual Property Holdings. Filed June 18, 2012, likely by 4Kids Entertaining. The ‘216 patent is currently the subject of a litigation styled Wildcat Intellectual Property Holdings v. 4Kids Entertaining (Case No. 2:11-cv-305 (E.D. Tex.)).
(5) 90/012,366 (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 June 21, 2012.
(6) 90/012,367 (electronically filed) – U.S. Patent No. 6,043,760 entitled LANGUAGE-DEPENDENT LETTER INPUT BY MEANS OF NUMBER KEYS and owned by MobileMedia Ideas. Filed June 21, 2012. The ‘760 patent is currently the subject of a litigation styled MobileMedia Ideas v. Apple (Case No. 1:10-cv-258 (D. Del.)); MobileMedia Ideas v. HTC (Case No. 2:10-cv-112 (E.D. Tex.)).
(7) 90/012,368 (electronically filed) – U.S. Patent No. 5,871,908 entitled PROCESS FOR THE DETERMINATION OF IN VITRO AMPLIFIED NUCLEIC ACIDS and owned by Evotec AG. Filed June 21, 2012.
(8) 90/012,369 (electronically filed) – U.S. Patent No. 7,670,832 entitled SYSTEM FOR FLUORESCENCE MONITORING and owned by University of Utah Research Foundation. Filed June 21, 2012.
(9) 90/012,370 (electronically filed) – U.S. Patent No. 5,437,722 entitled WATER-RESISTANT GYPSUM COMPOSITION AND EMULSION FOR MAKING SAME and owned by Henry Company Canada. Filed June 22, 2012, likely by Sasol. The ‘722 patent is currently the subject of a litigation styled Henry Company et al. v. Sasol Wax North America et al. (Case No. 2:11-cv-6444 (C.D. Cal.)).
(10) 90/012,371 (electronically filed) – U.S. Patent No. 5,974,621 entitled MOP WRINGER WITH MOP HANDLE SUPPORT and owned by Katy Industries et al. Filed June 22, 2012, likely by Rubbermaid. The ‘621 patent is currently the subject of a litigation styled Continental Commercial Prods. v. Rubbermaid (Case No. 4:11-cv-527 (E.D. Mo.)).
(11) 90/012,372 (electronically filed) – U.S. Patent No. 7,215,991 entitled WIRELESS MEDICAL DIAGNOSIS AND MONITORING EQUIPMENT and owned by Body Science. Filed June 22, 2012, likely by Philips. The ‘991 patent is currently the subject of a litigation styled Body Science v. Philips Electronics North America (Case No. 1:12-cv-10536 (D. Mass.)).
(12) 90/012,373 (electronically filed) – U.S. Patent No. 6,289,238 entitled WIRELESS MEDICAL DIAGNOSIS AND MONITORING EQUIPMENT and owned by Body Science. Filed June 22, 2012, likely by Philips. The ‘238 patent is currently the subject of a litigation styled Body Science v. Philips Electronics North America (Case No. 1:12-cv-10536 (d. Mass.)).
(13) 90/012,374 (electronically filed) – U.S. Patent No. 7,922,614 entitled CHAIN FOR A MACHINE DRIVE, TRANSPORT OF MATERIAL IN A MACHINE OR THE LIKE, AND PACKAGING MACHINE COMPRISING ONE SUCH CHAIN and owned by Multivac. Filed June 22, 2012, by Owner.
Judge Robinson Denies Preliminary Injunction Motion because of Reexamination
| June 22, 2012
An accused infringer’s primary purpose in requesting reexamination of a patent is, obviously, to persuade the Patent Office to cancel the claims. But there are other potential benefits from reexamination, apart from actual cancelation of the claims. One such potential benefit is an argument against a motion for preliminary injunction.
Earlier this week, Judge Sue Robinson of Delaware ruled on the patentee’s request for preliminary injunction in ButamaxTM Advanced Biofuels v. Gevo, 2012 U.S. Dist. LEXIS 84608. The patent owner Butamax had sued Gevo for infringement of a patent claiming a method for making isobutanol suitable as a biofuel, using recombinant microorganisms. Eight months into the case, Butamax asked Judge Robinson for preliminary relief pending completion of the case.
Reexamination Requests against Abbott Labs’ HIV Drug Patents among those Filed Week of June 11, 2012
| June 18, 2012
Earlier this year Abbott Labs sued Roxane Labs for infringement U.S. Patent Nos. 7,148,359 and 7,364,752 which claim the HIV protease inhibitor ritonavir, in one patent as a crystalline polymorph, and in the other as a solid dispersion in a water soluble carrier. On Friday reexamination was requested for both patents (see inter partes Request Nos. (7) & (8)). Although the Patent Office records do not yet show the identity of the requester, it is quite likely Roxane.
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Reexamination Requested by Google against Two More British Telecom Patents
| June 14, 2012
On Tuesday we reported that reexamination had been requested against U.S. Patent No. 6,151,309, owned by British Telecommunications. BT had sued Google in Delaware for infringement of the ‘309 and five other patents, all related to network communications, data navigation, data transfer, and data storage among them. The accused products include Google Android, Google Music, Google Maps, Google Places, and Google Search, though not the Google Patent.
Patent Office records now show that reexamination was requested on the same day against two other BT patents, U.S. Patent Nos. 6,169,515 & 6,650,284. PTO records also reveal Google as the requester.
Reexamination Requested Against British Telecom Patent, Perhaps by Google
| June 12, 2012
Last December British Telecommunications sued Google in Delaware for infringement of six patents related to network communications, data navigation, data transfer, and data storage among them U.S. Patent No. 6,151,309. The accused products include Google Android, Google Music, Google Maps, Google Places, and Google Search, though not Google Patent. Yesterday ex parte reexamination was requested by an as-yet-unidentified party, presumably Google. Because of the early filing date of the ‘309 patent application, inter partes reexamination was not available.
Requests against the other five British Telecom patents might follow.
Another Reason to Choose Inter Partes Reexamination
| June 11, 2012
We have commented a number times that the advantages of inter partes reexamination generally outweigh those of ex parte reexamination. The PTO Board’s decision this past Friday in Panduit v. ADC Telecommunications (95/000,411; see also 95/000,415) illustrated one such advantage: the right of an inter partes requester to submit new prior art at specific moments in the reexamination.
In an earlier appeal, the Board had entered new grounds for rejection, and the patentee ADC asked that prosecution be re-opened to challenge the new grounds. In that challenge, ADC argued to the examiner that its claims were patentably distinguishable over the prior art relied upon by the Board, citing several limitations in its claims. The requester Panduit replied by submitting a new prior art reference; Panduit argued that the reference satisfied those claim limitations and that the reference, in combination with the art already of record, rendered ADC’s claims obvious.
Troll Busters®’ Attack on Nucleic Acid Patent one of the Reexamination Requests Filed Week of June 4, 2012
| June 11, 2012
Jeff Oster, who operates out of offices on Mercer Island, Washington under the descriptive nom de plume “Troll Busters®,” was busy last week. On Wednesday he filed a 356-page request, containing 16 distinct SNQs, seeking reexamination U.S. Patent No. 5,928,907 (see ex parte Request No. (6)). It’s always difficult for an outsider to measure the strength of a reexamination request, but this one has the look and heft of an effective one. The Request begins with the description of Troll Busters as “working to promote new technologies by protecting the public from over-broad patent rights used for extortion and ‘troll-like’ demands….”
Arteris requested reexamination of Sonics’ on-chip system patent (see inter partes Request No. (4)). This is at least the second Sonics patent challenged by Arteris. Sonics has sued Arteris in the Northern District of California for infringement of those two patents, plus six other patents.
Dell Attacks on Three Round Rock Research Patents among the Reexamination Requests Filed Week of May 29, 2012
| June 4, 2012
On Wednesday Dell requested reexamination of three computer systems patents owned by Round Rock Research (see ex parte Request Nos. (4), (5) & (6)). Last October Round Rock sued Dell in Delaware for infringement of ten other patents. Each of the patents is part of the portfolio that Round Rock bought from Micron.
Xilinx filed a reexamination request against another Intellectual Ventures mobile network patent (see inter partes Request No. (6)). Xilinx has sought reexamination of quite a number of IV patents over the past year.
The winner for the most requests was Hayward Industries who filed against four Pentair Water Pool and Spa (see inter partes Request Nos. (7) to (10)). The two companies are in an infringement action in North Carolina.
